OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) Trade Marks Department IP Matters Alicante, 14 September 2004 DS/ab -TMD/04 Madrid Easy Or: A rough and easy guide how international registrations designating the European Community will be processed by the OHIM 1. First step: The international registration Any person who is a national of, or has a domicile in, a state which is a party to the Madrid Protocol and who is the owner of a national application or registration in that same state (a basic mark ) may, through the national office where the basic mark is registered (the office of origin ), file an international application with WIPO in which he can designate other states or international organisations which are parties to the Madrid Protocol. Since 1 October 2004, he will also be able to designate the European Community. WIPO registers the international registration, following an examination only of the formalities and the classification, and notifies this fact to the designated offices. 2. Second step: Receipt of international registration by the OHIM: OHIM is notified of an international registration designating the EC, and receives from WIPO the data concerning the mark in electronic form. This notification triggers an 18 months time limit within which the OHIM must notify any ground for refusal to WIPO. Immediately upon receipt of the international registration, OHIM will republish the international application, but limited only to bibliographical data and, as concerns the mark, it will republish the trademark and the class numbers, but not the actual list of goods and services. That is, OHIM will not translate international registrations. An international application which designates the EC must contain, for the purposes of the procedures before the OHIM, the indication of a second language. If that has not yet been done, OHIM will object to it and postpone the republication until the second language is available. Avenida de Europa 4, Apartado de correos 77, E - 03080 Alicante, Spain Tel: (+ 34) 965 139 220 - Fax: (+ 34) 965 139 317 Internet: http://oami.eu.int/
2 As from its republication, the international registration has the same effect as a published CTM application (Article 146(3)). 3. The third step: Searches and seniorities Dealing with searches and seniorities is a parallel procedure which does not affect the examination of the international registration. Until the international registration is finally examined and accepted, the seniority claim may only be contained in the international application itself. In that case, the holder of the international registration must furnish any documents in support of the seniority claim directly to OHIM. The seniority claim will already have been recorded and published by WIPO. If OHIM rejects the seniority claim, this must be notified to WIPO. Immediately after the republication, the international application must be sent for search. The procedure is the same as for direct CTM filings: The establishment of a CTM search report, information of the holder of sighted earlier rights, sending the application for search to the national offices (this applies until 2008, when the national search will become optional). The search reports will be sent directly to the holder of the international registration or, if he has appointed a representative before the OHIM, to that representative. The holder will not be required to appoint a representative for the sole purposes of receiving the search report. 4. Fourth step: Absolute grounds examination Immediately after republication, the application is submitted to the examination on absolute grounds. If the examiner detects an absolute ground for refusal, he must send a notice of provisional refusal to WIPO, containing a reasoned objection (as in a normal CTM case) plus the invitation to appoint a professional representative, if the holder of the international registration is not domiciled in the EC. WIPO will transmit this notification of provisional refusal to the holder, who will have to reply directly to the Office. The further exchange of correspondence, as well as the decision to refuse, will be sent directly to the holder. If a representative is not duly appointed, protection will be refused irrespective of whether the holder overcomes the objections for the remainder. The refusal decision is subject to appeal, including to further appeal to Luxembourg. Once the decision to refuse or accept the mark is final, a final notification will be sent to WIPO, indicating whether and for which goods and services the mark has been finally refused or accepted. The notice of provisional refusal must be sent to WIPO within 6 months following the date of republication. If the examination is not completed by then, the mark will automatically be put on status absolute grounds ok. If there are no absolute grounds for refusal, the Office will issue, once the mark is put under status AG ok, a first statement of grant of protection to WIPO, indicating that the mark has been examined on absolute grounds but is still subject to opposition and third parties
3 observations. WIPO will transmit this to the holder, publish it in the international Gazette and enter it in the register. This first statement of grant of protection has no immediate legal consequences but informs both the holder and third parties that the Office s examination of absolute grounds has been positive. 5. Fifth step: Opposition Opposition against the international registration may be filed between the sixth month and the ninth month following the date of republication. Oppositions filed prior to this period will be kept on hold and be deemed to have been filed on the first day of the opposition period. The opposition must be filed in the language of the international registration or the second language indicated in the international application. It must contain certain data concerning the earlier mark, as required by WIPO. For the remainder an opposition follows the same regime as in a normal CTM case. The Office will examine whether the opposition is admissible in terms of Rule 18 and contains the date required by WIPO. If that is not the case, the opponent will be given 2 months under Rule 18(2) to remedy. Once it is established that the opposition is admissible, the Office will send a notice of provisional refusal based on an opposition to WIPO (that is, the fact that an opposition has been filed). WIPO will transmit this to the holder of the international registration. This does not replace the communication of the opposition as such to the holder, which has to be made separately, as in the case of a normal CTM. The Office will notify the complete opposition to the holder pursuant to Rule 19, and that will start the cooling off period. This letter will fix the time limits for the opponent to complete his opposition and for the holder to reply to the opposition in the same way as for a normal CTM case. The subsequent opposition procedure is the same as for a normal CTM. Once there is a decision on the opposition which has become final (eventually after an appeal or a further appeal in Luxembourg), or after the opposition proceeding has terminated otherwise (for example following a friendly settlement), the Office informs WIPO that the protection is accepted or refused and if so for which goods and services. If, however, there is no opposition and there has been no absolute grounds objection, the Office will, immediately after expiry of the opposition period, send a second statement of grant of protection. This will have the effect that as from that date, the international application has the same effects as a registered Community trade mark. This effect will therefore arise before the 18 months time limit.
4 A. First interface problem: Dealing with oppositions when there has been a refusal on absolute grounds. If an opposition is received after the Office has already sent a provisional notification of refusal on absolute grounds, the procedure is as follows: All the initial steps until the notification of provisional refusal based on an opposition to WIPO are done in the same way. However, when the Office notifies the opposition to the holder, it informs him that as from now the opposition procedure is stayed until there is a final decision on absolute grounds. If the notification of refusal on absolute grounds leads to a refusal of protection for all goods and services or for those which are contested by the opposition, the opposition procedure is closed, does not proceed to judgement, and the opposition fee is refunded. If the refusal on the absolute grounds is not maintained (for example, the holder succeeds on an appeal), the opposition procedure is resumed. B Second interface problem: Dealing with absolute grounds for refusal whether there was no opposition If there is a provisional refusal on absolute grounds but no opposition is filed, the procedure concerning absolute grounds simply goes on. Neither a first nor a second statement of protection is sent. The opposition period is fix and does not depend on the outcome of the procedure on absolute grounds. For the further course of the procedure, see under fourth step. 6. The sixth step: Third party observations The third party observations are possible from the republication until the end of the opposition procedure, but not later than 18 months. They are dealt within the normal way, that is, the observations are communicated to the holder. Only if the Office raises serious doubts (is convinced that the observations are justified), a notice of provisional refusal is issued. If the third party observations arrive prior to the start of the opposition period (before expiry of 6 months), and the Office considers them justified, the notice of provisional refusal sent to WIPO is drafted in a normal way, irrespective of whether the reason for it was an observation of a third party. If the third party observations arrive during the opposition period, they are also transmitted to the holder. However, if in this case the Office wishes to issue an objection, it will have to send a notice of provisional refusal on absolute grounds to WIPO in spite of the fact that the first statement of grant of protection may already have been issued. Third party observations are also possible if an opposition has been filed, as long as the opposition is still pending. The treatment is the same. However, once 18 months are over, there is no possibility for OHIM to act on them.
5 7. The seventh step: Post-registration proceedings The international registration designating the EC acquires the effects of a registered CTM, if and once: a) If provisional refusal (on absolute grounds or based on a opposition) has not been issued to WIPO, - either once the second statement of grant of protection has been issued or - if that has not been the case, once 18 months have expire since the OHIM was notified by WIPO of the international registration; or b) if a provisional refusal ( based on absolute grounds or an opposition) has been issued, once the respective procedure before the OHIM has been brought to a final decision and OHIM has notified WIPO that the refusal is totally or partially withdrawn; or c) where several notices of provisional refusal have been issued (for example on absolute grounds and another on based on an opposition), once the last of these procedures has been finally terminated and OHIM has notified WIPO that the mark is no protected. As from that point in time, the international registration as a registered CTM is subject to a request for revocation or declaration of invalidity. The procedure is almost exactly the same as for a direct CTM. Only the grace period of 5 years for the use is calculated in a different manner. The second difference is that once the cancellation proceeding has been finally terminated, and provided that the mark has been cancelled totally or partially, OHIM will notify this to WIPO. Detlef Schennen
6 Alicante, 14 September 2004 DS/ab -TMD/04 Madrid Easy Annex 1: Glossary of terms. Basic mark: Under the Madrid system the international application must be based on a basic mark. The mark must be identical to the basic mark, and the list of goods and services must be identical or narrower than the basic mark. The basic mark is filed or registered with the office of origin. If the OHIM is the office of origin, the basic mark may be a CTM application, a registered CTM, or a CTM application subject to it being registered later (Article 141 CTMR). Furthermore, if the OHIM is the office of origin, the owner of the basic mark/application must be a national of a member state of the European Community, or have its domicile or real and effective industrial or commercial establishment in a member state in the European Community. Office of origin: The office where the basic mark has been filed/registered on which the international application is based. For the European Community as contracting party to the Protocol, the office of origin is the OHIM. An international application must be filed with the office of origin, which has to certify that the applicant is entitled to file an international application with that office, and that the mark corresponds to the basic mark. If that is the case, the office of origin forwards the international application to WIPO. Designated office: The trade mark offices of the other parties to the Madrid Agreement or Protocol for which the international registration is registered. All offices of the other parties to the Madrid Agreement or Protocol may be designated in an international application, with three exceptions: The office of origin may not be designated (no auto-designation), if the office of origin is only party to the Protocol (as is the case for the OHIM), only members of the Protocol may be designated, and if the office of origin is member to the Madrid Agreement only, only offices may be designated which are members to the Agreement (regardless whether they are also party to the other treaty).
7 Office of the contracting party of the holder: The office of origin always remains competent for the holder of the international registration. However, in case of a transfer of the international registration, the holder may also carry out subsequent transactions through the office of the country for which the new holder fulfils the nationality or domicile requirements (the office of the contracting party of the holder). Previously, this office was called the interested office. Individual fee: For an international application filed under the Protocol, the fees to be paid to WIPO consist of a basic fee of 653 (if the mark is in colour, 903) Swiss Francs plus a class fee plus a designation fee. In principle, the designation fee is 73 Swiss Francs per designated office, but each designated office can declare that instead, it wishes to receive an individual fee. The individual fee is in principle the same as for a normal national registration, diminished by the savings generated by the Madrid Protocol. The European Community has opted for an individual fee, to be paid for the benefit of the OHIM. Its amount is 1875 Euro plus class fees, which corresponds to the sum of the CTM application and registration fee minus 200 Euro. Contracting parties may also require an individual renewal fee. The OHIM also receives an individual renewal fee, which is identical to the CTM renewal fee minus 200 euro. Notice of refusal: The international registration stands protected as a registered mark if the designated office does not, within 12 or 18 months, issue a notice of refusal to WIPO. For the OHIM as designated office, the applicable time limit is 18 months. Within this time limit, all grounds for refusal must be notified to WIPO. Actually, the notice of refusal is not yet the final determination, but just starting the procedure: As regards absolute grounds, this starts the time limits to make observations, and as regards an opposition, this consists just in the information that an opposition has been filed. The subsequent procedure is the same as for normal CTM and open-ended. Once a decision on the absolute ground for refusal or the opposition has been taken which has become final, WIPO is informed accordingly. The correct term therefore is notice of provisional refusal. An office may raise all grounds for refusal in one notification, or issue a separate notification for each ground for refusal, provided that they are all notified within 18 months. One practical effect is that if the notice of provisional refusal was based on Article 7(1)(b)CTMR, the decision to refuse may not be based on Article 7(1)(c). Central attack:
8 The international registration is cancelled if, during the first 5 years of the international registration, the basic mark lapses, for whatever reason. In certain cases, this applies also even if the proceeding was initiated within that 5 years period, but concluded only afterwards. During the first 5 years, the international registration is dependent from the basic mark. Under the Madrid Protocol (not under the Agreement), the holder of the international registration may request a transformation into national applications, which saves the filing date of the international registration, but involves additional cost and effort. The term central attack is colloquially used to mean that one can kill the international registration for all the countries of the world if in the first 5 years one manages to kill the basic mark. However, the basic mark not only lapses in the case of an opposition or cancellation request, but also in cases of withdrawal or refusal on absolute grounds. Safeguard clause: The Madrid Protocol is a treaty separate from the Madrid Agreement. The safeguard clause (Article 9 sexies of the Protocol) means that whenever possible, the Madrid Agreement (and not the Protocol) applies. The reason was to maintain the advantages of the Madrid Agreement (lower fees, shorter periods for notifying refusals). In practice this means that between 2 offices which are bound by the Agreement (even if one or both are also member of the Protocol), the Madrid Agreement applies. This has the following consequence: If the office of origin is member only to the Madrid Agreement, the international application may designate only those offices which are bound by the Agreement, not those which are exclusively bound by the Protocol. In the case of the OHIM, which is bound only by the Protocol, the international application may only designate offices which are bound by the Protocol, regardless whether they are also bound by the Agreement. Membership of the EC to the Protocol: Only states may become members of the Madrid Agreement. It is therefore not possible for the European Community to become a member of the Madrid Agreement. Both states and intergovernmental organisations which run a trade mark office may become a party to the Madrid Protocol. On this basis, the EC has become a member to the Protocol. In the Madrid Assembly, the EC has its own seat and voting right. The office concerned (office of origin, designated office) is the OHIM. Therefore, for the OHIM, only the Madrid Protocol (not the Agreement) applies. Statement of grant of protection: The basic rule is that a mark is finally protected if - no provisional refusal has been issued within the applicable time limit (18 months) or
9 - if a provisional refusal has been issued, once it is withdrawn, that is, once the final decision is favourable to the holder. The statement of grant of protection (STOGOP), foreseen in Rule 17 of the Common Regulations, allows an office to declare that the mark is protected even before that date. The Office has made use of this possibility (Rule 112(5), 116): - A first Stogop is sent if within the first 6 months, no notification of provisional refusal on absolute grounds is issued; - a second Stogop is issued if a first Stogop was issued and no opposition has been filed. The first Stogop expressly indicates that oppositions and third parties observations may still be filed; it has no immediate legal effect but informational value only. The second Stogop has the legal effect that as from that date, the mark is protected as a registered CTM (until that date, the international registration only has the legal effect of a published CTM application). Detlef Schennen