REGISTRATION. VAINILLA DE PAPLANTA (AO Registration No. 890, Mexico) EXAMPLE: VAINILLA DE PAPLANTA Florence Rojal, WIPO 1

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1 THE LISBON SYSTEM IN PRACTICE (REGISTRATION, REFUSAL,STATEMENT OF GRANT OF PROTECTION, GRANT OF PERIOD, MODIFICATIONS, INVALIDATION, AND ACCESSION MODALITIES) Florence Rojal Senior Legal Officer Lisbon Registry Brands and Designs Sector Ljubljana 20 June 2013 REGISTRATION EXAMPLE: VAINILLA DE PAPLANTA VAINILLA DE PAPLANTA (AO Registration No. 890, Mexico) Florence Rojal, WIPO 1

2 Chronology International application submitted by the Mexican IP Office (Instituto Mexicano de la Propiedad Intelectual (IMPI)) + along with receipt confirming payment of the mandatory registration fee of 500 CHF (Rule 5) Competent Authority: Instituto Mexicano de la PI Formal examination conducted by the WIPO Lisbon Registry Application for Int. Registration: WIPO Form AO/1 Florence Rojal, WIPO 2

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4 Follow-up Notification of a certificate of international registration to the Mexican competent authority (Rule 7) Notification of the international registration to the competent authorities of the other contracting parties (along with clear indication of the date of expiry of the one year period for the submission of a declaration of refusal) Notification to IMPI of the statement of grant of protection issued by Slovakia concerning the AO Vainilla de Paplanta before the expiry of the one year period (Rule 11bis) Florence Rojal, WIPO 4

5 Registration Certificate Notification to the other Contracting Parties Florence Rojal, WIPO 5

6 Registration of the AO in the International Registry & Publication in the AO Bulletin Florence Rojal, WIPO 6

7 Notification of the statement of grant of protection issued by Slovakia to the Mexican CA (IMPI) Registro No. 890 en la Base de Datos Lisboa Express Florence Rojal, WIPO 7

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9 DECLARATION OF REFUSAL OF PROTECTION OF AN APPELLATION OF ORIGIN REGISTERED UNDER LISBON (Article 5(3) and Rule 9) Declaration of Refusal Rule 9 9(1) A declaration of refusal shall be notified to the International Bureau by the competent authority of the contracting country for which the refusal is issued Florence Rojal, WIPO 9

10 Declaration of refusal (contents) The number of the international registration concerned The grounds on the basis of which the refusal is based If refusal based on existence of a prior right (indication of the essential particulars of that prior right) Where the refusal is partial, indication of the elements to which the refusal applies Indication of the judicial or administrative remedies that may be exercised against the refusal together with the applicable time limits Florence Rojal, WIPO 10

11 Declaration of Refusal (examples) BUDWEISER BIER, BUDWEIS BEER, ČESKOBUDĚJOVICKÉ PIVO, BIÈRE DE ČESKÉ BUDĚJOVICE (CZ, AO No.49): Declaration of refusal issued by Nicaragua on the basis of the existence of a prior right ( BUDWEISER trademark previously registered by ANHEUSER- BUSCH) BAROLO (IT, AO No.889): Declaración of refusal issued by Peru on the basis of the existence of a prior right (trademark VINO DE BAROLO previously registered by a third party in Peru) Florence Rojal, WIPO 11

12 Follow-up no irregularity: Declaration of refusal is recorded in the International Register + notification to the competent authority of the country of origin irregularity (Rule 10): Irregular Declaration (two types of irregularity) 1)Declaration of refusal not considered as such (Rule 10(1)) 2)Irregular Declaration (Rule 10(2)) Example of irregularity Omission to indicate the grounds for refusal (in the declaration of refusal issued by Israel as regards the Georgian AO No. 861 KINDZMARAULI (wine)) Letter sent to Israel by the International Bureau pointing out irregularity Amended declaration of refusal issued by Israel and published in the Register Withdrawal of the declaration of refusal by Israel a few years later Florence Rojal, WIPO 12

13 OPTIONAL STATEMENT OF GRANT OF PROTECTION OF AN APPELLATION OF ORIGIN REGISTERED UNDER LISBON (Rule 11bis bis) Rule 11bis bis: optional statement of grant of protection Statement of grant of protection where no declaration of refusal has been notified (statement issued before the expiry of the one-year period referred to in Art. 5(3)) Statement of grant of protection following a refusal (instead of notifying a withdrawal of refusal in accordance with Rule 11(1)) Entry in the International Register and notification to the competent authority of the country of origin Florence Rojal, WIPO 13

14 Examples VAINILLA DE PAPLANTA (AO No. 890, Mexico) BANANO DE COSTA RICA (AO No. 900, Costa Rica) (Statements of grant of protection issued by Slovakia) ADVICE OF GRANT OF A PERIOD WITHIN WHICH USE OF AN AO MUST BE DISCONTINUED Article 5(6) and Rule 12 Florence Rojal, WIPO 14

Article 5(6) If an appellation which has been granted protection in a given country pursuant to notification of its international registration has already been used by third parties in that country

15 Article 5(6) If an appellation which has been granted protection in a given country pursuant to notification of its international registration has already been used by third parties in that country from a date prior to such notification, the competent authority of the said country shall have the right to grant to such third parties a period not exceeding 2 years to terminate such use Florence Rojal, WIPO 15

4 CASES OF GRANT OF PERIOD TO THIRD PARTIES (Lisbon Express Database) Following the registration of the Czech AO s Nos. 49, 50, 51 y 52 (registered in November 1967) -No.

16 4 CASES OF GRANT OF PERIOD TO THIRD PARTIES (Lisbon Express Database) Following the registration of the Czech AO s Nos. 49, 50, 51 y 52 (registered in November 1967) -No.49: ČESKOBUDĚJOVICKÉ PIVO / BUDWEISER BIER / BIÈRE DE ČESKÉ BUDĚJOVICE / BUDWEIS BEER -No.50: BUDĚJOVICKÉ PIVO - BUDVAR / BUDWEISER BIER - BUDVAR / BIÈRE DE BUDWEIS - BUDVAR / BUDWEIS BEER - BUDVAR -No. 51: BUDĚJOVICKÝ BUDVAR / BUDWEISER BUDVAR -No.52: BUDĚJOVICKÉ PIVO / BUDWEISER BIER / BIÈRE DE BUDWEIS / BUDWEIS BEER Period granted by Cuba to the US company ANHEUSER-BUSCH INC. (for a maximum period of two years: from May to May 1971) Period granted to third parties following the withdrawal of a declaration of refusal Florence Rojal, WIPO 16

17 INVALIDATION OF THE EFFECTS OF AN INTERNATIONAL REGISTRATION EFFECTED UNDER LISBON (Rule 16) Rule 16 Notification of the invalidation to the International Bureau -Where the effects of an international registration are invalidated in a contracting country and the invalidation is no longer subject to appeal -Elements of the notification: number of the international registration concerned, name of the authority that pronounced the invalidation, date of the invalidation, grounds for invalidation,whether it is total o partial + copy of the decision Entry in the International Register and notification to the competent authority of the country of origin Florence Rojal, WIPO 17

Example BUD (Czech AO No. 598): Invalidation pronounced by Italy, Portugal and Hungary (recognition of the effects of the international AO N0.

18 Example BUD (Czech AO No. 598): Invalidation pronounced by Italy, Portugal and Hungary (recognition of the effects of the international AO N challenged in Court in each of those countries by a holder of prior TM rights. Final Court decision rendered in favor of the plaintiff/opponent in these cases) Florence Rojal, WIPO 18

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20 MODIFICATIONS Rule 13 Request for entry of a modification of a registration in the International Register (ex: change in the holder of the right to use the AO, modification of the limits of the area of production ) Payment of a fee: CHF 200 Entry in the Register + notification to other contracting countries Florence Rojal, WIPO 20

21 ACCESSION MODALITIES Florence Rojal, WIPO 21

Example: Accession by the FYRM In line with the provisions contained in Article 14(2)(c) and Article 5(3) of the Lisbon Agreement, every time a country accedes to the Lisbon Agreement (on July 6,

22 Example: Accession by the FYRM In line with the provisions contained in Article 14(2)(c) and Article 5(3) of the Lisbon Agreement, every time a country accedes to the Lisbon Agreement (on July 6, 2010 in the case of Macedonia), the International Bureau sends a Notification to the acceding country, by which it informs the country in question of all international registrations in force on July 6, 2010 in this case. (New registrations occurring between July 6, 2010 and the date of entry into force of the accession (October 6, 2010) will be the subject of separate notifications) In such instance, the one year period for refusal starts running as from the date of receipt of the Notification referred to above, OR as from the date of entry into force of the Lisbon Agreement (October 6, 2010, in the case of The former Yugoslav Republic of Macedonia), whichever of the two is later. Florence Rojal, WIPO 22

23 THANK YOU Florence Rojal, WIPO 23

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