WIPO 에서의 국제상표 심사 황 영익 심사관 국제상표심사팀

International Application and Examination n Contents of the International Application n Examination by the Office of Origin n Examination by the International Bureau n Irregularities on refusals n International registration n Invalidation

Contents of the International Application MM1, MM2, MM3, MM17, MM18 협정국서류, 의정서채택국, 협정 + 의정서, 선순위권주장, 사용의사선언서 Rule 9 국제출원의 요건 * Madrid Protocol : Article Common regulations : rule Administrative Instructions : section

Examination by the Office of Origin n Rule 9(5)(d) 본국관청 확인 사항 n Rule 11(4) 본국관청이 치유해야 할 하자

Certification by Office of Origin n Rule 9(5)(d) / Application Form Identity between, Inter alia * applicant * mark * goods and services Other matters for Certification Date of receipt of international application

Irregularities to be Remedied by Office of Origin Rule 11(4) Official form not used Rule 15 Omissions (4) Applicant’s entitlement Certification Irregularities No Office Signature No basic application/registration

Examination by the International Bureau Rules 12 to 15 12: 지정상품분류, 13: 지정상품표시, 14: 국제등록부등록, 15: 국제등록일

Registration Process within the IB Reception of the request Scanning Data entry Distribution Examination No Irregularities Finance processing Translation Registered - Vienna Classification - Entitlement of the applicant - Designated Contracting Parties - Classification of goods/services -Fees paid Irregularities Correction w/in time limits No correction w/in time limits REGISTERED or ABANDONED

Date of the International Registration Article 3(4) of the Agreement and Protocol - Reception of application by OO, if received by IB within 2 months Rule 15 (four mandatory elements) - identity of applicant - designated Contracting Parties - reproduction of the mark - indications of goods and services

Rule 12: Classification IB Proposal 3 months to resolve Reminder: 2 months OO Opinion IB modifies proposal IB withdraws proposal IB confirms proposal No Reply from OO fees not required fees reqiored paid Not paid REGISTERED (as per Proposal) ABANDONED Refund: fees paid minus 1/2 basic fee for a b&w registration.

Rule 12: Classification OO Opinion IB modifies proposal IB withdraws proposal IB confirms proposal No Reply from OO fees not required fees reqiored paid Not paid REGISTERED (as per Proposal) ABANDONED Refund: fees paid minus 1/2 basic fee for a b&w registration. REGISTERED (as filed) (as per modification or original Proposal) Fees not required Fees required paid not paid ABANDONED 3 months to pay

Rule 13: Indication of G&S IB Suggestion 3 months to resolve OO Proposal No Reply from OO IB accepts proposal Linguistically correct, comprehensible, clear and classified IB rejects proposal Linguistically incorrect, incomprehensible, or vague. Classifiable Not classifiable REGISTERED (as filed but with notation)

Rule 13: Indication of G&S OO Proposal No Reply from OO IB accepts proposal Linguistically correct, comprehensible, clear and classified IB rejects proposal Linguistically incorrect, incomprehensible, or vague. Classifiable Not classifiable REGISTERED (as filed but with notation) REGISTERED ( as per proposal ) REGISTERED (as filed but with notation) REGISTERED (with term deleted)

IB Proposal 3 months to resolve OO Reply No Reply REGISTERED Rule 11: Other Irregularities ABANDONED *2 Corrected Uncorrected *1 *1 : Except priority claim or designation without common treaty *2 : Refund: fees paid minus 1/2 basic fee for b&w registration

The International Registration Effects of the International Registration Refusals and Invalidation

Effects of the International Registration (Article 4) The International ‘Registration’ = A National Application until the expiry of the time limit to issue a refusal A National Registration once the time limit to issue a refusal has expired (assuming no refusal or refusal withdrawn)

The International Registration Refusals Article 5 특정 체약국에서의 거절 및 무효 Rules 16, 17 and 18 16: 이의신청에 기초한 가거절통지 17: 가거절 및 보호부여기술서 18: 하자있는 가거절 통지

Are there any limitations on the right to refuse? n Time Limit n Grounds

Time Limits n Notification of provisional refusal : - 12 months * Mandatory under Agreement * Optional under Protocol - 18 months * Optional under Article 5(2)(b) of Protocol - ‘18 months +’ in case of opposition * Article 5(2)(c) of the Protocol

Protocol CPs which have opted for 18 months Armenia, Australia, Belarus, Cyprus, China, Denmark, Estonia, Finland, Georgia, Ireland, Iceland, Italy, Japan, Kenya, Lithuania, Norway, Poland, Rep. Of Korea, Singapore, Slovakia, Sweden, Switzerland, Ukraine, United Kingdom, United States - all others: 12 months

Non-Valid Grounds for Refusal - formal grounds - classification of the goods/services (Rule 12 !) - multi-class registration ( Art. 5(1)) - limited goods or services (Art. 5(1))

Acceptable Grounds for Refusal n In theory: - Paris Convention Art. 6quinquies (Agreement and Protocol Rule 5) n In Practice - National or regional law and/or jurisprudence

Notification of Provisional Refusal - 3 stages (Rule 17) 가거절 및 보호부여기술서 n The initial notification - prescribed content - recording and transmission by IB n Confirmation or Withdrawal [‘final’/Office] n ? Further decision affecting protection

Irregular Refusals n Rule 18 하자있는 가거절 통지 n Two types of Irregularity : - those that can be remedied, and - those not considered as ‘refusals’

Irregular Refusals n Not considered as ‘refusal’ if : - no IR number - no grounds indicated - outside time limits n However, … - WIPO will send copy to the holder

Irregular Refusals n Other deficiencies -- 2 months too rectify: - not signed - Details of conflicting mark not included - Goods or services affected - Time limit not mentioned - Opponent not identified

The International Registration Statement of Grant of Protection (Voluntary under Rule 17(6) 공고이전 등록결정국 )

Statement of Grant of Protection - if no notification of Refusal issued, a CP may send SGP after: (a) all procedures complete (protection granted) or (b) (i) ex officio exam complete + (ii) after expiry of opposition period (protection granted).

Statement of Grant of Protection WIPO will record the statement and transmit it to the Holder

Invalidation n Article 5(6) and 체약당사국의 영역에서 권리자에게 상당기간 방어권을 부여하지 않고는 국제등록의 무효선언 불가 n Rule 19 무효 확정 시에만 IB 에 통지

Notification of Invalidation of National Effect When? Appeal no longer possible Notification by Office of Contracting Party where invalidation was pronounced

Contents of Notification n Authority pronouncing invalidation n Exhaustion of remedies n IR number n Name of the holder n Goods and services n Date of pronouncement and of effect

Recording and Notification n Recording in International Register and Publication in Gazette n Date on which invalidation was recorded communicated - to holder - to the Office concerned

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