Madrid System for the International Registration of Marks

Transcription

1 Madrid System for the International Registration of Marks Management and Maintenance of International Trademark Registration Prague, April 27, 2015 Normunds LAMSTERS Acting Coordinator, Processing Team 1, Operations Division, Madrid Registry

2 2 Content of the Presentation Effects of the International Registration Subsequent Designation Change in Ownership Limitation, Renunciation and Cancellation Changes in the Name and/or Address Appointment of Representative Ceasing of Effect Transformation Renewal Replacement Corrections

3 3 Abbreviations CP Contracting Party DCP Designated Contracting Party G&S Goods and Services IB International Bureau IR International Registration OO Office of Origin

4 Effects of the International Registration 4

5 5 Effects of the International Registration (1) The International Registration = A National Application until the expiry of the time limit for issuing a refusal A National Registration once the time limit for issuing a refusal has expired (assuming no refusal or refusal withdrawn)

6 6 Effects of the International Registration (2) Subsequent designations «branches» International Registration «trunk» Basic application/registration «roots» MICHAEL HALBERT

7 Subsequent Designation 7

8 8 Subsequent Designation (1) «Territorial extension of protection» (Article 3ter and Rule 24) A CP may be designated subsequently if, at the time of this subsequent designation, it is bound by the same treaty as the CP of the holder The subsequent designation may relate to one IR only May relate to all or some of the G&S

9 9 Subsequent Designation (2) Compulsory to use the official form MM4 or web form via E-subsequent designation It should be presented directly to the IB by the holder or via the Office of the CP of the holder Choice of language (English, French or Spanish) The subsequent designation does not have an independent lifetime, but expires on the same date as the IR to which it relates Recording of the necessary changes should take place before the subsequent designation is made

10 10 Subsequent Designation (3) A holder may subsequently designate any CP which is bound by the same treaty Article 14(5) no subsequent designation is possible for IRs effective prior to the date of accession to the Protocol of the CP The following CPs have made a declaration under Article 14(5): Estonia 18/11/1998 Turkey 01/01/1999 Namibia 30/06/2004 Philippines 25/07/2012 India 08/07/2013

11 11 Subsequent Designation (4) Fees: Basic fee 300 CHF Complementary fee(s) 100 CHF per each designated CP and/or Individual fee(s) if the designated CPs made the declaration provided for by Article 8(7) of the Protocol (and if the derogation provided for by Article 9sexies(1)(b) of the Protocol does not apply)

12 Subsequent Designation (5) 12 Requirements for certain designated CPs: European Union Indication of a second language (mandatory); Possibility of claiming seniority Form MM17 United States of America Declaration of intention to use the mark Form MM18 (mandatory) India, Ireland, New Zealand, Singapore and the United Kingdom The mere fact of designating any of these CPs is taken, per se, as comprising the required declaration of intention to use

13 Subsequent Designation (6) Date of Subsequent Designation 13 MM4 presented directly to the IB it will bear the date on which it was received by the IB MM4 presented through an Office it will bear the date on which it was received by the Office, provided that the IB received it within 2 months from that date The date of subsequent designation may be affected by irregularities concerning the IR number, the name of the holder, the DCPs, the list of G&S or the declaration of intention to use a mark, where required

14 14 Subsequent Designation (7) Recorded in the International Register 2 IB 3 Notification Office(s) of DCP 3 Information Web form Office of CP of the holder 1 Holder MM4

15 15 E-Subsequent Designation New web based tool for online filing of requests for subsequent designations Easy to use: enter the IR number, select CPs, indicate the goods/services (all or a limited list) and pay the fees directly Submission of MM4 form needed: to appoint a representative or provide instructions regarding e- communication with the holder (representative) to designate Algeria

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26 26 Conversion - Opting Back (1) Where a designation of the European Union (EU) has been refused or has ceased to have effect The holder may request conversion through subsequent designation of the Member States of EU Form MM16 to be presented through OHIM Must indicate the grounds for conversion A subsequent designation resulting from conversion will bear the date on which the designation of the EU was recorded in the International Register

27 27 Conversion - Opting Back (2) IB Notification DCPs Recorded in the International Register Holders having their domicile or a real commercial establishment in the European Union Holder MM16 MM16 + OHIM Application for Conversion Holders not having their domicile nor a real commercial establishment in the European Union (Professional representation is mandatory) Local. rep

28 Change in Ownership 28

29 29 Change in Ownership (1) May result from, e.g. Contract (such as an assignment) Company merger Court decision or operation of law (such as an inheritance or bankruptcy) Scope Total (all the G&S and all the DCPs) Partial (some of the G&S, and/or some of the DCPs) Compulsory to use the official form MM5 May relate to multiple IRs

30 30 Change in Ownership (2) The IB is only concerned with the formalities of the recording of a change in ownership and does not require or examine evidence of the said change (no supporting documents should be sent) Entitlement to be the new holder: The new holder must be entitled to file international applications His entitlement shall be considered in respect of each DCP Possibility of cumulative entitlements

31 31 Change in Ownership (4) CP of the transferor United States of America (P) CP of the transferee Czech Republic (A/P) Germany (A/P) Norway (P) Algeria (A) China (A/P)

32 Change in Ownership - (5) 32 Presentation of Request: By the recorded Holder (the transferor) Directly to the IB Through an Office Office of Holder s CP Office of New Owner s CP

33 Change in Ownership (6) 33 Presentation of Request: By the new Owner (the transferee) Through an Office Office of Holder s CP Office of New Owner s CP Fees:177 CHF per IR

34 Change in Ownership (7) 34 Recorded in the International Register 2 3 Information IB 3 Notification Office(s) of DCP New Owner Office of CP (transferee) 1 MM5 + Consent from the holder 1 MM5 Holder (transferor)

35 35 Merger of International Registrations Conditions for Merger of IRs: The same recorded holder has two or more IRs resulting from a partial change in ownership Request can be submitted directly to the IB or through the Office of CPs No fee, no official form Advantages of merger of IRs: Easier to manage Cost saving on renewal Transferee B = Holder A Holder A Merged international registrations

36 36 Restrictions in the Protection of the International Registration Limitation, Renunciation and Cancellation

37 37 Limitation, Renunciation and Cancellation (1) A limitation is a procedure to remove some G&S in respect of all or some of the DCPs in an IR A renunciation is a procedure intended to abandon the effects of an IR for all the G&S in respect of some of the DCPs A cancellation is a procedure to cancel the effects of an IR for all or some of the G&S in respect of all the DCPs

38 38 Limitation, Renunciation and Cancellation (2) Compulsory to use the official form: Limitation - MM6 Renunciation - MM7 Cancellation - MM8 Fees: Limitation Yes (177 CHF per IR) Renunciation/Cancellation No

39 39 Limitation, Renunciation and Cancellation (3) Presentation of Limitation: Directly to the IB by the holder/recorded representative Through the Office of the holder Presentation of Renunciation/Cancellation: Directly to the IB by the holder/recorded representative Through the Office of the CP of the holder only if the designation of the CP affected is governed by the Agreement.

40 40 Limitation, Renunciation and Cancellation (4) Goods & Services Designated Offices Subsequent Designations Limitation (MM6) Renunciation (MM7) Cancellation (MM8) Some All Some or All Some or All Some All Fees 177 CHF Free of charge Free of charge

41 41 Change in the Name and/or Address of the Holder

42 42 Change in the Name and/or Address Compulsory to use the official form MM9 May be presented: Directly to the IB by the holder/recorded representative Through the Office of the holder Fee: 150 CHF irrespective of the number of IRs concerned

43 Appointment of Representative 43

44 44 Appointment of Representative (1) A representative may be appointed: In the international application form (MM1, MM2 and MM3) In the subsequent designation form (MM4) In the request for the recording of a change (MM5 to MM9) In a separate communication by means of an optional form (MM12) or a letter signed by the holder No blanket appointments - each IR number must be indicated Only one recorded representative per international application or IR

45 45 Appointment of Representative (2) Any communication addressed to the IB by the recorded representative has the same effect as if it had been addressed by the applicant or holder Cancellation of representative: Appointment may be cancelled at any time at the request of the holder or the representative

46 46 Change in the Name and/or Address of the Representative By means of an optional form MM10 or a letter signed by the representative To be presented to the IB directly No fee

47 Ceasing of Effect 47

48 48 Dependency Period For a period of five years from the date of the IR, the protection resulting from the IR remains dependent on the basic application or registration ( basic mark ) This dependence is absolute, and is effective regardless of the reasons why the basic application is rejected or is withdrawn or the basic registration ceases to enjoy, in whole or in part, legal protection After the five-year dependency period, the IR becomes independent of the basic mark

49 49 Ceasing of effect Ceasing of effect of the basic mark can be due to: The withdrawal, lapse or renunciation or the final decision of rejection, revocation, cancellation or invalidation An act or failure to act by the owner of the basic mark An act by the Office of origin or a third party Must occur: Before the expiry of the five-year dependency period, or After the expiry of the five-year dependency period if related to a proceeding initiated before the expiry of the five-year period The OO must notify the IB of the facts and decisions affecting the basic application or registration The IB cancels the IR to the extent applicable

50 Transformation 50

51 Transformation 51 Provided for only by the Protocol Transformation may only follow a cancellation of the IR as a result of ceasing of effect The mechanism, offering the holder of an IR the option of converting to a national or regional application filed directly with the Office of the DCP Preservation of filing date and priority of IR Must be filed within 3 months from the date of the cancellation of the IR Actual process subject to national laws, regulations and practices (no WIPO procedure)

52 52 Ceasing of Effect and Transformation IB Cancellation DCP Recorded in the International Register Notification (Rule22) OO Cancellation Holder Local. rep Transformation Power of Attorney

53 53 Renewal of an International Registration

54 54 Term of Protection and Renewal Term of registration: 10 years Renewal for further periods of 10 years (upon payment of the prescribed fees) Renewal in respect of all or some of the DCPs Partial renewal (for some of G&S) Amendments to Rule 30 of Common Regulations effective as from January 1, 2015 May not include any change in relation to the IR

55 55 Request for Renewal Optional form (Form MM11) Any communication giving the necessary information (IR number concerned, DCP(s) to be renewed and purpose of the payment) E-Renewal (a secure interface available at:

56 Renewal - Fees 56 Basic fee 653 CHF Supplementary fee for each class of G&S beyond three classes, except if the renewal is made only for DCP(s) in respect of which individual fees are payable 100 CHF Complementary fee(s) without individual fee(s) 100 CHF per each DCP and/or Individual fee(s) if the DCPs concerned have made the declaration under Article 8(7) of the Protocol Except where the derogation provided for by Article 9sexies(1)(b) of the Protocol applies in which case the complementary fee will be payable

57 57 Renewal Procedure 4 3 IB Renewal Offices Recorded in the International Register 2 4 MM11 Certificate Holder (or the Representative if appointed) 1 Reminder

58 Replacement 58

59 Replacement (1) 59 Why and when can replacement be useful? Preexisting national or regional registrations for same mark in a DCP of an IR Incorporate such preexisting national registrations into a single (IR) and therefore take advantage of the centralized maintenance and management features of the Madrid System Conditions: Both the national or regional registration and the IR must be in the name of the same holder Protection of the IR extends to the CP concerned All the G&S and services listed in the national or regional registration are also listed in the IR in respect of that CP Such extension must take effect after the date of the national or regional registration

60 Replacement (2) 60 Where a mark that is the subject of a national registration in the designated CP is also the subject of an IR + Both registrations stand in the name of the same person = IR is deemed to replace the national registration, provided that: Protection of the IR extends to the said CP All the G&S listed in the national registration are also listed in the IR Such extension takes effect after the date of the national registration

61 Corrections in the International Register 61

62 Corrections (1) Any errors made by the IB may be corrected Any errors made by an applicant may not be corrected Any substantive errors made by the Office may be corrected if a request for correction is received by the IB within 9 months from the date of publication of the erroneous entry in the International Register (Rule 28(4))

63 63 Corrections (2) Refusal following a correction under Rule 28(3): Rules 16 to 18ter shall apply mutatis mutandis The time limits are to be counted from the date of sending the notification of the correction An Office may declare in a notification to the IB that protection cannot be granted to the IR as corrected This may be done where there are grounds for refusal of the IR as corrected which did not apply to the IR as originally notified to the Office concerned

64 64 Extracts On request, the IB provides two types of certified extracts from the International Register concerning the content of an IR (whether in force or expired): Detailed certified extract (basic fee CHF 155) Simple certified extract (basic fee CHF 77) Certified copy of the certificate of an IR and the certificate of renewal (CHF 50) Legalization of a certified extract from the International Register (CHF 75) Requests via madrid.records@wipo.int

65 65 Useful Information Legal texts, treaties, regulations, administrative instructions are available at: Forms: Individual Fees: Fee calculator: E-Subsequent designation: E-Renewal: ROMARIN: The WIPO Gazette of International Marks:

66 66 Contact Us General queries on the Madrid System Madrid Customer Service: Specific queries on IA or IR (Czech Republic) madrid.team2@wipo.int madrid.team3@wipo.int For the electronic communication with IB e-marks@wipo.int

67 Thank you 67