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Management of an IR: Selected forms and procedures to encounter during the lifespan of Management of an IR: Selected forms and procedures to encounter during the lifespan of the IR Debbie Roenning Director, Legal Division, Brands and Designs Sector Israel, February 8, 2012

Various statements from DCP Offices of designated Contracting Parties (DCP) may communicate the status Various statements from DCP Offices of designated Contracting Parties (DCP) may communicate the status of protection of a mark through various statements in the course of their examination: Provisional refusal – Rule 17 Interim status – Rule 18 bis Grant of protection – Rule 18 ter(1) Final decisions – Rule 18 ter(2) and (3) Further decision – Rule 18 ter(4) Invalidation – Rule 19

In 2011 the IB received… 17, 973 statements according to Rule 16 56, 730 In 2011 the IB received… 17, 973 statements according to Rule 16 56, 730 statements concerning the interim status of a mark – Rule 18 bis 162, 569 statements of grant of protection – Rule 18 ter(1) 73, 051 notifications of provisional refusal – Rule 17 62, 179 statements concerning final decisions – Rule 18 ter(2) and (3) 517 statements concerning further decisions – Rule 18 ter(4) 443 notifications of invalidation - Rule 19

Interim status – Rule 18 bis(1)(a) Conditions Without notification of provisional refusal Ex officio Interim status – Rule 18 bis(1)(a) Conditions Without notification of provisional refusal Ex officio examination has been completed No grounds for refusal, but Protection subject to opposition or observation Content: Date by which opposition or observation may be filed, if known Timeliness: Optional but before the expiry of the applicable refusal time limit

Interim status – Rule 18 bis(1)(b) Conditions After notification of provisional refusal Ex officio Interim status – Rule 18 bis(1)(b) Conditions After notification of provisional refusal Ex officio examination has been completed No grounds for refusal, but protection subject to opposition or observation Content: Date by which opposition or observation may be filed, if known Timeliness: Optional, but after sending a notification of provisional refusal

Grant of protection – Rule 18 ter(1) Conditions Without notification of provisional refusal All Grant of protection – Rule 18 ter(1) Conditions Without notification of provisional refusal All procures completed, and there is no ground to refuse Form: Could take the form of a list, electronically or on paper Timeliness: As soon as possible, but before the expiry of the applicable refusal time limit

Protection following a provisional refusal – Rule 18 ter(2) Conditions After notification of provisional Protection following a provisional refusal – Rule 18 ter(2) Conditions After notification of provisional refusal All procedures completed, and Provisional refusal is withdrawn (total withdrawal), or Protection granted for some goods and services (partial withdrawal or confirmation of partial provisional refusal) Content: Scope of protection, in a positive manner Timeliness: After sending a total or partial provisional refusal Model form 5 – statement of grant of protection following a refusal

Confirmation of total provisional refusal – Rule 18 ter(3) Conditions After notification of provisional Confirmation of total provisional refusal – Rule 18 ter(3) Conditions After notification of provisional refusal All procedures completed, and A total provisional refusal is confirmed Timeliness: After sending a total provisional refusal

Further decisions – Rule 18 ter(4) Conditions After declarations under Rules 18 ter(2) o Further decisions – Rule 18 ter(4) Conditions After declarations under Rules 18 ter(2) o 18 ter(3) Further decision affects the scope of protection, and The Office is aware of that decision Content: Scope of protection Timeliness: After sending a declaration concerning a final decision

Invalidation – Rule 19 The decision Has observed due process, Articles 5(6) of Protocol Invalidation – Rule 19 The decision Has observed due process, Articles 5(6) of Protocol The effects of an IR are invalidated and the IR is not subject to appeal Content: The authority IRN and name of the holder Scope of the invalidation The fact that the decision is not subject to appeal The date the decision was pronounced and, if known, the effective date

all procedures completed grant of protection 18 ter( 1) MF 4 no opposition observation all procedures completed grant of protection 18 ter( 1) MF 4 no opposition observation 18 ter (2) no grounds for refusal opposition observation? al ar ti op grant tal MF 8 MF 5 interim status to 18 bis (1)(a) total or partial protection 18 ter (4) 17(1) & (3) refusal based on opposition further decision MF 3 invalidation further decision opposition l ta to 18 ter (3) MF 6 refusal limit refuse 19(1) confirmation of total provisional refusal invalidation

interim status 18 bis (1)(b) 17(1) &(3) MF 8 opposition or observation? MF 3 interim status 18 bis (1)(b) 17(1) &(3) MF 8 opposition or observation? MF 3 opposition 18 ter (2) refusal based on opposition total or partial protection grant to t al o pa rti a l MF 5 18 ter (4) 17(1) (a) provisional refusal MF 7 further decision MF 3 grounds for refusal to 19(1) further decision ta l 18 ter (3) refusal limit MF 6 refuse confirmation of total provisional refusal invalidation

Subsequent designation “Territorial extension of protection” (Art 3 ter and Rule 24) A Contracting Subsequent designation “Territorial extension of protection” (Art 3 ter and Rule 24) A Contracting Party (CP) may be designated subsequently if, at the time of this subsequent designation, it is bound by the same treaty as: - the CP whose Office is the Office of origin (no change in ownership) - the CP with which the new holder has a connection (in case of change in ownership) Exception in Article 14(5) The 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

The form MM 4 (1) Form MM 4 (compulsory) The subsequent designation may relate The form MM 4 (1) Form MM 4 (compulsory) The subsequent designation may relate to one IR only May subsequently designate several CPs May be presented directly to the IB by the holder or via the Office of the CP of the holder Recording of necessary changes should be made before making the subsequent designation Representative may be appointed in MM 4

The form MM 4 (2) Certain requirements for certain CPs To declare in the The form MM 4 (2) Certain requirements for certain CPs To declare in the form (2 nd language EU and intent to use) Separate forms (seniority claim, declaration of intention to use the mark) List of G&S must be within the scope of the IR No need to repeat miscellanous indications if they are already given in the international application Similar fee structure as for international applications

Date of Subsequent designation MM 4 presented directly to the IB – it will Date of Subsequent designation MM 4 presented directly to the IB – it will bear the date in which it was received by the IB MM 4 presented through an Office – it will bear the date on which it was received by the Office, provided that the IB receives it within 2 months from that date Where subsequent designation contains a request that it take effect immediately after some other event (renewal or the recording of a change or cancellation), the subsequent designation will bear the date of the recording of that other event Irregularities may effect the date of subsequent designation Recording, publication and notification

Conversion (opting-back provision) To the extent that a designation of EU in an IR Conversion (opting-back provision) To the extent that a designation of EU in an IR has been withdrawn, refused or has ceased to have effect, conversion may be requested through a subsequent designation of its Member States under the Madrid system Offers the holder of an IR the option of converting the designation of the EU into either a national application filed directly with the Office of a Member State or a subsequent designation of that Member State under the Madrid system Form MM 16 to be presented through OHIM Must indicate ground for the conversion A subsequent designation resulting from conversion will bear the date on which the EU was recorded in the International Register

Changes in the name and/or address Change of name or address of the holder Changes in the name and/or address Change of name or address of the holder Form MM 9 is compulsory To be presented to the IB directly by holder or through Office of the CP of the holder Change of name or address of the representative Form MM 10 is optional

Restrictions in the protection of the IR The holder may wish to record restrictions Restrictions in the protection of the IR The holder may wish to record restrictions in the protection of his IR A limitation (MM 6) A renunciation (MM 7) A cancellation (MM 8) Forms to be presented to the IB directly by the holder or by the Office of the CP of the holder

Limitation (MM 6) A limitation is a procedure to remove G&S in respect of Limitation (MM 6) A limitation is a procedure to remove G&S in respect of all or some of the DCP in an IR One form may contain a limitation for several IRs The G&S will not be removed from the IR as recorded in the International Register The G&S may be subject to subsequent designation and will be taken into account when calculating the supplementary fees for renewal Voluntary limitation – no transformation later is possible Declaration that a limitation has no effect

Recording of a Limitation Recording of a Limitation

Renunciation (MM 7) A renunciation is a procedure intended to abandon the effects of Renunciation (MM 7) A renunciation is a procedure intended to abandon the effects of an IR for all the G&S in respect of some of the DCP One form may be used to request the recording of a renunciation of several IRs The G&S may be subject to subsequent designation Voluntary renunciation – no transformation later is possible

Cancellation (MM 8) A cancellation is a procedure to cancel the effects of an Cancellation (MM 8) 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 DCP G&S will be permanently removed from the International Register No subsequent designation will be possible Would need to file a new International Application Voluntary cancellation – no transformation later is possible

Limitation, Renunciation, Cancellation Limitation (MM 6) Renunciation (MM 7) Cancellation (MM 8) Goods & Limitation, Renunciation, Cancellation Limitation (MM 6) Renunciation (MM 7) Cancellation (MM 8) Goods & Services Some All Some or All Designated Offices Some or All Some All Effects for Register Remain Removed Subsequent Designations Renewals Fees 177 CHF N/A

Change in ownership may result from a contract (assignment), court decision, operation of law Change in ownership may result from a contract (assignment), court decision, operation of law (inheritance or bankruptcy), or automatic (merger of two companies) May relate to all G&S or to only some G&S May be in respect of all the DCP or only some of them Form MM 5 is compulsory and regard total and partial change in ownership

Entitlement of the transferee Change in ownership may be recorded only if the transferee Entitlement of the transferee Change in ownership may be recorded only if the transferee is a person who is entitled to file an International Application Entitlement of the new owner is considered in respect of each DCP Several transferees – each of them must qualify as entitled A transferee may claim the necessary connection with several CPs (accumulation of entitlement)

Form MM 5 The form may be presented to the IB by the holder, Form MM 5 The form may be presented to the IB by the holder, by the Office of the CP of the recorded holder, or by the Office of the CP of the transferee An Office may require the furnishing of evidence concerning the change in ownership A single request may relate to several IRs Total change in ownership: The recording of the representative of the transferor will be cancelled ex officio by the IB Partial change in ownership: The CPs in respect of which the change in ownership is to be recorded should be named and the G&S should be listed

Recording of new holder? Spain CP of the transferor Egypt CP of the transferee Recording of new holder? Spain CP of the transferor Egypt CP of the transferee Israel France Germany Algeria China

Partial change in ownership Request of change in ownership of an IR in respect Partial change in ownership Request of change in ownership of an IR in respect of only some G&S or some of the DCPs, the change will be recorded under the IRN concerned A separate IR is created – with indication of a capital letter The resulting separate IRs may be the subject of a subsequent total or partial change in ownership Possible merger of IRs resulting from partial change in ownership Declaration that a change in ownership has no effect

Ceasing of Effect and Transformation For a period of five years from the date Ceasing of Effect and Transformation For a period of five years from the date of its registration, the international registration remains dependent on the basic mark If the basic mark ceases to have effect, the IR will no longer be protected Transformation limits the effects of dependency Cannot follow voluntary cancellation of designation Not possible for designations already subject to total refusal Must file in national/regional Office within 3 months from the date on which the IR was cancelled

Procedure of Ceasing of Effect Cancellation Designated 3 2 Inscription to Register IB Office Procedure of Ceasing of Effect Cancellation Designated 3 2 Inscription to Register IB Office 1 Ceasing of effect 5 Transformation b, c 3 months from the date of cancellation Office of origin Basic mark a, b, c Cancellation before the expiry of 5 yrs from the date of IR Local Rep. Holder 4 Power of attorney 3

Renewal of an IR (1) The IR is valid for a period of 10 Renewal of an IR (1) The IR is valid for a period of 10 years, and can be renewed by paying the renewal fees When renewing an IR, no modifications may be made Any modifications to be made, shall be duly presented on the required form, before or after the renewal Possible to renew for some DCP only Unofficial notice of renewal 6 months before the date of expiry Payment direct with the IB Fees are due at the date of expiry at the latest 6 months grace period (+ 50% basic fee) Payment by credit card or current account with WIPO E-renewal http: //www. wipo. int/e-marks

Renewal of an IR (2) 4 3 Renewal Notification Register IB Designated Office 1. Renewal of an IR (2) 4 3 Renewal Notification Register IB Designated Office 1. Renewal Reception 2. Data Entry 3. Renewal Examination 4. Finance processing 1 Renewal Request Reminder +Payment Six months before the expiry REP 5. Renewal Inscription 6. 1 Gazette 6. 2 Notification to the DCPs 6. 3 Certificate to the holder Inscription to Reminder 1 Holder 2

Thank you for your attention debbie. roenning@wipo. int Thank you for your attention debbie. [email protected] int