Jerusalem July 2010 André Ntamack

National Seminar on the Madrid Protocol for the International Registration of Marks
Jerusalem July 2010 André Ntamack Head, Examination and Registration Section

Preparing the International Application
Filing conditions and presentation of an International Application Representation before the International Bureau Role of the Office of origin Types of International Applications

Filing conditions: entitlement to file and basic mark
You need (natural person or legal entity): an attachment to a Contracting Party = Office of origin - establishment - domicile - nationality a basic application or a basic registration in that Contracting Party (in the same name, for the same mark, and for the same goods and services or less) AS I have already mentioned MS is a closed system, because not anybody may use it. An application for international registration may be filed by persons who have a real and effective industrial or commercial establishment , or have their domicile in, or the nationality of, a country which is party to the Madrid Agreement or Protocol, or who have such establishment or domicile in the territory of an intergovernmental organization that is party to the Protocol, or have the nationality of a Member State of such an organization. That means that the system may not be used by persons who do not have the necessary point of establishment with a member of the Madrid Union, nor may the system be used to protect a mark outside Madrid system. Another requirement is that a mark may be the subject of an international application only if it has already been registered or in the case of an application governed by the Protocol if registration has been applied for with the trademark Office of the contracting Party with which the Applicant has the necessary connection. The Office is known as the Office of origin.

Establishment Taken from Article 3 of Paris Convention
Excludes fraudulent or fictitious entities Some industrial or commercial activity must take place (i.e., not a mere warehouse), but need not be the principle place of business. Question of national law: What constitutes an establishment in each Contracting Party may differ (e.g., actual headquarters, law under which establishment was constituted, parent/subsidiary relationship, etc.).

Domicile Can have different meanings; can be defined broadly or narrowly Question of national law Natural person (e.g., official authorization; more or less permanent situation of fact, such as actual residence; etc.) Legal entity (e.g., actual headquarters; law under which it was constituted; etc.)

Nationality Question of national law: Natural person
Legal entity (e.g., law under which it was constituted; whether or not it is a State enterprise; etc.)

Representation before the International Bureau

WHO may be appointed No limit on address of representative
Need not be in a Contracting Party

HOW to make the appointment
in an official form international application subsequent designation request for recording of a change in a separate communication (letter) or in the unofficial form (MM12) no power of attorney is needed! Signed by the person making the appointment

Cancellation of the Appointment
1. Ex officio by the International Bureau new appointment change in ownership 2. By a communication sent to the International Bureau the applicant/holder by the representative

The Filing and Registration Procedure
Basic registration Basic application Office of Origin International Application International Bureau An international application must be presented to the International Bureau through the Office of origin. An application which is presented directly will not be considered as such and will be returned to the sender.An IA must contain a reproduction of the mark, a list of goods and services for which protection is requested, classified in accordance with the International Classification of Goods and Services ( Nice Classification). The International application must designate the Contracting parties for which protection of the mark is sought. It is the IB which notifies then the Offices of the designated Contracting Parties. Offices of the Designated Contracting Parties

Role of the Office of Origin
International application Certifies certain facts concerning the relationship between the international application and the basic application or registration (e.g., same applicant, same mark) as well as the date of the IA Office of Origin The Office of origin must certify that the mark is the same as that which appears in the basic registration / application, that any information such as the description of the mark or claim of the color as a distinguished feature of the mark is identical to that contained in the basic registration /application, and that the goods and services indicated in the IA are included in the list of goods and services of the basic registration or application. The Office of origin must certify the date on which the IA has been received. This date is important as it becomes the date of the IR if the IB receives the application within two months.

International Bureau International Bureau Tasks Formality examination
Inscription in the International Register Publication in the Gazette Issuance of a Certificate for the holder and Notification to the designated Contracting Parties The International Bureau carries our examination on formalities only :verifies that the IA meets the requirements of the Agreement and Protocol and the Common Regulations, including requirements relating to the indication of goods and services and their classification and that the necessary fees have been paid. The IB will inform the Office of origin and the owner of any irregularities which must be rectified within thee months. If the IA meets the requierments , the mark is entered in the International Register and published in the gazette. Subsequently the IB notifies the Contracting parties designated in the application.

Designated Contracting Party
Tasks Office of the Designated Contracting Party Substantive examination opposition The Office of a designated CP examines the mark entered in the International Register International register exactly in the same manner as a mark contained in an application filed directly with that Office. If any doubt arises during the examination or if any objection is raised , the Office is entitled to declare that protection may not be granted to the mark in that Contracting Party. Any provisional refusal is to be notified to the IB by the Office of the Contracting party within a period specified in the Agreement or protocol, which is generally 12 months, but any CP may declare that where it is designated under the Protocol, that period will be replaced by a period of 18 months, or even more in case of a provisional refusal based on opposition. Provisional refusals are entered in the International Register and published in the Gazette and a copy is sent to the owner of the IR. Any procedure subsequent to refusal, such as a revision, appeal or response to an objection, is settled directly between the owner and the authority of the Contracting party concerned, without any intervention by the IB. However, the Office must send a declaration to the IB, once the procedure with it has been completed, stating whether the provisional refusal is confirmed or withdrawn, in full or in part. This declaration is entered in the IR and published in the Gazette. Where an Office has no grounds to refuse protection, it may immediately send a declaration granting protection. This declaration Is entered in the IR and published in the Gazette and a copy is sent to the owner of the IR. However, CPs have no obligation to send a declaration granting protection, and failure to send such a declaration has no legal consequences. The 12/18+ months Provisional refusal No provisional refusal/withdrawn = national registration

Types of International Applications

One System Two Treaties (Madrid Agreement and Protocol)
Two possible designations Three types of International Applications

Types of Applications MM1 MM2 MM3 Rule 1(viii):
Governed exclusively by Agreement all designations governed by Agreement MM1 Rule 1(ix): Governed exclusively by Protocol all designations governed by Protocol MM2 Rule 1(x): Governed by Agreement and Protocol some designations governed by Agreement some designations governed by Protocol MM3

MM2 Why is this type of international application governed exclusively by the Protocol? P P P P USA or P AP Israel China

MM2 Why is this type of international application governed exclusively by the Protocol? P P AP P Israel or P P China UK

MM2 - Requirements International Application Each Designation
Office of Origin Filing basis: Form: Language: Free choice of the Office of origin Basic Registration or Basic Application MM2 French, English or Spanish Each Designation Fees: Refusal Period: Supplemental + Complementary, or Individual 12 months, or 18 months, or 18+ months

P P P P P AP P AP Example Questions
UK P P P AP Israel Switzerland P Benelux AP Example All 3 DCPs have opted for individual fees. Questions Treaty Governing IA: Application Form: Language of Application: IA can be based on a basic app: A P A/P MM1 MM2 MM3 French English Spanish Yes No Which DCPs will receive individual fees?: UK CH BX

International Application and Examination
Content of the International Application Examination by the Office of Origin Examination by the International Bureau Irregularities

Content of the International Application (MM2)
Four mandatory elements: identity of applicant designated Contracting Parties reproduction of the mark indications of goods and services

Cost of an Application Basic Fee Black and white Mark 653 CHF
Mark in color 903 CHF Designation fee 100 CHF/country OR individual fee xxx CHF/per CP Fees for goods & services beyond three CH/class or individual fee

Examination by the Office of origin

Certification by Office of Origin
Item 13 Application Form Identity between, inter alia applicant mark goods and services 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 basic application/registration

Procedure Office of Origin informed/notified
Applicant informed/notified 3-month time limit for correction

Examination by the International Bureau

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

IRREGULARITIES of goods and services Rule 12 Classification
Rule 13 Indication Rule 11 Other irregularities of goods and services

Rule 12 : Classification of goods and services
The IB considers that the G&S should be classified in a different class or have not been classified Correction by the OO The IB has the “last word”

Rule 12 : Procedure REGISTERED (as filed)
IB withdraws proposal Fees paid REGISTERED (as filed) OO gives opinion IB modifies proposal Fees paid REGISTERED (as per modification or IB proposal) reminder : 2 months IB confirms proposal IB Proposal 3 months to resolve No reply from OO REGISTERED (as per IB proposal) Fees paid ABANDONED 1 Fees not paid 1 Refund: fees paid minus 1/2 basic fee for a b&w registration.

Rule 13 : Indication of G&S
The IB considers that a term indicated is: - too vague for the purposes of classification; - linguistically incorrect; - incomprehensible. Correction by the OO The IB is the only « judge »

Rule 13 : Procedure REGISTERED (as per proposal)
IB accepts OO proposal IB Suggestion IB rejects REGISTERED (as filed but with notation) 3 months to resolve REGISTERED (as filed but with notation) No reply from OO

Rule 11: other irregularities
Corrected REGISTERED OO Reply IB Proposal Not corrected ABANDONED* 3 months to resolve No Reply * Refund: fees paid minus 1/2 basic fee for b&w registration.

International Registration
Date of the International Registration Refusals Responding to Refusals Invalidation Ceasing of Effects (5-year dependency period)

Date of the International Registration
Article 3(4) of the 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

Date of the International Registration(*)
2 months Reception of the request by the OO Reception of the request by the IB * Reception of the request by the OO Reception of the request by the IB * 2 months 2 months Reception by the IB of the last missing mandatory element Reception of the request by the OO *

Refusals

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

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

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))

Two different types of grounds for refusals
1) Absolute grounds 2) Relative grounds

1) Absolute grounds - Descriptive - Devoid of distinctive character Generic Contrary to accepted principles of morality or to public policy Deceptive

1) Absolute grounds - Prohibitions concerning State Emblems, Official Hallmarks, Emblems of Intergovernmental Organizations Shape of the goods Origin of alcoholic beverages, agricultural products and foodstuffs

2) Relative grounds i) oppositions = earlier rights : the mark is of such nature as to infringe rights acquired by third parties / the mark constitutes a reproduction, an imitation or a translation, liable to create confusion of a prior mark for similar or identical products and/or services ii) list of goods and/or services too vague / broad

Notification of refusal
Notification to the offices of the designated countries SGP Rule 18ter(1) Interim Status of the mark (no grounds for ex officio refusal) Rule 18bis(1)(a) Provisional Refusal Rule 17(1)

When all the procedures before the office are over
Statement of Grant of Protection SGP When all the procedures before the office are over The mark is protected Rule 18ter(1) Mandatory - Rule 40(5) (01/01/2011)

EX OFFICIO EXAMINATION COMPLETED
No grounds for refusal by the office BUT oppositions/observations still possible Rule 18bis(1)(a) INTERIM STATUS OF THE MARK (OPTIONAL) Notification of a provisional refusal based on opposition Rule 17(1) SGP When opposition period has expired without any oppositions/observations Rule 18ter(1)

Notification of provisional refusal Rule 17(1)
WHEN ALL PROCEDURES BEFORE OFFICE COMPLETED SGP For ALL the goods and services Rule 18ter(2)(i) SGP for SOME goods and services Rule 18ter(2)(ii) FINAL DISPOSITION ON THE STATUS OF THE MARK (MANDATORY) Confirmation of total provisional refusal Rule 18ter(3) Further decision affecting the protection of the mark Rule 18ter(4)

Responding to refusals
Governed entirely by national law (Procedures governed by national regimes: hearings, appeals,…) Appoint local representatives (may not be mandatory, but advisable) Obtain informed and authoritative advice Decide early on strategy

Invalidation Article 5(6) & Rule 19

What is meant by “invalidation”
What is meant by “invalidation” ? Any decision by a Competent Authority (adm. or jud.) of a DCP revoking or cancelling the effects of an IR with regard to all or some G & S covered by the designation.

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

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

Dependence Ceasing of Effects of Basic Mark Transformation

Dependence The protection resulting from the IR registration remains dependent on the basic registration or application TIME: 5 years from the date of the IR At the end of the 5-year dependency period, the IR becomes independent of the basic mark

Article 6(3) and (4) of Protocol Rule 22
Ceasing of Effects Article 6(3) and (4) of Protocol Rule 22

Definition “Ceasing of Effects” of Basic Mark can be due to:
Withdrawal, lapse or renunciation or final decision of rejection, revocation, cancellation or invalidation An act or failure to act by owner of basic mark or an act by Office of origin or a third party Must occur: Before expiry of 5-year dependency period, or After expiry of 5-year dependency period if related to a proceeding initiated before expiry of 5-year period. Commonly called “Central Attack” Resulting Cancellation of goods and services in the IR affects all designated Contracting Parties

Procedure If a basic mark “ceases to have effect” in whole or in part within 5 years of date of IR, Office of Origin notifies IB, pursuant to Rule 22, and requests partial or total cancellation of IR. Basic Mark 5-Year Dependency International Bureau cancels IR to the extent requested by Office of Origin. IB notifies all designated Contracting Parties of partial or total cancellation of IR. Records and publishes. International Registration (IR) Always Dependent Effect of IR as a national/regional registration No particular action required; some designated Contracting Parties may update their databases.

Transformation In order to soften the consequences of the “Central Attack”, the Protocol provides for the holder of an IR cancelled to TRANSFORM the mark with the Offices of all designated countries.

TIME: FORMAL REQUIREMENTS
The application has to be filed within 3 months from the date on which the IR was cancelled in the International Register FORMAL REQUIREMENTS Same mark The goods and services of the application are covered by the goods and services contained in the IR in respect of the Contracting Party concerned Such application complies with all the requirements of the applicable law, including the requirements concerning fees

Transformation The transformation is not available:
Where the IR has been cancelled at the request of the holder 2. With respect to a Contracting Party in the territory of which the IR has been subject of a total refusal, invalidation or renunciation 3. In a Contracting Party whose designation is not governed by the Protocol or in a Contracting State where the IR did not have effect

Managing an International Registration
Subsequent designations Modifications changes in name and address of holder/representative assignments (change in ownership for all or some G&S and for all or some DCPs) Recording of limitation of G&S for all or some DCPs Recording of renunciation of all G&S for some DCPs Recording of cancellation of all or some G&S for all DCPs Recording of licenses Recording of restriction of the holder’s right of disposal Term of protection and Renewal of an International Registration One of the greates advantages of the Madrid system is the central management of the trademark and that is where the system becomes especially advantagiuos.Subsequent designations, renewals and different modifications ( like assignments, changes in name or address of the holder or his representative) are recorded centrally with effect for various designated CPs, by means of a single administrative procedure and payment of a single fee. In addition there is only one expiry date and one registration to renew. Again there is a great saving as to fees, the procedure is simple and user friendly, in one language. The holder does not need to go through different legislations and hire an trademark agent.

Managing the International Registration
Subsequent Designations Art. 3ter(2) (Rule 24)

Presentation Form MM4 By the Holder or by Office of the Contracting Party of the Holder

Subsequent Designation: Principle
A Contracting Party may be designated subsequently if, at the time of this subsequent designation, it is bound by the same treaty as: the Contracting Party whose Office is the Office of origin (no change in ownership); the Contracting Party with which the new holder has a connection (in case of change in ownership).

Date of Subsequent Designation
Presentation by Holder: date of receipt by IB Presentation by Office: date of receipt by Office if received by IB within 2 months Rule 24(6)(d) effect after renewal effect after recording of change

Term of a Subsequent Designation
The period of protection of a subsequent designation does not have an independent lifetime of 10 years, but expires on the same date as the international registration to which it relates

PAYMENT VALID ONLY UNTIL 1/01/2006
SUBSEQUENT DESIGNATION MADE BEFORE 10 YEARS 1/01/ /01/2016 1/01/2006 ___________________________________________________ PAYMENT VALID ONLY UNTIL 1/01/2006

1/01/1996 1/01/2016 SUBSEQUENT DESIGNATION MADE AFTER 10 YEARS
1/01/ /01/2016 1/01/2006 ___________________________________________________ PAYMENT VALID UNTIL 1/01/2016 FOR THIS DESIGNATION AS FROM 1/01/2016 : MARK RENEWABLE EVERY 10 YEARS

Change in Ownership

Recordal of Change in Ownership
Article 9 Protocol Article 9bis and 9ter Agreement Rule 25 Form MM5

Change in Ownership May result from, e.g.: - Contract/Assignment
- Court decision - Operations of law (Inheritance, bankruptcy) May relate to some or all goods/services May relate to some or all Contracting Parties (CPs)

Entitlement to be the New Holder
If new owner is entitled to file international applications Entitlement of the new owner is considered in respect of each designated Contracting Party Accumulation of entitlements possible (Rule 25(2)(a)(iv)

Presentation of Request Rule 25(1)(b)
directly to the IB through an Office by the recorded holder: (the transferor) Office of holder’s CP Office of new owner’s CP Office of holder’s CP by the new owner: (the transferee) through an Office Office of new owner’s CP

Limitation, Cancellation, Renunciation Rules 25, 26 and 27

Limitation, Cancellation, Renunciation
some designated Contracting Parties Limitation some of the goods and services all designated some of the goods and services Cancellation all designated all the goods and services Contracting Parties Renunciation all the goods and services some designated

EFFECTS CONSEQUENCES no protection for subsequent designation is the goods/services possible LIMITATION goods/services remain goods/services taken into kept in the International account for calculating Register renewal fees no protection for the no subsequent designation goods/services in respect of those goods/services PARTIAL CANCELLATION goods/services are goods/services are not taken removed from the into account for calculating International Register renewal fees RENUNCIATION no protection in the subsequent designation Contracting Party of the Contracting Party is possible

Term of Protection Renewal
Articles 6(1) and 7(1) Rule 30(4)

Term of Protection and Renewal
term of registration: 10 years renewal for further 10 years

Renewal Procedure 6 months before expiry of 10 year period
Unofficial notice of expiry 6 months before expiry of 10 year period Payment direct with the IB fees plus indication of purpose, or fees plus MM 11 Fees are due at the date of expiry at the latest 6 months grace period (+ 50% basic fee)

E-Renewal Credit Card Current Account opened with WIPO
As from April 3, 2006 the “E-Renewal” system is available for electronic renewal of international registrations of marks Payment by: Credit Card Current Account opened with WIPO

No Changes at Renewal ! name or address goods or services
IR is renewed as recorded No changes as part of the renewal: name or address goods or services subsequent designations Exception renewal for some designated CP only

Thank you! andre.ntamack@wipo.int

Jerusalem July 2010 André Ntamack

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