THE MADRID SYSTEM FOR THE INTERNATIONAL REGISTRATION OF MARKS André Ntamack Tel Aviv, July 4-5, 2007

THE MADRID SYSTEM FOR THE

INTERNATIONAL REGISTRATION

OF MARKS

André NtamackTel Aviv, July 4-5, 2007

Preparing the International Application

Entitlement to file an International Application

Types of International Applications

Choosing the Office of origin

Representation before the International Bureau

Entitlement to File an International Application

Someone . . .

• Natural Person

• Legal Entity

. . . who has a connection . . .

• Real and Effective Industrial or Commercial Establishment (“Establishment”)

• Domicile

• Nationality

. . . with a member of the Madrid Union

• Contracting State

• Contracting Organization– Must have an establishment in, or be domiciled in, the territory

of an intergovernmental organization that is party to the Madrid Protocol, or be a national of a Member State of that organization

– Member State of organization does not have to be party to the Madrid Agreement or Madrid Protocol.

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

• Intended to have same meaning as Article 2 of Paris Convention

– 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.

Types of International Applications

2 Treaties

2 Possible Designations

3 Types of International Applications

One System

Types of Applications

Governed by Agreement and Protocol

some designations governed by Agreement

some designations governed by Protocol

Governed exclusively by Protocol

all designations governed by Protocol

Rule 1(viii):

Rule 1(ix):

Rule 1(x):

Governed exclusively by Agreement

all designations governed by Agreement

MM3

MM2

MM1

A

AA

Aor

France

San Marino

AP

A

Why is this type of international application governed exclusively by the Agreement?

Egypt

MM1

A

A

Aor

AP

APFrance

Madrid Protocol, Article 9sexies

(“Safeguard Clause”)

“. . . the provisions of this Protocol shall have no effect . . .”

A

Vietnam

San Marino

Why is this type of international application governed exclusively by the Agreement?

MM1

MM1 - Requirements

Office of origin: Filing basis:

Form:Language:

Cascade applies - Article 1(3) of the AgreementBasic RegistrationMM1French

Each Designation

Supplemental + Complementary

12 months

Fees:

Refusal Period:

International Application

P

PP

Por

AP

USA

P

Why is this type of international application governed exclusively by the Protocol?

MM2

China

Israel

P

P

Por

P

P

Why is this type of international application governed exclusively by the Protocol?

MM2

APChina

UK

Israel

MM2 - Requirements

Cascade does not applyBasic Registration or Basic ApplicationMM2French, English or Spanish

Each Designation

Supplemental + Complementary, or Individual

12 months, or 18 months, or 18+ months

Fees:

Refusal Period:


Office of OriginFiling basis:

Form:Language:

APFrance

P

A

A

A

P

APIsrael

Switzerland

AP

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 . . .”

MM3

Egypt

MM3 - Requirements

Cascade applies - Article 1(3) of the AgreementBasic RegistrationMM3French, English or Spanish

Each Designation under the Agreement

Supplemental + Complementary, or Individual

12 months, or 18 months, or 18+ months

Supplemental + Complementary

12 months

Fees:

Refusal Period:

Fees:

Refusal Period:

Each Designation under the Protocol


Office of OriginFiling basis:

Form:Language:

Examples

APHungary

Treaty Governing IA:Application Form:

Language of Application:IA can be based on a basic app:

A P APMM1 MM2 MM3French English SpanishYes No

Questions

Example 1

A

AP

AP

Belarus

Slovakia

A

A

A

AEgypt

Questions

Example 2




AP

AP

AP

P

A

AFrance

Italy

Japan

APGermany

P

Individual fee and 18+ months refusal do not apply in which DCP?:

Questions

Example 3All 3 DCPs have opted for the 18+ months refusal period and individual fees.




SE CN UK

AP

P

AP

P

AIsrael

China

UK

AP

P

P

Benelux

P

Questions

Example 4All 3 DCPs have optedfor individual fees.

Israel


Language of Application: IA can be based on a basic app:

A P A/PMM1 MM2 MM3French English SpanishYes No

Which DCPs will receive individual fees?: UK CH BX

P

AP

AP P

P

P P

Benelux

UK

Switzerland

Choosing the Office of Origin:When Does the “Cascade” Apply?

Article 1(3) of the Madrid Agreement

The Hierarchy

(3) Shall be considered the country of origin the country of the Special Union where the applicant has a real and effective industrial or commercial establishment; if he has no such establishment in a country of the Special Union, the country of the Special Union where he has his domicile; if he has no domicile within the Special Union but is a national of a country of the Special Union, the country of which he is a national.

Article 1(3) of the Madrid Agreement

Representation Before theInternational Bureau (Rule 3)

WHO may be appointed

• Rule 3(1) to change from April, 2007

• 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 Signed by person person making the making the appointmentappointment

1. Ex officio by the International Bureau

– new appointment

– change in ownership

2. By a communication sent to the International Bureau

the applicant/holderby

the representative

Cancellation of the Appointment

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 – Rule 9 (MM2)

four mandatory elements:

– identity of applicant

– designated Contracting Parties

– reproduction of the mark

– indications of goods and services

basic registration (A+P)

Prerequisite OR

basic application (P)

International

Application OFFICE OF ORIGIN

checks the correspondence between the basic mark and the international mark

INTERNATIONALBUREAU

examination on formalities

recording in the international register:international registration

notification of registration to the designated contracting parties

OFFICE OF A DESIGNATED

CONTRACTING PARTY

substantive examination

refusal of protection

overview of the international procedure

no refusal => protection granted

Examination by the ILPO as Office of Origin

Rule 9(5)(d)

Rule 11(4)

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 international application

Irregularities to Be Remedied byOffice 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

– Reproduction – Entitlement of the applicant Entitlement of the applicant – Designated Contracting PartiesDesignated Contracting Parties– Classification of goods/servicesClassification of goods/services– Fees paidFees paid

ExaminationExamination

No IrregularitiesNo Irregularities

CorrectionCorrection w/in time limitsw/in time limits

IrregularitiesIrregularities

No correctionNo correctionw/in time limitsw/in time limits

ScanningScanning

Reception Reception of the of the requestrequest

REGISTERED

REGISTERED or

ABANDONED

Finance processingFinance processing

TranslationTranslation

Registration Process within the IBRegistration Process within the IB

IRREGULARITIES

Rule 12Classification

Rule 13Indication

Rule 11Other 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”

IB Proposal

No reply from OO

IB modifies proposal

IB withdraws proposal

IB confirms proposal

REGISTERED(as per IB proposal)

Rule 12 : Procedure

3 monthsto resolve

ABANDONED 1Fees not paid

Fees paid

reminder : 2 months

1 Refund: fees paid minus 1/2 basic fee for a b&w registration.

OO gives

opinion

REGISTERED(as filed)

REGISTERED (as per modification

or IB proposal)

Fees

paid

Fees

paid

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 »

IB Suggestion

3 monthsto resolve

IB rejects

No reply from OOREGISTERED

(as filed but with notation)

IB accepts

OO proposal

Rule 13 : Procedure

REGISTERED (as per proposal)

REGISTERED (term deleted if not

classified )

If term classified

IB Proposal

No Reply

OO Reply

3 monthsto resolve

Rule 11: Other Irregularities

REGISTERED

ABANDONED*

Corrected

Uncorrected

* Refund: fees paid minus 1/2 basic fee for b&w registration.

International Registration

Date of the International Registration

Effects of the International Registration

Refusals and Responding to Refusals

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(*)

Reception of the request by the OO

Reception of the request by the IB

*


Reception of the request by the IB

*

Reception by the IB of the last missing mandatory element


* 2 months

2 months

2 months

Effects of the International Registration (Article 4)

The International ‘Registration’ =

A National Application

until the expiry of the time limit to issue a refusal

A National Registration

once the time limit to issue a refusal has expired(assuming no refusal or refusal withdrawn)


Refusals

Article 5

Rules 16, 17 and 18

Are there any limitations on the right to refuse?

• Time Limit

• Grounds

Time Limits

• Notification of provisional refusal :– 12 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

Protocol CPs which have opted for 18 months

Armenia, Australia, Belarus, Bulgaria, China, Cyprus, 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

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))

Acceptable Grounds for Refusal

Refusals can be based on…..

• a substantive inherent objection (unlawful mark, non distinctive mark)

• a prior cited registration/application (opposition)

• an objection to the specification of the goods and services

Notification of Provisional Refusal3 stages (Rule 17)

The initial notification (provisional refusal)

- prescribed content (identity of the office, IR, grounds, scope of the refusal, time limit for filing a request for review of or appeal against the PR or for filing a response to the opposition…)

- recording and transmission by IB

• Confirmation or Withdrawal [final decision/Office]

• ? Further decision affecting protection

Statement of Grant of Protection(Voluntary under Rule 17(6))

• If no notification of Refusal issued, a CP may send SGP after:

- all procedures complete (protection granted)or- Ex officio exam complete + after expiry of opposition period (protection granted)

WIPO will record the statement and transmit it to the Holder

SGPs are issued by the following Contracting Parties (April 2006)

Armenia AustraliaBenelux Georgia Hungary Ireland Japan NorwayUnited Kingdom Rep. Of KoreaSingapore SwedenSyrian Arab Rep. TurkeyEuropean Community

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

Managing the International Registration I

Subsequent Designation Change in Ownership

Limitation, Cancellation, Renunciation Term of Protection and Renewal

Managing the International Registration

Subsequent DesignationsArt. 3ter(2)

(Rule 24)

Presentation

• Form MM4

• By the Holder

• By Office of the Contracting Party of the

Holder if designation under Agreement

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

• Subsequent designation resulting from conversion (opting back)

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.

________________________________________________________

1/01/1996 1/01/2016

PAYMENT VALID ONLY UNTIL 1/01/2006

SUBSEQUENT DESIGNATION MADE BEFORE 10 YEARS

1/01/2006

________________________________________________________

1/01/1996 1/01/2016

PAYMENT VALID UNTIL 1/01/2016 FOR THIS DESIGNATION

AS FROM 1/01/2016 : MARK RENEWABLE EVERY 10 YEARS

SUBSEQUENT DESIGNATION MADE AFTER 10 YEARS

1/01/2006


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)

• by the recorded holder:by the recorded holder:

(the transferor)(the transferor)

• directlydirectly to the IB to the IB

• through an Officethrough an OfficeOffice of holder’s CPOffice of holder’s CP

Office of new owner’s CPOffice of new owner’s CP

• by the new owner:by the new owner:

(the transferee)(the transferee)

• through an Officethrough an Office

Office of holder’s CPOffice of holder’s CP

Office of new owner’s CPOffice of new owner’s CP


Limitation, Cancellation, Renunciation

Rules 25, 26 and 27

some designatedContracting Parties

Limitation some of the goods and servicesall designatedContracting Parties

some of the goods and servicesCancellation all designated

all the goods and services Contracting Parties

Renunciation all the goods and services some designatedContracting Parties

Limitation, Cancellation, Renunciation

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 calculatingInternational Register renewal fees

RENUNCIATION no protection in the subsequent designation Contracting Party of the Contracting Party

is possible

Term of ProtectionRenewal

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

• 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

• 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

– http://www.wipo.int/e-marks

No Changes at Renewal !

• 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

Managing the International Registration II

Dependence;

Ceasing of Effect of Basic Mark;

Transformation;

Replacement (4bis);

Licenses

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

Ceasing of Effect

Agreement and Protocol Article 6(3) and (4);

Rule 22

Definition• “Ceasing of Effect” of Basic Mark can be due to:

– Withdrawal, lapse or renunciation or final decisionof rejection, revocation, cancellation or invalidation

– An act or failure to act by owner of basic mark oran 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 IRaffects all designated Contracting Parties

Procedure

Basic Mark


(IR)

Effect of IR as a national/regional

registration

5-Year Dependency

Always Dependent

If a basic mark “ceases to have effect” in wholeor in part within 5 years of date of IR, Officeof Origin notifies IB, pursuant to Rule 22, and requests partial or total cancellation of IR.

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.

No particular action required; some designated Contracting Parties may update their databases.

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.

Transformation

• REQUIREMENTS:

– TIME: 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:

1. Where the IR has been cancelled at the request of the holder

1. With respect to a Contracting Party in the territory of which the IR has been subject of a total refusal, invalidation or renunciation

1. In a Contracting Party whose designation is not governed by the Protocol or in a Contracting State where the IR did not have effect

Transformation – example (1)

• France (AP) – basic registration

• Designations US

Egypt

Germany

UK

Transformation – example (2)

Where is transformation possible?

Country Treaty Transform?

UK

US

Egypt

Germany

(P)

(P)

(A)

(AP)

P Y

P Y

A N

A N

Replacement of a

National or Regional Registration (NNR)

Agreement and Protocol Article 4bis

Rule 21

Why Replacement?

• Preexisting national or regional registrations (NNR) for same mark in a potential designated Contracting Party (DCP).

• Incorporate such preexisting NRRs into a single international registration (IR)– Take advantage of the centralized maintenance and

management features of the Madrid System

Article 4bis(1) Conditions

• Same Mark

• Same Holder

• G&S in NRR covered in IR

• Extension of protection must be requested

• Extension of protection must take effect after date of NNR

Effect / Rights

• Automatic effect, i.e., when conditionsfor replacement are satisfied.

• Article 4bis(1): “…without prejudice to any [national/regional] rights acquired....”

– Filing and Registration Dates– Priority claim– etc.

Coexistence

• IB Interpretation– NRR and IR MAY be maintained independently, but

holder MUST satisfy legal requirements of each.

• Why Coexistence?– Possibility of provisional refusal– 5-Year dependency of IR– Remaining term of protection for NRR

Article 4(bis)(2) Requests

• IF holder so requests, the Office with which the NRR is registered MUST “take note” of IR in its register.

• NRR Office MAY (i.e., not prohibited):– charge fee– require local practitioner to file request

Rule 21 Notifications

• IF the Office with which NRR is registered “takes note,” it MUST notify the IB.

• Contents of notification – IR: international registration number– NRR: filing date and (application) number /

registration date and number / priority date / if only some g&s, then those g&s

• IB records and publishes; informs holder.

Role of IB

• Article 4bis request presented directly to DCP in which the NRR is registered--not to IB.

• Apart from recording and publishing notification received from DCP Offices, IB has no particular role in implementation or administration of Article 4bis.

Recording of LicensesRules 20 and 20bis

Presentation of the Request

• Holder

• Office of the Contracting Party of Holder

• Office of the Contracting Party in respect of which license is granted

Formalities

• Form MM13

• Signature

– Holder

– Presenting Office

Contents of Form (MM13)

Compulsory:

• International registration number• Holder’s name• Licensee’s name and address• Contracting Parties designated in license• Goods/services covered by license

Contents of Form

Optional:

• Nationality (natural person)• Legal nature (legal entity)• Territorial restriction• Licensee’s representative• Exclusive or sole• Duration

Declaration - Rule 20bis(5) No Effect of Recording of Particular License

• Matter for individual CP

• 18 months from notification

• Requirements:– Reasons– Goods/Services affected, if not all– Relevant legal provisions– Whether subject to review/appeal

Declaration - Rule 20bis(6)(a)(b) Recording of Licenses without Effect in

Contracting Party

(a) Contracting Party not providing for recording of licenses

(b) Contracting Party providing for recording, but not for recordings in IR

Australia, Germany

China, Georgia, Greece, Japan, Kyrgyzstan, Lithuania, R. of Korea, R. of Moldova, Russian F., Singapore

Automationand Information Products

Products

Data Dissemination Service

Databases and tools

WIPO Gazette of International Marks

GazettePaper version- official version- published weekly- by subscription

DVD-ROM version- cumulative- published every four weeks- by subscription

On-line versionhttp://www.wipo.int/madrid/en/gazette/- exact replica of the paper version in PDF format- published weekly- free

Databases and Tools

ROMARINhttp://www.wipo.int/romarin/- all international marks currently in force- updated daily- full history- free (DVD by subscription)

Madrid Expresshttp://www.wipo.int/ipdl/en/- all international marks currently in force + pending- updated daily- without history- free

Fee Calculatorhttp://www.wipo.int/madrid/en/fees/

Other Useful Links

¤ WIPO Website: http://www.wipo.int

¤ For International Marks (then follow)¤Trademarks¤Madrid System

¤ About Members¤ Forms¤ Information Notices¤ Fee Calculator¤ Online Services

The Madrid System Web site

• The Madrid System

• Filing Information

• Madrid System Information Notices

• Fees Calculator

• Guides and Information Material

• The WIPO Gazette of International Marks

• Annual Statistics

• Contacts

Useful Internet Links at WIPO

• WIPO Administered Treaties

• WIPO Electronic Bookshop

• E-Newsletters

Thank You

André NtamackProgram OfficerInternational Registration Operations [email protected]

Documents

THE MADRID SYSTEM FOR THE INTERNATIONAL REGISTRATION OF MARKS André Ntamack Tel Aviv, July 4-5, 2007