Application and Registration Procedures under the Madrid System

1
Application and Registration Proceduresunder
the Madrid System
Grégoire BissonHeadInternational Registration
Systems Legal System
2
3 Partners in the Procedures
Certifies that particulars in international app.
those in basic app. or basic reg. Handles
deficiencies
OFFICE OF ORIGIN
InternationalApplication
Checks formalities Records in the International
Register Publishes in the International
Gazette Notifies designated Contracting Parties
INTERNATIONALBUREAU
Substantive Examination
OFFICE OFDESIGNATEDCONTRACTINGPARTY
refusalwithin set time limits
refusal
no refusal effect of anational registration
3
Madrid System
1 System 2 Treaties 2 Types of Designations 3
Types of International Applications
4
Types of International Applications
5
Comparison between Agreement Protocol

• Agreement Protocol
• Members States States/Organizations
• Basic mark basic registration basic registration/
  application
• Languages French English, French, Spanish
• Fees supplementary and or individual fee option
• complementary
• Refusal 12 months or 18 months or 18
• months (opposition)
• options
• Dependency 5 years 5 years with possible
  transformation

6
Types of Applications
Rule 1(viii)
Governed exclusively by Agreement all
designations governed by Agreement
MM1
Governed exclusively by Protocol all designations
governed by Protocol
Rule 1(ix)
MM2

• Governed by Agreement and Protocol
• some designations governed by Agreement
• some designations governed by Protocol

Rule 1(x)
MM3
7
Madrid Protocol Article 9sexies
SAFEGUARD CLAUSE
. . . the provisions of this Protocol shall have
no effect . . .
Treaty GoverningDesignation
Protocol
Agreement
Agreement
Treaty(ies) binding the Designated Contracting
Parties
8
MM1
Why is this type of international application
governed exclusively by the Agreement?
A
AP
A
A
France
9
MM1
Why is this type of international application
governed exclusively by the Agreement?
Madrid Protocol, Article 9sexies (Safeguard
Clause)
. . . the provisions of this Protocol shall have
no effect . . .
A
A
A
AP
or
A
AP
France
Italy
10
MM1 - Requirements
International Application

• Office of Origin
• Filing basis
• Form
• Language

• Cascade applies - Article 1(3) of the Agreement
• Basic Registration
• MM1
• French

Each Designation
Supplementary Complementary 12 months
Fees Refusal Period
11
MM2
Why is this type of international application
governed exclusively by the Protocol?
P
P
P
P
Australia
or
P
AP
USA
China
12
MM2
Why is this type of international application
governed exclusively by the Protocol?
P
P
Denmark
P
AP
or
P
P
China
UK
13
MM2 - Requirements
International Application

• Cascade does not apply
• Basic Registration or Basic Application
• MM2
• French, English or Spanish

• Office of Origin
• Filing basis
• Form
• Language

Each Designation
Supplemental Complementary, or Individual 12
months, or 18 months, or 18 months
Fees Refusal Period
14
MM3
Why is this type of international application
governed by the Agreement and Protocol?
Madrid Protocol, Article 9sexies (Safeguard
Clause)
. . . the provisions of this Protocol shall have
no effect . . .
A
A
P
AP
P
AP
Denmark
A
Belarus
AP
Switzerland
15
MM3 - Requirements
International Application

• Cascade applies - Article 1(3) of the Agreement
• Basic Registration
• MM3
• French, English or Spanish

• Office of Origin
• Filing basis
• Form
• Language

Each Designation under the Agreement
Supplemental Complementary 12 months
Fees Refusal Period
Each Designation under the Protocol
Supplemental Complementary, or Individual 12
months, or 18 months, or 18 months
Fees Refusal Period
16
Contents of the International Application

• MM1, MM2, MM3, MM17, MM18
• Rule 9

17
Role of the Office of Origin

• Rule 9(5)(d)
• Rule 11(4), 12 and 13

18
Certification by Office of Origin

• Rule 9(5)(d) / Item 13 Application Form
• Identity between, inter alia
• applicant
• mark
• goods and services
• Date of receipt of the request to present the
  international application

19
Irregularities to Be Remedied bythe Office of
Origin

• Rule 11(4)
• Official form not used
• Fundamental Omissions (4 under Rule 15)
• Applicants entitlement
• Certification Irregularities
• No Office Signature
• No basic application/registration details
• Rules 12 13
• Classification of GS
• Indication of GS

20
Role of the International Bureau

• Rules 11 to 15

21
International Bureau -tasks
22
Registration Process within the IB
REGISTERED
No Irregularities
Finance processing
Distribution
Scanning
Translation
Examination
Data entry
Receipt of the request
Correction w/in time limits
Irregularities
No correctionw/in time limits

• Vienna Classification
• Entitlement of the applicant
• Designated Contracting Parties
• Classification of goods/services
• Fees paid

ABANDONED

23
Irregularities

• Rule 12Classification
• Rule 13Indication
• Rule 11Other irregularities

of goods and services
24
Rule 12 Classification of goods and services

• If GS are not classified or If IB considers
  that the GS are not properly classified
• Irregularities to be remedied by OO
• IB has the final say (Art.3)2) in fine)

25
Rule 12 Procedure
Fees paid
IB withdraws
REGISTERED(as filed)
OO opinion
IB modifies
Fees paid
REGISTERED (as per modification or IB proposal)
IB confirms
reminder 2-months
IB Proposal
3 monthsto 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
black white reproduction.
26
Rule 13 Indication of GS

• IB considers that the terms indicated are
• - too vague for the purposes of classification
• - linguistically incorrect
• - incomprehensible.
• Irregularities to be remedied by OO
• IBs  final say  limited to its opinion being
  recorded

27
Rule 13 Procedure
accepted by IB
REGISTERED (as per OO proposal)
Reply from OO
rejected by IB
REGISTERED (term deleted if not classified)
IB Suggestion
3 months to resolve
If term classified
REGISTERED(as filed but with annotation)
No reply from OO
28
Rule 11 Other Irregularities
REGISTERED
Corrected
OO Reply
IB Proposal
Uncorrected 1
ABANDONED 2
3 monthsto resolve
No Reply
1 Except priority claim or designation without
common treaty
2 Refund fees paid minus 1/2 basic fee for
black white reproduction.
29
Date of the International Registration

• Article 3(4) of the Agreement and Protocol
• Receipt of application by OO, if received by IB
  within 2 months with the 4 mandatory elements
  (Rule 15)
• Rule 15 (4 mandatory elements in IA)
• identity of applicant
• designated Contracting Parties
• reproduction of the mark
• indication of goods and services

30
Date of the International Registration()
2 months
2 months
2 months
31
2. International Bureautasks
32
Role of the Office of the Designated Contracting
Party
No specific role but possibility to issue a
Refusal Article 5, Rules 16, 17 and 18
33
Possibility of Refusal
Office of the Designated CP
substantive examination opposition
12/18 months
provisional refusal
no provisional refusal/withdrawn national
registration
34
Notification of Refusal - 3 possible stages
(Rule 17)

• The initial notification (provisional refusal)
• - prescribed content
• - recording and transmission by IB
• Confirmation or Withdrawal
• when final before the Office, and finally ..
• Further decision affecting protection?

35
Notification of Provisional Refusal Applicable
Time Limits

• 12 months
• Mandatory under Agreement
• Standard under Protocol
• 18 months
• Optional under Article 5(2)(b) of the Protocol
• 18 months if forewarned possibility of
  opposition
• Article 5(2)(c) of the Protocol

36
Protocol CPs which have opted for 18 months

• Armenia, Australia, Belarus, Bulgaria, Cyprus,
  China, Denmark, Estonia, European Community,
  Finland, Georgia, Greece, Ireland, Iceland, Iran
  (I. R. of), Italy, Japan, Kenya, Lithuania,
  Norway, Poland, Rep. of Korea, Singapore,
  Slovakia, Sweden, Switzerland, Turkmenistan,
  Turkey, Ukraine, United Kingdom, United States,
  Uzbekistan.

- all others 12 months
37
Notification of Provisional Refusal Non-Valid
Grounds

• Formal grounds
• Classification of the goods/services
• (Rule 12 ! )
• Single class registration (Art. 5(1))
• Limit to number of goods or services (Art. 5(1))

38
Responding to Refusals

• Governed entirely by national law
• Vary considerably from country to country
• Strategies/procedures for responding vary
  correspondingly
• Appointment of local representative is often
  required

39
Effects of the International Registration
(Article 4)

• An International Registration has
• the effect of a .
• National application
• as from the date of the international
  registration
• National registration, effective for 10 years,
  renewable indefinitely
• in the absence of a refusal, or if refusal
  withdrawn

40
Statement of Grant of Protection

• - if no notification of Refusal issued, a CP may
  send SGP after
• (a) all procedures completed (protection
  granted),
• or
• (b) (i) ex officio examination complete
• (ii) after expiry of opposition period
  (protection granted).

41
SGPs are issued by the following Contracting
Parties
Armenia Australia Benelux Georgia
Hungary Ireland Japan Norway United
Kingdom Rep. Of Korea Singapore
Sweden Syrian Arab Rep. Turkey European
Community
42
Management of an International
RegistrationAdvantages and Specificities
43
Centralization of Procedures

• Transfers / Changes in Ownership
• Changes in Names and Addresses
• Renewal
• Change of Representatives
• Recording of Licenses
• Recording of Restrictions
• Changes to scope of goods and services
  (limitations) and/or Contracting Parties
  included in the international registration

44
Subsequent Designation(Article 1 and 2 of
Agreement Article 2 of Protocol Rule 24)

• Can designate additional Contracting Parties
  after international registration
• Subject to international procedures similar to
  those of a designation in an international
  application
• Start date for protection recording of
  subsequent designation
• Term and renewal of IR does not change
• Reasons
• Indefinite term of trademark registration
• Expansion of trade
• Refusal ground no longer applies
• New Contracting Parties

45
Dependency and Ceasing of Effect(Article 4bis,
Rule 21)
If a basic mark ceases to have effect in whole
or in part within 5 years of date of IR, Office
of Origin notifies International Bureau (IB) and
requests partial or total cancellation of IR.
Basic Mark
International Bureau (IB) cancels IR to the
extent requested by Office of Origin. IB
notifies (Rule 22) all designated Contracting
Parties of partial or total cancellation of IR.
Records and publishes.
International Registration (IR)
Effect of IR as a national/regional registration
No particular action required by the designated
Contracting Parties.
46
Transformation (Protocol Article 9quinquies)

• Cancellation of the goods or services, in whole
  or in part, in an IR due to a ceasing of effect
  triggers a right to file an national or regional
  application in each designated Contracting Party
  (DCP)
• Rights preserved
• date of international registration becomes
  filing date
• priority date, if any, claimed in international
  registration

47
Replacement (Agreement and Protocol, Article
4bis)

• IR is deemed to replace national/regional
  registration if
• Mark is the same
• Holder is the same
• IR gs that in the national register covered by
  those in the IR
• Extension of IR to that CP takes effect after
  date of the national registration
• Without prejudice to any rights acquired by
  virtue of national/regional registration

48
Thank You
Grégoire BissonHeadInternational Registration
Systems Legal Sectionintreg.mail_at_wipo.int