trademark protection at home and abroad. the madrid …...the basic application or registration...
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Trademark Protection at home and
Abroad. The Madrid System for the
International Registration of Marks
International Registration and its Management
Tallinn,
June 5 and 6, 2014
Normunds LAMSTERS
Principal Examiner, Processing Team 1,
Operations Division, Madrid Registry
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
2
Abbreviations
CP – Contracting Party
DCP – Designated Contracting Party
G&S – Goods and Services
IB – International Bureau
IR – International Registration
OO – Office of Origin
3
Effects of the International Registration
4
Effects of the International Registration (1)
Subsequent designations «branches»
International Registration «trunk»
Basic application/registration «roots»
© MICHAEL HALBERT
5
Effects of the International Registration (2)
From the date of the IR,
the protection of the mark
in each of the DCPs is the
same as if:
The mark had been filed
directly with the Office of that
CP, and
The mark had been
registered by the Office of
that CP, if no refusal is
notified within the applicable
time limit
6
Subsequent Designation
7
Subsequent Designation (1)
The holder of an IR has the possibility of extending the geographic scope of a registration’s protection to other CPs to the Madrid System by requesting a subsequent designation
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
May relate to all or some of the G&S
A particular case: subsequent designation resulting from
the conversion of the designation of a Contracting
Organization (European Union)
8
Subsequent Designation (2)
Compulsory to use the official form MM4 or webform via E-subsequent designation
Presentation:Directly to the IB by the holder/recorded representative;
Through the Office of the CP of the holder if a CP is designated under the Agreement
Fees:Basic fee – 300 CHF
Complementary fee(s) without individual fee – 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)
9
Subsequent Designation (3)
Requirements for certain designated CPs:
European Union
Indication of a second working 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 Contracting Parties is taken, per se, as comprising the required declaration of intention to use
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Notification
Subsequent Designation (4)
1
3
3
Information
MM4
IB
Holder
Office of CP
of the holder
Office(s) of DCP
Recorded in the International Register
2
11
Conversion - “Opting Back” (1)
Where a designation of the European Union in an IR has been withdrawn, refused or has ceased to have effect
The holder may request conversion through subsequent
designation of its member States
Form MM16 to be presented through OHIM
Must indicate the ground for conversion
A subsequent designation resulting from conversion will
bear the date on which the designation of the European
Union was recorded in the International Register
12
MM16 +
Application for
Conversion
Conversion -“Opting Back” (2)
IB DCPs
Local. repHolder
MM16Recorded in the
International
Register
Notification
OHIM
Holders not having their domicile nor a
real commercial establishment in the
European Union (Professional
representation is mandatory)
Holders having their domicile
or a real commercial
establishment in the
European Union
13
Change in Ownership
14
Change in Ownership (1)
May result from, e.g.
A contract (such as an assignment)
A 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)
15
Change in Ownership (2)
Compulsory to use the official form MM5
Presentation:
Directly to the IB by the holder/recorded representative
Through the Office of the CP of the recorded holder or the
Office of the CP of the new owner
Fees:
177 CHF per international registration
16
Change in Ownership (3)
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
17
18
CP of the transferor
France (A/P)Tunisia (P)
United States of
America (P)
Germany (A/P)
Algeria (A)
China (A/P)
CP of the transferee
Change in Ownership (4)
Change in Ownership (5)
Information
NotificationIB
Holder
Office(s) of DCP
New Owner
(transferee)
(transferor)
MM5
1MM5 Consent from the holder
+1
Recorded in the International Register
2
3
3
Office of CP
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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:
Easy-to-manage the said IRs
Cost saving on renewal
Transferee B
= Holder A
Holder A
Merged international registrations
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Restrictions in the Protection of the
International Registration
Limitation, Renunciation and
Cancellation
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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
22
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
23
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.
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Limitation, Renunciation and Cancellation (4)
Limitation
(MM6)
Renunciation
(MM7)
Cancellation
(MM8)
Goods &
ServicesSome All Some or All
Designated
OfficesSome or All Some All
Subsequent
Designations
Fees 177 CHF Free of charge Free of charge
25
Change in the Name and/or Address
of the Holder
26
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, or through the Office of the CP of the holder
Fees: 150 CHF irrespective of the number of IRs concerned
27
Appointment of Representative
28
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 international registration number must be indicated
Only one recorded representative per international application or registration
29
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
30
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
31
Ceasing of Effect
32
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
33
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
34
Transformation
35
Transformation
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)
36
Ceasing of Effect and Transformation
IB DCP
Local. repHolder
Recorded in the
International
Register
OO
Power of Attorney
Notification
(Rule22)
TransformationCancellation
Cancellation
37
Renewal of an International
Registration
38
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
May not include any change in relation to the IR
39
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: https://webaccess.wipo.int/trademarks_ren/erenewal_en.jsp).
40
Renewal - Fees
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
41
Renewal Procedure
Certificate
OfficesIB
Holder (or the
Representative if
appointed)
Recorded in the International Register
3
2
MM11
4
Reminder
1
4
Renewal
42
Replacement
43
Replacement (1)
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
44
Replacement (2)
Where a mark that is the subject of a national registration
in the designated CP is also the subject of an IR
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
Both registrations stand in the name of the same person+
=
45
Useful Information
Legal texts, treaties, regulations, administrative instructions are available at: http://www.wipo.int/madrid/en/legal_texts/
Forms: http://www.wipo.int/madrid/en/forms/
Individual Fees: http://www.wipo.int/madrid/en/madridgazette/remarks/ind_taxes.html
Fee calculator: http://www.wipo.int/madrid/en/fees/calculator.jsp
E-subsequent designation: https://www3.wipo.int/osd/index.xhtml
E-Renewal: https://webaccess.wipo.int/trademarks_ren/erenewal_en.jsp
ROMARIN: http://www.wipo.int/romarin
The WIPO Gazette of International Marks: http://www.wipo.int/madrid/en/madridgazette/
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New Web Based Client Services
Madrid Real-Time Status (http://www.wipo.int/mrs/):
A tool to inform of the status of an international
application/registration
Madrid Portfolio Manager (https://www3.wipo.int/mpm/):
A tool to allow the holders and representatives of international registrations to view and modify their portfolio online
Madrid Electronic Alert (https://www3.wipo.int/mea/):
A tool to allow users to submit a list of international registrations to monitor and to be informed by email when any of them change
47
Contact Us
General queries on the Madrid System
Madrid Customer Service: +41 22 338 8686
intreg.mail@wipo.int
Specific queries on IA or IR
madrid.team1@wipo.int +41 22 338 750 1
madrid.team2@wipo.int +41 22 338 750 2 (Estonia)
madrid.team3@wipo.int +41 22 338 750 3
http://www.wipo.int/madrid/en/contact.html
For the electronic communication with IB
e-marks@wipo.int
http://www.wipo.int/madrid/en/services/electronic_notification.html
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Thank you
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