Seminar and Roundtable on the Madrid System for the International Registration of Marks Tel Aviv...
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Transcript of Seminar and Roundtable on the Madrid System for the International Registration of Marks Tel Aviv...
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
[email protected] [email protected]
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
[email protected] [email protected]
Tel. + 41 22 338 91 11
Thank you