Management and maintenance of international registrations

Transcription

1 Management and maintenance of international registrations Regional Meeting of Intellectual Property Office Officials Responsible for the Madrid System Juan Rodriguez Senior Legal Officer Legal Division Madrid Registry Tokyo, December 2016

2 2 Agenda Centralized management and maintenance requirements Cancellations, changes and other recordings in the International Register

3 3 Centralized management and maintenance requirements

4 4 Centralized management Holders of international registrations cannot request renewals, cancellations, changes or other recordings to the Offices of the designated Contracting Parties (dcps) Holders must file those request with WIPO (directly or through the Office of holder) Cancellations, changes and other and recordings made by WIPO in the International Register have effect in all the dcps WIPO will notify those cancellations and recordings to the Offices of the dcps

5 5 Maintenance requirements Substantive maintenance requirements, such as use, must be met in dcps, in accordance with applicable laws Protection in dcps might be affected, by third-party actions or ex-officio, if those requirements are not met Formal maintenance requirements, such as filing affidavits or declarations, must be fulfilled directly with Offices of dcps The following Contracting Parties require filing an affidavit or declaration : Mozambique, the Philippines and the U.S.A.

6 6 Recordings in the International Register Cancellation and changes Cancellation of the international registration Renunciation with respect to a designated Contracting Party Limitation of the scope of protection in one or more designated Contracting Parties Change in name, address or legal nature of the holder Change in ownership Merger Division & Merger Other recordings Licenses Restriction of the holder s right of disposal Appointment of a representative before the International Bureau or cancellation therefrom Change in the name or address of the representative

7 7 Declarations of no effect limitation has no effect change in ownership has no effect given license has no effect Offices of the dcps must be sent declaration within 18 months from the date of the notification of the recording When that decision is subject to appeal, the Offices of the dcps must must send their final decision

8 8 Cancellations, changes and other recordings in the International Register

9 Cancellation 9

10 10 Cancellation Cancellation of the international registration (total) at the request of the holder Cancellation of some goods and services (partial) at the request of the holder Cancellation at the request of the Office of origin (due to ceasing of effect)

11 Cancellation of the international registration (total cancellation) 11

12 Cancellation of some goods and services (partial cancellation) 12

13 Cancellation due to ceasing of effect 13

14 Renunciation 14

15 Renunciation in respect of a designated Contracting Party 15

16 Limitation 16

17 Limitation of the list of G&S in a designated Contracting Party 17

18 18 Declaration that a limitation has no effect: example

19 19 What would happen if You are assigned to review this limitation and considered that by limiting the scope from Wine and spirits to Spirits the holder is actually seeking an expansion of the original list, which is not allowed under Section 43 of your regulations?

20 20

21 21 Change in the name, address or legal nature of the holder

22 Change in name address or legal nature of the holder 22

23 Change in ownership 23

24 24 Change in ownership Of the international registration (total) In respect of some Contracting Parties (partial 1) In respect of some goods and services (partial 2)

25 Of the international registration 25

26 In respect of some Contracting Parties 26

27 In respect of some goods and services 27

28 28 Declaration that a change in ownership has no effect: example

29 29

30 30 What would happen if You were assigned to review this recording and considered that the a firm based in Luxemburg could not be the holder of this mark because it might mislead consumers as to the origin of the goods

31 31

32 32

33 33 Merger of registrations resulting from partial change in ownership

34 34

35 35

36 36 Division of the international registration

37 37 Division & Merger in respect to a designated Contracting Party Enters into force in February 2019; therefore, no forms yet available Holder may request that the registration be divided (goods and services) in respect to a designated Contracting Party Request would have to be presented through the Office of the designated Contracting, which must first approve it Divided part in new registration with alphabetical suffix Holder could later request the merger with parent registrations

38 Licenses 38

39 39

40 40 Restriction of the holder s right of disposal

41 41

42 42 Recordings concerning the representative

43 43 Recordings concerning the representative Offices of the dcps are notified of the following : recording of the appointment of a representative cancellation of the recording of the appointment of a representative change in the name or address of a representative These are notified to the Offices of the dcps for information only

44 Thank you for your attention