Overview of the Madrid System - PowerPoint Presentation

1. Overview of the Madrid System Legal Perspective Basic LevelPlaceDay MonthYearLegal Division Madrid RegistryBrands and Designs Sector

2. Table of ContentsInternational ApplicationExamination of the International Application in the International BureauDate of the International RegistrationEffects of the International Registration Examination in the Office of the Designated Contracting PartyCommunications from the Designated Contracting PartyProvisional RefusalIrregular Provisional RefusalInterim Status of a Mark in a Designated Contracting PartyFinal Disposition on Status of the MarkInvalidation

3. International Application

4. International Application: 3 Main ActorsInternational ApplicationOffice of originInternational BureauApplicant

5. Filing Basis Under the Madrid SystemMadrid Agreement and Madrid Protocol

6. The Madrid system is a closed systemThe applicant (natural person or legal entity) must be entitled to use the Madrid system throughReal and effective industrial or commercial establishment Domicile; orNationalityThe Office of the Contracting Party through which the applicant is entitled to use the Madrid system, is considered his Office of originFiling Basis: Entitlement

7. Filing Basis: The Basic MarkWhen the entitlement with a Contracting Party is established, the applicant needs to have a trademark registered or deposited for registration with the Office of that Contracting Party (the basic mark)The international application must concern the same applicant/holder, the same mark and the goods and services in the international application must be covered by the list of goods and services in the basic mark

8. International Application: Forms 3 international application formsForm MM1: Governed exclusively by the Agreement (Rule 1(viii))Form MM2: Governed exclusively by the Protocol (Rule 1(ix)) Form MM3: Governed by the Agreement and the Protocol (Rule 1(x))Official forms available at: http://www.wipo.int/madrid/en/forms/

9. International Application: Requirements The international application must be presented to the International Bureau via the Office of originOfficial form: MM1, MM2 or MM3Mandatory contentsOptional contentsCertification by the Office of origin

10. Mandatory Contents (1)The international application shall contain or indicateName and address of the applicantName and address of the representative, if appointedEntitlement of the applicantAny claim of priority, if applicableReproduction of the markIndications of the mark (color claim, kind of mark, etc.)Description of the mark, if required

11. Mandatory Contents (2)Transliteration of the mark, if applicableList of goods and services (Nice Classification)Special requirements requested by some designated Contracting PartiesThe amount of fees being paid and the method of payment

12. Optional ContentsThe international application may also containNationality of the applicant / nature of the legal entityTranslation of the mark, if possibleAn indication by words of the principal parts of the mark which are in color, where color is claimDisclaimer

13. Certification by the Office of Origin The international application shall contain a declaration by the Office of origin certifyingThe date of receipt of the international applicationThat the applicant is the same as the applicant/holder of the basic markThat the mark is the same as the basic mark; andThat the goods and services are covered by the list of goods and services in the basic mark

14. Special Requirements for Certain Designated Contracting PartiesEuropean UnionIndication of a second working languagePossibility of claiming seniority (MM17)United States of AmericaDeclaration of intention to use the mark (MM18) India, Ireland, New Zealand, Singapore, and the United KingdomThe designation is a declaration of intention to use Cuba, Ghana and Japan Individual fees payable in 2 parts

15. International Application: FeesBasic fee (653 or 903 CHF) plusStandard fee regimeComplementary fee(s) per designated Contracting Party (100 CHF), andSupplementary fee(s) per class of goods and services beyond 3 (100 CHF); orIndividual fee(s), if the designated Contracting Parties have made such declarationCuba, Ghana and Japan: individual fees payable in 2 partsFee calculator available at: www.wipo.int/madrid/en/fees/calculator.jsp

16. International Application: PresentationThe international application must be presented to the International Bureau by the Office of origin throughElectronic transmissionPostal deliveryFax transmission Where the application is communicated by fax, the original of the reproduction of the mark must follow by mail within a given time limit

17. Role of the Office of OriginAPPLICATIONRECEPTIONFORMALITIESEXAMINATIONIRREGULARITYCERTIFICATIONOFFICE OF ORIGINProviding advice to applicantsCertification of the international applicationReply to or remedy irregularitiesKeeping track of basic mark in a 5 year periodNotifications of ceasing of effect Forwarding official forms on behalf of the holder

18. ApplicantOffice of origin CertificationDesignated ContractingParty Formalities InternationalBureauInternationalRegisterGazetteCertificateNational/Regional Application or RegistrationInternational ApplicationNotificationInternational Application: ProcedurePublication

19. Examination of the International Application in the International Bureau

20. Role of the International BureauThe International Bureau examines the formalities such asInformation in the international applicationClassification of goods and services (Nice)Classification of figurative elements (Vienna)FeesThe International Bureau willRegister the mark in the International RegisterNotify the Offices of designated Contracting Parties, inform the Office of origin and send a certificate to the holder/representativePublish the mark in the WIPO Gazette of International Marks (e-Gazette)

21. 3 Categories of IrregularitiesClassification of goods and services (Rule 12)Goods and services not properly classifiedOffice of origin to remedyIndication of goods and services (Rule 13)Too vague, linguistically incorrect, or incomprehensibleOffice of origin to remedyMiscellaneous (Rule 11)Entitlement, basic registration/application number, priority, MM18, fees, etc. Office or origin, applicant or both to remedy

22. Irregularity Rule 12: ProcedureProposal from the International Bureau (3-months time limit/2 months: reminder)Office of origin’s responseThe International Bureau withdraws (fees paid) = registered as filedThe International Bureau modifies or confirms (fees paid) = registered as per modification or International Bureau’s proposalNo response from the Office of originFees paid = registered as per International Bureau’s proposalFees not paid = application abandoned (refund)The International Bureau’s opinion prevailsRefund: fees paid minus ½ basic fee for a black and white reproduction

23. Irregularity Rule 13: ProcedureSuggestion from the International Bureau (3-month time limit)Office of origin’s responseAccepted by the International Bureau = Registered as per the Office of origin’s opinionRejected by the International Bureau Registered (term deleted if not classified)Registered as filed (if term is classified, with annotation)No response from the Office of originRegistered as filed, with annotation

24. Irregularity Rule 11: ProcedureProposal from the International Bureau (3-month time limit)Office of origin’s / applicant’s response Remedied = registered Not remedied = application abandoned (refund)No response from the Office of origin / applicant = application abandoned (refund)Refund: fees paid minus ½ basic fee for a black and white reproduction

25. Date of the International Registration

26. Date of the IR (1)The date of receipt of the international application by the Office of origin, provided it is received by the International Bureau within 2 monthsThe date of receipt by the International Bureau if it is received from the Office of origin later than 2 months The date of the international registration may be affected if any of the following substantive elements is missing (Rule 15): identity of the applicant, designated Contracting Parties, reproduction of the mark, indications of goods and servicesThe date of the international registration will be the date the last missing element was received by the International Bureau

27. Date of the IR* (2)Receipt of the international application by the Office of origin2 months*Receipt of the international application by the Office of origin 2 monthsReceipt of the international application by the International Bureau*Receipt of the international application by the Office of origin 2 monthsReceipt of the international application by the International BureauReceipt by the International Bureau of the last missing element*Receipt of the (irregular) international application by the International Bureau

28. Effects of the International Registration

29. Effects of an International RegistrationFrom the date of the international registration, the protection of the mark in each of the designated Contracting Parties is the same as if the mark had been filed directly with the Office of that Contracting Party, andthe mark had been registered by the Office of that Contracting Party, if no refusal is notified within the applicable time limit

30. Examination in the Office of the Designated Contracting Party

31. The Role of the Office of the Designated Contracting PartyThe role of the Office of the designated Contracting Party will be determined by the domestic legislationThe domestic legislations of the designated Contracting Parties set the conditions for protecting a trademark and determine the rights which result from protectionThe Madrid system offers the possibility for these Offices to issue decisions on the status of protection Provisional refusals Statements of grant of protection Further decisions Invalidations

32. Examination Process in the Office of the Designated Contracting PartyThe Office of the designated Contracting Party P will examine the request for extension of protection as if it was domestic applicationProvisional refusals must be notified to the International Bureau within a set time limitThe Office of the designated Contracting Party should send a statement of grant of protection to the International Bureau if all procedures before the Office has been completed before the expiry of the time limit and there are no grounds to refuse protectionRECEIPT OFNOTIFICATIONSUBSTANTIALEXAMINATIONGRANT OFPROTECTIONPROVISIONALREFUSALCONFIRMATIONOF REFUSALNATIONALREGISTRATIONDESIGNATED OFFICE

33. Communications from the designated Contracting Parties

34. Communications from designated Contracting PartiesPossibility of oppositions filed after 18 months (Rule 16)Interim status (Rule 18bis)Statement of grant of protection (Rule 18ter(1))Provisional refusal (Rule 17)Statement of grant of protection following a provisional refusal (Rule 18ter(2))Confirmation of total provisional refusal (Rule 18ter(3))Further decision (Rule 18ter(4))Invalidation (Rule 19)

35. Provisional RefusalArticle 5Rules 16, 17 and 18

36. Provisional RefusalWhat is meant by “Provisional Refusal”?Are there any restrictions on the right to refuse?TimeGroundsTime limits for notification of provisional refusal12 or 18 months, or “18 months+”The time limit runs from the date of notification from the International Bureau to the Office of the designated Contracting Party in question

37. Grounds for Provisional RefusalGeneral principle (Article 5(1))Refusal may be based only on the grounds which would apply, under the Paris Convention, in the case of a mark deposited directly with the Office notifying such refusalNon-valid groundsDivergent opinion on the classification of the goods and services (Rule 12)Banning of multi-class registration or obligation of a limited number of goods or services (Article 5(1))

38. Notification of Provisional Refusal (1)Notification of provisional refusal is sent to the International Bureau Notification of ex officio provisional refusal must containThe Office making the notificationNumber of the international registrationAll the grounds on which the refusal is basedIf the refusal is based on prior right(s), all relevant data concerning that markWhether the refusal affects all goods and services or an indication of which goods and services are affectedTime limit for filing a request for review/appeal, and to which authority

39. Notification of Provisional Refusal (2)Where the provisional refusal is based on an opposition, or on opposition and on other grounds, the notification shall indicate that factIn addition to the information in an ex officio provisional refusal, it shall containName and address of the opponentWhere opposition is based on prior right(s), a list of goods and services on which the opposition is basedProvisional refusal is recorded in the International Register and transmitted to the holder

40. Irregular Provisional RefusalRule 18

41. Irregular Provisional Refusal (1)DeficienciesThe notification is not signedDetails of conflicting mark(s) are not includedGoods and services affected are not mentionedParticulars of the opponent and of the goods and services on which opposition is based are not mentionedThe provisional refusal is recordedThe Office is invited to rectify within 2 monthsThe holder receives a copy of the refusal and of the letter sent to the Office

42. Irregular Provisional Refusal (2)DeficienciesTime limits are not mentioned (for appeal/to file response to opposition)Competent authority (for appeal) is not mentionedRequirements to file (appeal or response) are not mentionedThe provisional refusal is not recordedThe Office is invited to rectify within 2 monthsIf rectified, it is recorded with date of defective refusalIf not, it is not considered as suchThe holder receives a copy of the refusal and of the letter sent to the Office

43. Irregular Provisional Refusal (3)The provisional refusal is not considered as such if itDoes not indicate any international registration numberDoes not indicate any grounds for refusalIs sent after the expiry of the refusal periodThe International Bureau transmits a copy to the holder for informationThe International Bureau informs both the holder and the Office

44. Interim Status of a Mark in a designated Contracting PartyRule 18bis

45. Interim Status of a Mark in a designated Contracting PartyOptional communications from designated Contracting Parties on the status of protection of the markInterim status before sending a provisional refusal (Rule 18bis(1)(a))Interim status after sending a provisional refusal (Rule 18bis(1)(b))

46. Final Disposition on Status of the Mark Rule 18ter

47. Final Disposition on Status of the MarkStatement of grant of protection where no notification of provisional refusal has been communicated (Rule 18ter(1))Statement of grant of protection following a provisional refusal (Rule 18ter(2))Total or partial grant of protectionConfirmation of total provisional refusal (Rule 18ter(3))Further decision (Rule 18ter(4))

48. InvalidationRule 19

49. Invalidation The decision has observed due processThe effects of an international registration are invalidated and it is not subject to appeal Content of the decisionSpecifying the authorityInternational registration number and name of the holderScope of the invalidationThe fact that the decision is not subject to appealThe date the decision was pronounced and, if known, the effective date

50. Questions ?

51. Thank youe-mail