Madrid System for the International Registration of Marks International Trademark Registration: Protection in a Designated Contracting Party Normunds LAMSTERS Acting Coordinator, Processing Team 1, Operations Division, Madrid Registry Prague, April 27, 2015
2 Content of the presentation Effects of the International Registration Provisional Refusal Final Disposition on the Status of the Mark Further decision Invalidation
3 Abbreviations CP Contracting Party DCP Designated Contracting Party G&S Goods and Services IB International Bureau IR International Registration OO Office of Origin
Effects of the International Registration 4
5 Effects of the International Registration From the date of the IR, the protection of the mark in each of the DCPs is the same as if: The mark had been filed directly with the Office of that CP, and The mark had been registered by the Office of that CP, if no refusal is notified within the applicable time limit
Examination Process in the Office of the DCP 6 DESIGNATED OFFICE RECEIPT OF SUBSTANTIAL NOTIFICATION EXAMINATION GRANT OF PROTECTION PROVISIONAL REFUSAL NATIONAL REGISTRATION CONFIRMATION OF REFUSAL The Office of the DCP will examine the request for extension of protection as if it was a domestic application
7 Various statements from DCP Offices of DCPs may communicate the status of protection of a mark through various statements in the course of their examination: Possiblility of oppositions filed after 18 months Provisional refusal Rule 17 Grant of protection Rule 18ter(1) «Final» decision Rule 18ter(2) and (3) Further decision Rule 18ter(4) Invalidation Rule 19
Overview of the Communications sent by the Office of the DCP 8
9 Statement of Grant of Protection Rule 18ter(1)
10 Statement of Grant of Protection (1) The Office of the DCP should send a Statement of Grant of Protection to the IB if all procedures before the Office have been completed before the expiry of the time limit and there are no grounds to refuse protection Sending of such statement is compulsory as from January 1, 2011
11 Statement of Grant of Protection (2) Conditions: Without notification of a Provisional Refusal All procures completed There are no grounds to refuse Total protection is granted Time: As soon as possible, but Before the expiry of the applicable refusal time limit
Provisional Refusal Rule 17 12
13 Provisional Refusal What is meant by Provisional Refusal? Are there any restrictions on the right to refuse? Grounds Time
Provisional Refusal - Time Limit 14 For the Notification of provisional refusal: 12 months Mandatory under Agreement + Art. 9sexies(1)(b) Optional under Protocol (by default, if no declaration for 18 months has been made) 18 months Optional under Article 5(2)(b) of the Protocol* 18 months + in case of opposition Optional under Article 5(2)(c) of the Protocol* From the Notification Date of the IR or the Subsequent Designation by the IB * Subject to Article 9sexies(1)(b) of the Protocol
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16 Madrid Protocol CPs (47) which have opted for 18 Months African I. P. Organization (O.A.P.I.), Armenia, Australia, Bahrain, Belarus, Bulgaria, China, Colombia, Cyprus, Denmark, Estonia, European Union, Finland, Georgia, Ghana, Greece, Iceland, India, Iran, Ireland, Israel, Italy, Japan, Kenya, Lithuania, Madagascar, Mexico, New-Zealand, Norway, Oman, Philippines, Poland, Rep. of Korea, San Marino, Singapore, Slovakia, Sweden, Switzerland, Syria, Tajikistan, Tunisia, Turkmenistan, Turkey, Ukraine, United Kingdom, U.S. A., Uzbekistan. all other CPs: 12 months
Provisional Refusal - Time Limit Example 1 17 OO or Office of the CP of the holder DCP A A AP Algeria Switzerland Article 9sexies(1)(a) does not apply: only the Agreement applies as it is the only common treaty between both CP Article 5(2)(b) of the Agreement: refusal period of 12 months (there is no possibility to make the declaration)
Provisional Refusal - Time Limit Example 2 18 OO or Office of the CP of the holder DCP P P AP Norway Switzerland Article 9sexies(1)(a) does not apply: only the Protocol applies as it is the only common treaty between both CP Article 5(2)(b) of the Protocol: refusal period of 18 months (Switzerland has made the declaration).
Provisional Refusal - Time Limit Example 3 19 OO or Office of the CP of the holder DCP AP P * AP Czech Republic Switzerland *Article 9sexies(1)(a): only the Protocol applies Article 5(2)(b) of the Protocol: refusal period of 18 months (Switzerland has made the declaration) However, in this situation, the refusal period will be only 12 months by virtue of Article 9sexies(1)(b)
Provisional Refusal - Grounds 20 General principle (Article 5(1)) Refusal may be based only on the grounds which would apply, under the Paris Convention, in the case of a mark deposited directly with the Office notifying such refusal Non-valid grounds: Divergent opinion on the classification of the G&S (Rule 12) Banning of multi-class registration or obligation of a limited number of G&S (Article 5(1))
Notification of Provisional Refusal (1) 21 A notification of Provisional Refusal shall: Relate to one IR Be dated Be signed by the Office making it May comprise a declaration stating: The grounds on which the Office making the notification considers that protection cannot be granted in the CP concerned; or That protection cannot be granted in the CP concerned because an opposition has been filed; or Both
Notification of Provisional Refusal (2) 22 Content of the Notification: IR number All the grounds (reference to essential provisions of the law) Where applicable, details of prior rights (filing date and number, priority date, registration date and number, name and address of the owner, list of relevant G&S, which may be in original language) Scope of the refusal Time limit to file a request for review/appeal/response to the opposition, preferably with: Date of expiration of the time limit Authority with which such request should be filed Appointment of a local representative, if needed
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24 Notification of Provisional Refusal (3) Provisional refusal based on an opposition - Rule17(3) Where the provisional refusal is based on an opposition, or on opposition and on other grounds, the notification shall indicate that fact In addition to the information in an ex officio provisional refusal, it shall contain: Name and address of the opponent Where opposition is based on prior right(s), a list of G&S on which the opposition is based
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Possibility of Notification of a Provisional Refusal Based on an Opposition 26 Where a DCP has made a declaration under Article 5(2)(b) and/or (c) of the Protocol, that DCP has the possibility of notifying a Provisional Refusal based on an opposition after the expiry of the 18-month time limit provided that: (1) It has, before the expiry of the 18-month time limit, informed the IB of the possibility that oppositions may be filed after the expiry of the 18-month time limit, and (2) The notification of the refusal based on an opposition is made within a time limit of 1 month from the expiry of the opposition period and, in any case, not later than 7 months from the date on which the opposition period begins.
Interim Status Rule 18bis 27
Statement of Interim Status of Protection of the Mark 28 This statement is optional Rule 18bis(1)(a): Interim status before sending a Provisional Refusal Rule 18bis(1)(b): Interim status after sending a Provisional Refusal
Interim Status Rule 18bis(1)(a) 29 Conditions: Before the notification of the Provisional Refusal Ex officio examination has been completed No grounds for refusal, but Protection subject to opposition or observations Content: Time: Date by which opposition or observations may be filed, if known Optional, but Before the expiry of the applicable refusal time limit
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31 Interim Status Rule 18bis(1)(b) Conditions: After the notification of the Provisional Refusal Ex officio examination has been completed No grounds for refusal, but Protection subject to opposition or observations Content: Time: Date by which opposition or observations may be filed, if known Optional, but After sending a notification of Provisional Refusal
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33 Final Disposition on the Status of the Mark Rule 18ter
Final Disposition on the Status of the Mark 34 Statement of grant of protection where no notification of provisional refusal has been communicated (Rule 18ter(1)) Statement of grant of protection following a provisional refusal (Rule 18ter(2)): Total or partial grant of protection Confirmation of total provisional refusal (Rule 18ter(3)) Further decision (Rule 18ter(4))
Statement of Grant of Protection Following a Provisional Refusal ( final decision) 35 Conditions: After notification of a Provisional Refusal All procedures completed; and, Provisional Refusal is withdrawn (total withdrawal) or Protection granted for some G&S (partial withdrawal or confirmation of Partial Provisional Refusal) Content: Time: Scope of protection, in a positive manner After sending a Total or Partial Provisional Refusal
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Confirmation of a Total Provisional Refusal ( final decision ) 37 Conditions: After a notification of a Total Provisional Refusal All procedures completed and, A Total Provisional Refusal is confirmed Time: After sending a Total Provisional Refusal
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Further Decision Rule 18ter(4) 39
40 Further Decision Conditions: After notifications under Rules 18ter(2) or (3) Further Decision affecting the scope of protection; and The Office is aware of that decision (the Office may have taken the decision) Content: Time: Scope of protection After sending a declaration concerning a final decision
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Invalidation Rule 19 42
43 Invalidation Substantial preconditions Due process has been observed The effects of an IR are invalidated and the decision is no longer subject to appeal Content: The authority which pronounced the invalidation The IRN and the name of the holder The scope of the invalidation The fact that the decision is no longer subject to appeal The date on which the decision was pronounced and, where possible, the effective date
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45 all procedures completed 18ter(1) MF4 grant of protection no opposition or observation 18ter (2) MF5 total or partial protection grant no grounds for refusal opposition observation? 17(1) & (3) MF3 refusal based on opposition further decision 18ter (4) further decision invalidation 19(1) invalidation opposition refusal limit 18ter (3) MF6 confirmation of total provisional refusal refuse
46 opposition or observation? 17(1) &(3) MF3 opposition refusal based on opposition 18ter (2) MF5 total or partial protection grant 17(1) (a) MF3 provisional refusal further decision 18ter (4) MF7 further decision invalidation 19(1) invalidation grounds for refusal refusal limit 18ter (3) MF6 confirmation of total provisional refusal refuse
47 Useful Information Legal texts, treaties, regulations, administrative instructions http://www.wipo.int/madrid/en/legal_texts/ Declarations made by Contracting Parties of the Madrid System under the Agreement, the Protocol and the Common Regulations http://www.wipo.int/madrid/en/madridgazette/remarks/declarations.html WIPO Lex: http://www.wipo.int/wipolex/en/ ROMARIN: http://www.wipo.int/romarin The WIPO Gazette of International Marks: http://www.wipo.int/madrid/en/madridgazette/
48 Contact Us General queries on the Madrid System Madrid Customer Service: +41 22 338 8686 intreg.mail@wipo.int Specific queries on IA or IR madrid.team1@wipo.int +41 22 338 750 1 (Czech Republic) madrid.team2@wipo.int +41 22 338 750 2 madrid.team3@wipo.int +41 22 338 750 3 http://www.wipo.int/madrid/en/contact.html For the electronic communication with IB e-marks@wipo.int http://www.wipo.int/madrid/en/services/electronic_notification.html
Thank you 49