Roles and Obligations of a Member of the Madrid System

Transcription

1 Roles and Obligations of a Member of the Madrid System Debbie Roenning Maputo, July 13, 2016 Director, Legal Division Madrid Registry

2 The role of the Office of DCP The role of the Office of the designated CP will follow from the domestic legislation, which will set the conditions for protecting a trademark and determine the rights which result from protection The Madrid System offers the possibility for these Offices to issue decisions on the scope and status of protection For example: Provisional refusals, statements of grant of protection, final decisions and further decisions The IB has established Model Forms for these various decisions with notes for filing

3 Model forms for Offices (1) WIPO has prepared various model forms which Offices can use when they have to notify WIPO of various decisions on the scope of protection of the mark You can find the forms here For Offices of designated CPs Statements of grant of protection, provisional refusal, final decisions, further decisions For Offices of origin Ceasing of effect of the basic mark You can make the forms your own, add logo, signature etc We are working with IPAS colleagues to incorporate these into your workflows

4 Model forms for Offices (2) 1: Information Relating to Possible Oppositions 2: Dates on Which Opposition Period Begins and Ends 3A: Total Provisional Refusal of Protection 3B: Partial Provisional Refusal of Protection 4: Statement of Total Grant of Protection 5: Statement of Grant of Protection Following a Refusal ( final decision ) 6: Confirmation of Total Provisional Refusal 7: Further Decision Affecting the Protection of a Mark

5 Model forms for Offices (3) 8: Interim Status of a Mark 9: Ceasing of Effect of the Basic Mark 10: Invalidation 11: Declaration that a Change in Ownership has no Effect 12: Final Decision that a Change in Ownership has No Effect 13: Declaration that a Limitation has no Effect 14: Final Decision that a Declaration that a Limitation has no Effect

6 Effects of an international registration (IR) The effects of an application filed before the Office of the designated Contracting Party; and, Where protection is not refused or refusal is withdrawn, the effects of a registration made by that Office

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8 Designations

9 Communications concerning the scope of protection

10 Statement of grant of protection Without having sent a notification of provisional refusal All procedures before the Office are completed There is no ground to refuse and total protection is granted to the mark Has to be sent as soon as possible before the expiry of the refusal period WIPO will record where received after the refusal period, if there is no refusal It can be sent as a list

11 Statement of grant of protection, MF4

12 Statement of grant of protection, MF4 cont.

13 Provisional refusal Rule 17 Restrictions on the right to refuse: time and grounds Time limit:12/18 months to send a notification of PR Time limit runs from the date of notification from the IB Grounds from the DCPs domestic legislation Ex officio or based on opposition Notification of PR is sent to the IB If holder wants to contest the refusal, it will be in accordance with the law of the DCP

14 Contents of the provisional refusal The name of the Office Number of the IR Choose the appropriate form; MF3A or MF3B, depending on whether the refusal is total or partial Where partial, specify the goods and services affected or not affected Grounds on which the refusal is based and essential provisions of the law If based on prior rights, all relevant data concerning those rights If based on opposition, relevant data concerning the opponent Time limit for filing a request for review or appeal, and to which authority Signature or seal of the Office

15 Provisional refusal MF3A and 3B

16 Provisional total refusal, MF3A

17 Provisional partial refusal, MF3B

18 Irregular provisional refusals Irregular but it is recorded It is not signed by the Office, does not comply with Admin. Instructions, is not in a working language, does not contain the particulars of a prior or opposing right or does not indicate the scope A copy is sent to the holder and Office is invited to remedy Irregular and it is not recorded Missing available remedies, time limit or authority before which to file such remedies Office is given 2 months to remedy and a copy is sent to the holder Not considered as such Missing the IRN or the grounds or sent too late The Office must send a new provisional refusal if this is still possible within the time limit of 12/18 months. A copy is sent to the holder

19 Communications after a provisional refusal Final decisions Protection following a provisional refusal (total or partial protection) Confirmation of a total provisional refusal Further decision Invalidation

20 Protection after provisional refusal, MF5 After notification of provisional refusal All procedures completed The Office is ready to grant total or partial protection of the mark Provisional refusal is withdrawn (total withdrawal) or Protection granted for some goods and services (partial withdrawal or confirmation of partial provisional refusal) Can indicate elements of the mark that are not protected (disclaimer or ex-officio reservation) Where partial protection granted, the Office must list the goods and services that are protected

21 Final decision granting protection, MF5

22 Final decision, MF5 cont.

23 Confirmation of total refusal, MF6

24 Confirmation of total refusal, MF6 cont.

25 Further decisions, MF7

26 Further decisions, MF7 cont.

27 Invalidation The decision: Has observed due process, Articles 5(6) The effects of an IR are invalidated, and Is not subject to appeal. Content: The authority IRN and name of the holder Scope of the invalidation The fact that the decision is not subject to appeal The date the decision was pronounced and, if known, the effective date

28 Invalidation, MF10

29 Invalidation, MF10

30 Office of origin; ceasing of effect of basic mark, MF9

31 Ceasing of effect, MF9

32 Communicating with the IB For questions concerning an international application or a designation, contact your team: Madrid.team1@wipo.int Madrid.team2@wipo.int Madrid.team3@wipo.int For notifying decisions, using the model forms, send these to Intreg.mail@wipo.int It is also possible to upload the forms to the Madrid Office Portal, MOP

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34 Madrid Office Portal, MOP Online tool designed for Offices Gives Offices a full view of our system in a synchronous, real-time and self-service mode Allows for full electronic exchange between the IB and Offices All Offices with a WIPO account, an Internet connection and a web browser can use MOP Can respond to irregularity-letters sent by the IB, see notifications sent by the IB and original documents, track documents sent to the IB, check the status of requests being processed by the IB, and upload logos, MM18 forms, refusals and final decisions directly into our system

35 Thank you for your attention