Seminar and Roundtable on the Madrid System for the International Registration of Marks

Tel Aviv February 8 and 9, 2012.

Eric FONTAINE

Assistant Team Coordinator

Examination and Registration Section

Brands and Designs Sector

Advanced Issues in Madrid Protocol Filing

How to obtain Protection abroad through the Madrid Protocol?

International Application and Examination

Filing of an International Application

Examination by the International Bureau

Irregularities: Case Studies

Confirmation of Effects or Provisional Refusal in Designated Contracting Parties

Filing Basis Under the Madrid SystemMadrid Agreement and Madrid Protocol

Applicant (Natural person or legal entity) having an attachment to a Contracting Party member of the Madrid Union : (Articles 2 & 3, Paris Convention)

- Real and effective industrial or commercial establishment,

or- Domicile,

or

- Nationality

Having the mark registered or deposited for registration in the same territory (basic mark or application for a mark)

Same person, same mark, same goods and services (or less)

Filing Conditions

One form - Official (http://www.wipo.int/madrid/en/forms/)

One language (English, French or Spanish)

One standard of goods and services classification (Nice Classification)

One set of fees in Swiss Currency

(online cost estimate at http://www.wipo.int/madrid/en/fees/calculator.jsp)

Contents: 4 Substantive Requirements

The Applicant

The Designated Contracting Parties

The Reproduction of the mark

The Goods and Services

Other Contents

Office of Origin

Entitlement to file

Priority claim

Representative

Seniority claim

Declaration of intention to use the mark (MM18 form)

Fees

Certification from OO with date and signature/seal

Basic registration

Basic application

Type of mark:

Colour, 3-D, sound, etc.

Disclaimer

Transliteration of the mark

Translation

Presentation of the International Application

The International Application must be presented by the Office of Origin to

the International Bureau (Article 2(2)) through:

- Electronic transmission: AU, BX, CH, EM, IL, KR, PT, RU, SG, USA

- Postal order

- Fax transmission (with original of the reproduction of the mark (section 7) to follow by mail)

The Role of the International Bureau

Procedural

Counterchecks formalities

Records in the International Register

Notifies Designated Contracting Parties

Informs Office of Origin

Sends a certificate to holder

Publishes in the Gazette

Rules 9, 11, 12, 13 and 15

I.B. Examination procedure

I.B. Examination procedure

Examination procedure: irregularities

3 categories of irregularities

Miscellaneous – OO, Applicant or Both, to remedy

OO, Entitlement, Basic registration/application, priority, MM18, fees, etc. (Rule 11)

Classification of goods and services – OO to remedy

Goods and services not in the appropriate classes or not classified (Rule 12)

Indication of goods and services – OO to remedy

Too vague, linguistically incorrect, incomprehensible (Rule 13)

Rule 11: Procedure

Proposal from IB (3 month time-limit)

OO’s / holder’s Response

- Corrected = registered

- Not corrected = abandoned

No response from OO / holder = abandoned

Refund: fees paid minus ½ basic fee for a black & white reproduction

Rule 12: Procedure

Proposal from IB (3 month time-limit/2 month reminder)

OO’s response

- IB withdraws (fees paid) = registered as filed

- IB modifies or confirms (fees paid) = registered as per modification or IB’s proposal

No response from OO

- Fees paid = registered as per IB’s proposal

- Fees not paid = abandoned (refund)

IB’s OPINION PREVAILS (Art. 3(2))

Refund: fees paid minus ½ basic fee for a black & white reproduction

Rule 13: Procedure

IB Suggestions (3 month time-limit/no reminder)

OO’s response

- Accepted by IB = Registered as per OO’s opinion

- Rejected by IB :

° Registered (term deleted if not classified)

° Registered as filed (if term is classified, with annotation)

No response from OO

- Registered as filed, with annotation

IB’s OPINION PREVAILS

International Registration Date

= Date of reception of application by OO, if received by IB within 2 months with the 4 mandatory elements

(Rule 15), (Article 3(4) of the Agreement and Protocol)

Rule 15 (4 mandatory elements in I.A.):

- Applicant

- Reproduction

- Designated Contracting Parties

- Goods and services

International Registration Date

= Date the OO certifies having received the application

December 8, 2011

Reception by OO

February 7, 2012 Reception by IB

2 months

IR date = 08/12/11

International Registration Date Modified

International Registration Date = Date IB receives the completed application

2 months

July 17, 2011

Reception by OO

September 5, 2011 Reception by IB

BUT (Irr. Rule 15 = mandatory element missing)

Beyond 2 months period but within 3 months from the IB irr. letter date

November 17, 2011, Reception by IB of the corrected application

International Application Administrative mistakes

form MM2

Incorrect !!

x

correct !! This is neither a verbal

nor a colour mark!

X

Red and green.

X

Orange (Pantone 151).X

love

ai

International Application Administrative mistakes

form MM2

Fee Calculation Sheet

In order to identify the payer

If you have the WIPO receipt number

20090042596

Report the basic application number or basic registration number + any other bank references

TV2009C000292

Purpose of payment

Case Study 1: Rule 12

Class 14 – Ashtray of precious metal

IB Transfers it to class 34

Applicant via OO refuses transfer without justification

IB confirms and registers as per transfer where fees are paid

Case Study 2: Rule 13

Class 35 – Import-export agencies retail.

IB Suggests:

Import-export agency services; retail services.

OO – import-export agencies;

retail services for coffee.

Accepted – registered as per the OO’s opinion

Rejected – registered as filed, with annotation

No response – fees paid – as filed, with annotation

Case Study 3: Inter. Registration Date

International Application received by the Office of Origin on September 26, 2011.

Transmitted to the IB on November 29, 2011.

International Registration Date ?

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)

Are there any limitations on the right to refuse?

Time Limit

Grounds

Time Limit

Notification of provisional refusal:

12 months

Mandatory under Agreement + Art. 9sexies(1)(b)

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

From the Notification Date of the I. R. or the Subsequent Designation by the I. B.

Protocol CPs which have opted for 18 Months

Armenia, Australia, Bahrain, Belarus, Bulgaria, China, Cyprus, Denmark, Estonia, European Community, Finland, Georgia, Ghana, Greece, Iceland, Iran (I. R. of), Ireland, Israel, Italy, Japan, Kenya, Lithuania, Madagascar, Norway, Oman, Poland, Rep. of Korea, San Marino, Singapore, Slovakia, Sweden, Switzerland, Syria (A. R. of), Tajikistan, Turkmenistan, Turkey, Ukraine, United Kingdom, U.S. A., Uzbekistan.

- all others: 12 months

Non-Valid Grounds for Refusal

Divergent opinion on the classification of the goods/services (Rule 12)

Banning of multi-class registration or obligation of a limited number of goods or services (Art. 5(1))

Acceptable Grounds for Refusal

In theory:

- Paris Convention Art. 6quinquies

(Agreement and Protocol Rule 5)

In practice

- National or regional law and/or jurisprudence

Notification of Refusal - 3 Stages

The initial notification “Provisional Refusal”

Confirmation or Withdrawal [‘final’ Decision]

Further decision affecting protection ?

Notification of Refusal – 1st Stage – The Provisional Refusal

prescribed content (Rule 17(2))

Office

IRN

All the grounds

When applicable, details of earlier rights

Scope

Time limit and competent Authority for appeal

Signature

Irregular Refusals

Rule 18

Two Types of Irregularity:

- those that can be remedied, and

- those that cannot be remedied

Irregular Refusals

Deficiencies :

not signed

goods or services affected not mentioned

details of conflicting mark(s) not included

2 Months to rectify

(However the Provisional Refusal is registered and sent to the holder)

Irregular Refusals

Deficiencies :

Time limit (for appeal) not mentioned Competent authority (for appeal) not mentionedOpposition time limits not mentioned

2 months to rectify

(Compulsory to avoid a letter of abandon)

Irregular Refusals

Not considered as ‘Refusal’ if:

no IR number

no grounds indicated

outside time limits

However, …

WIPO will send a copy to the holder for information.

Notification of Refusal – 2nd Stage –The statement of Grant of Protection following a provisional refusal (Rule 18ter(2)) orThe confirmation of total refusal (Rule 18ter (3))

Rule 18ter (2)(i) Totally protected

Rule 18ter (2)(ii) Protected G & S

Rule 18ter (3) Totally refused

Notification of Refusal – 3rd Stage –

Further Decision affecting protection (Rule 18ter (4))

Useful Resourceswww.wipo.int/madrid/en

- Directory of National Offices

- E-payment

- E-renewal

- FAQs

- Fee calculator

- Forms

- Guide

- Romarin

- Simulator

- Statistics

- Wipo Gazette

Intreg.mail@wipo.int Madrid.team3@wipo.int

Tel. + 41 22 338 91 11

Thank you

Advanced Issues in Madrid Protocol Filing

Madrid Web based Services

Web based client services

Existing Services:Madrid Application SimulatorMadrid Fee CalculatorMadrid e-PaymentMadrid e-RenewalMadrid Dynamic StatisticsGoods and Services ManagerROMARINWIPO Gazette of International MarksGlobal Brands Database

New Services:Madrid Real-Time StatusMadrid Portfolio ManagerMadrid Electronic Alerts

Existing services

Madrid Application Simulatorhttp://www.wipo.int/madrid/en/madrid_simulator/ The simulator is designed to show you how to use the Madrid System to

seek the protection of your mark abroad. At the end of the simulation, it will also help you estimate the cost of registering your mark through the Madrid System.

Madrid Fee Calculatorhttp://www.wipo.int/madrid/en/fees/calculator.jsp For calculating the cost of an application for international registration,

subsequent designation or renewal.

Madrid e-Paymenthttps://webaccess.wipo.int/epayment/enterFeeID_en.jsp A service used to pay fees as notified in irregularity letters or other

WIPO communications with regard to international applications or registrations.

Existing services (continued)Madrid e-Renewalhttps://webaccess.wipo.int/trademarks_ren/erenewal_en.jsp Online renewal of International Marks with payment by credit card or

through a current account opened with WIPO.

Goods and Services Managerhttp://www.wipo.int/gsmanager/index.jsp?lang=en A tool to assist trademark applicants and their representatives in

compiling the lists of goods and services that they need to submit when filing international applications.

ROMARINhttp://www.wipo.int/madrid/en/romarin/

Contains information regarding all international marks recorded under the Madrid system, that are currently in force in the International Register or have expired within the past six months.  It also includes data relating to international applications, subsequent designations and limitations that are still under the examination process within the International Bureau.

Existing services (end)

Madrid Dynamic Statistics

http://www.wipo.int/madrid/en/statistics/

Allows the user-driven interrogation and export of statistical information

Gazette of International Marks

http://www.wipo.int/madridgazette/en/

The official publication of the Madrid System.

Global Brands Database

http://www.wipo.int/branddb/en/index.jsp

Lets you easily search multiple brand-related data sources

New services

Madrid Real-Time Status http://www.wipo.int/mrs/A tool to allow users to determine the current status of their applications at

WIPO.

Madrid Portfolio Manager https://www3.wipo.int/mpm/- A tool to allow the holders and representatives of International

Registrations to view and modify the I. R. for which they are responsible - Tailored links to e-renewal and e-payment

Madrid Electronic Alerts https://www3.wipo.int/mea/A tool to allow users to register a list of International Registrations and to

be informed by email when any of them change.

Useful Resourceswww.wipo.int/madrid/en

- Directory of National Offices

- E-payment

- E-renewal

- FAQs

- Fee calculator

- Forms

- Guide

- Romarin

- Simulator

- Statistics

- Wipo Gazette

Intreg.mail@wipo.int Madrid.team3@wipo.int

Tel. + 41 22 338 91 11

Thank you