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National Seminar on the Madrid Protocol for the International Registration of Marks André Ntamack National Seminar on the Madrid Protocol for the International Registration of Marks André Ntamack Head, Examination and Registration Section Jerusalem July 13 - 14 2010

Preparing the International Application Filing conditions and presentation of an International Application Representation before Preparing the International Application Filing conditions and presentation of an International Application Representation before the International Bureau Role of the Office of origin Types of International Applications

Filing conditions: entitlement to file and basic mark You need (natural person or legal Filing conditions: entitlement to file and basic mark You need (natural person or legal entity): an attachment to a Contracting Party = Office of origin - establishment - domicile - nationality a basic application or a basic registration in that Contracting Party (in the same name, for the same mark, and for the same goods and services or less)

Establishment Taken from Article 3 of Paris Convention Excludes fraudulent or fictitious entities Some 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 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 Question of national law: Natural person Legal entity (e. g. , law under Nationality 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. )

Representation before the International Bureau Representation before the International Bureau

WHO may be appointed No limit on address of representative Need not be in WHO may be appointed No limit on address of representative Need not be in a Contracting Party

HOW to make the appointment – in an official form • international application • 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 (MM 12) – no power of attorney is needed! Signed by the person making the appointment

Cancellation of the Appointment 1. Ex officio by the International Bureau new appointment change Cancellation of the Appointment 1. Ex officio by the International Bureau new appointment change in ownership 2. By a communication sent to the International Bureau the applicant/holder by the representative

The Filing and Registration Procedure Basic registration Basic application International Application Office of Origin The Filing and Registration Procedure Basic registration Basic application International Application Office of Origin International Bureau Offices of the Designated Contracting Parties

Role of the Office of Origin International application Office of Origin Certifies certain facts Role of the Office of Origin International application Office of Origin Certifies certain facts concerning the relationship between the international application and the basic application or registration (e. g. , same applicant, same mark) as well as the date of the IA

International Bureau Tasks Formality examination Inscription in the International Register International Bureau Publication in International Bureau Tasks Formality examination Inscription in the International Register International Bureau Publication in the Gazette Issuance of a Certificate for the holder and Notification to the designated Contracting Parties

Designated Contracting Party Tasks Office of the Designated Contracting Party Substantive examination opposition 12/18+ Designated Contracting Party Tasks Office of the Designated Contracting Party Substantive examination opposition 12/18+ months Provisional refusal No provisional refusal/withdrawn = national registration

Types of International Applications Types of International Applications

One System Two Treaties (Madrid Agreement and Protocol) Two possible designations Three types of One System Two Treaties (Madrid Agreement and Protocol) Two possible designations Three types of International Applications

Types of Applications Rule 1(viii): MM 1 Rule 1(ix): MM 2 Rule 1(x): MM Types of Applications Rule 1(viii): MM 1 Rule 1(ix): MM 2 Rule 1(x): MM 3 Governed exclusively by Agreement all designations governed by Agreement Governed exclusively by Protocol all designations governed by Protocol Governed by Agreement and Protocol some designations governed by Agreement some designations governed by Protocol

MM 2 Why is this type of international application governed exclusively by the Protocol? MM 2 Why is this type of international application governed exclusively by the Protocol? P P Israel P USA P or P AP China

MM 2 Why is this type of international application governed exclusively by the Protocol? MM 2 Why is this type of international application governed exclusively by the Protocol? P AP China P P Israel or P P UK

MM 2 - Requirements International Application Office of Origin Filing basis: Form: Language: Free MM 2 - Requirements International Application Office of Origin Filing basis: Form: Language: Free choice of the Office of origin Basic Registration or Basic Application MM 2 French, English or Spanish Each Designation Fees: Supplemental + Complementary, or Individual Refusal Period: 12 months, or 18+ months

P P Israel Example Questions P P UK AP Switzerland AP Benelux All 3 P P Israel Example Questions P P UK AP Switzerland AP Benelux All 3 DCPs have opted for individual fees. Treaty Governing IA: A P A/P Application Form: MM 1 MM 2 MM 3 Language of Application: French English Spanish IA can be based on a basic app: Yes No Which DCPs will receive individual fees? : UK CH BX

International Application and Examination – Content of the International Application – Examination by the 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 (MM 2) Four mandatory elements: – identity of applicant Content of the International Application (MM 2) Four mandatory elements: – identity of applicant – designated Contracting Parties – reproduction of the mark – indications of goods and services

Cost of an Application Basic Fee Black and white Mark in color 653 CHF Cost of an Application Basic Fee Black and white Mark in color 653 CHF 903 CHF Designation fee OR individual fee 100 CHF/country xxx CHF/per CP Fees for goods & services beyond three or individual fee 100 CH/class

Examination by the Office of origin Examination by the Office of origin

Certification by Office of Origin Item 13 Application Form Identity between, inter alia applicant Certification by Office of Origin Item 13 Application Form Identity between, inter alia applicant mark goods and services Date of receipt of international application

Irregularities to be remedied by Office of origin Rule 11(4) Official form not used Irregularities to be remedied by Office 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 Procedure Office of Origin informed/notified Applicant informed/notified 3 -month time limit for correction

Examination by the International Bureau Examination by the International Bureau

Registration Process within the IB No Irregularities REGISTERED Finance processing Scanning Reception of the Registration Process within the IB No Irregularities REGISTERED Finance processing Scanning Reception of the request Examination – Reproduction – Entitlement of the applicant – Designated Contracting Parties – Classification of goods/services – Fees paid Translation Irregularities Correction w/in time limits No correction w/in time limits REGISTERED or ABANDONED

IRREGULARITIES Rule 12 Classification Rule 13 Indication Rule 11 Other irregularities of goods and IRREGULARITIES Rule 12 Classification Rule 13 Indication Rule 11 Other irregularities of goods and services

Rule 12 : Classification of goods and services The IB considers that the G&S 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”

Rule 12 : Procedure IB withdraws proposal OO gives opinion IB Proposal reminder : Rule 12 : Procedure IB withdraws proposal OO gives opinion IB Proposal reminder : 2 months 3 months to resolve No reply from OO IB modifies proposal Fees paid IB confirms proposal Fees paid Fees not paid 1 Refund: fees paid minus 1/2 basic fee for a b&w registration. REGISTERED (as filed) REGISTERED (as per modification or IB proposal) REGISTERED (as per IB proposal) ABANDONED 1

Rule 13 : Indication of G&S The IB considers that a term indicated is: 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 »

Rule 13 : Procedure OO proposal IB Suggestion IB accepts IB rejects 3 months Rule 13 : Procedure OO proposal IB Suggestion IB accepts IB rejects 3 months to resolve No reply from OO REGISTERED (as per proposal) REGISTERED (as filed but with notation)

Rule 11: other irregularities Corrected REGISTERED OO Reply IB Proposal Not corrected 3 months Rule 11: other irregularities Corrected REGISTERED OO Reply IB Proposal Not corrected 3 months to resolve No Reply * Refund: fees paid minus 1/2 basic fee for b&w registration. ABANDONED*

International Registration Date of the International Registration Refusals Responding to Refusals Invalidation Ceasing of International Registration Date of the International Registration Refusals Responding to Refusals Invalidation Ceasing of Effects (5 -year dependency period)

Date of the International Registration Article 3(4) of the Protocol Reception of application by 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(*) 2 months * Reception of the request by the Date of the International Registration(*) 2 months * Reception of the request by the OO Reception of the request by the IB 2 months * Reception by the IB of the last missing mandatory element

International Registration Refusals International Registration Refusals

Are there any limitations on the right to refuse? • Time Limits • Grounds Are there any limitations on the right to refuse? • Time Limits • Grounds

Time Limits Notification of provisional refusal : 12 months Mandatory under Agreement Optional under 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

Non-valid grounds for refusal formal grounds classification of the goods/services (Rule 12 !) multi-class 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))

Two different types of grounds for refusals 1) Absolute grounds 2) Relative grounds Two different types of grounds for refusals 1) Absolute grounds 2) Relative grounds

Two different types of grounds for refusals 1) Absolute grounds - Descriptive Devoid of Two different types of grounds for refusals 1) Absolute grounds - Descriptive Devoid of distinctive character Generic Contrary to accepted principles of morality or to public policy - Deceptive

Two different types of grounds for refusals 1) Absolute grounds - Prohibitions concerning State Two different types of grounds for refusals 1) Absolute grounds - Prohibitions concerning State Emblems, Official Hallmarks, Emblems of Intergovernmental Organizations - Shape of the goods - Origin of alcoholic beverages, agricultural products and foodstuffs

Two different types of grounds for refusals 2) Relative grounds i) oppositions = earlier Two different types of grounds for refusals 2) Relative grounds i) oppositions = earlier rights : the mark is of such nature as to infringe rights acquired by third parties / the mark constitutes a reproduction, an imitation or a translation, liable to create confusion of a prior mark for similar or identical products and/or services ii) list of goods and/or services too vague / broad

Notification of refusal Notification to the offices of the designated countries SGP Interim Status Notification of refusal Notification to the offices of the designated countries SGP Interim Status of the mark (no grounds for ex officio refusal) Rule 18 ter(1) Provisional Refusal Rule 17(1) Rule 18 bis(1)(a)

Statement of Grant of Protection SGP When all the procedures before the office are Statement of Grant of Protection SGP When all the procedures before the office are over The mark is protected Rule 18 ter(1) Mandatory - Rule 40(5) (01/01/2011)

EX OFFICIO EXAMINATION COMPLETED No grounds for refusal by the office INTERIM STATUS OF EX OFFICIO EXAMINATION COMPLETED No grounds for refusal by the office INTERIM STATUS OF THE MARK (OPTIONAL) BUT oppositions/observations still possible Rule 18 bis(1)(a) Notification of a provisional refusal based on opposition Rule 17(1) SGP When opposition period has expired without any oppositions/observations Rule 18 ter(1)

Notification of provisional refusal Rule 17(1) WHEN ALL PROCEDURES BEFORE OFFICE COMPLETED FINAL DISPOSITION Notification of provisional refusal Rule 17(1) WHEN ALL PROCEDURES BEFORE OFFICE COMPLETED FINAL DISPOSITION ON THE STATUS OF THE MARK (MANDATORY) SGP For ALL the goods and services SGP for SOME goods and services Confirmation of total provisional refusal Rule 18 ter(2)(i) Rule 18 ter(2)(ii) Rule 18 ter(3) Further decision affecting the protection of the mark Rule 18 ter(4)

Responding to refusals Governed entirely by national law (Procedures governed by national regimes: hearings, 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

Invalidation Article 5(6) & Rule 19 Invalidation Article 5(6) & Rule 19

What is meant by “invalidation” ? Any decision by a Competent Authority (adm. or What is meant by “invalidation” ? Any decision by a Competent Authority (adm. or jud. ) of a DCP revoking or cancelling the effects of an IR with regard to all or some G & S covered by the designation.

Notification of Invalidation of National Effect When? When Appeal no longer possible Notification by Notification of Invalidation of National Effect When? When Appeal no longer possible Notification by Office of Contracting Party where invalidation was pronounced

Contents of Notification Authority pronouncing invalidation Exhaustion of remedies IR number Name of the Contents of Notification Authority pronouncing invalidation Exhaustion of remedies IR number Name of the holder Goods and services concerned Date of pronouncement and of effect

International Registration Dependence Ceasing of Effects of Basic Mark Transformation International Registration Dependence Ceasing of Effects of Basic Mark Transformation

Dependence The protection resulting from the IR registration remains dependent on the basic registration 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 Effects Article 6(3) and (4) of Protocol Rule 22 Ceasing of Effects Article 6(3) and (4) of Protocol Rule 22

Definition “Ceasing of Effects” of Basic Mark can be due to: Withdrawal, lapse or Definition “Ceasing of Effects” of Basic Mark can be due to: Withdrawal, lapse or renunciation or final decision of rejection, revocation, cancellation or invalidation An act or failure to act by owner of basic mark or an 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 IR affects all designated Contracting Parties

Procedure Basic Mark If a basic mark “ceases to have effect” in whole or Procedure Basic Mark If a basic mark “ceases to have effect” in whole or in part within 5 years of date of IR, Office of Origin notifies IB, pursuant to Rule 22, and requests partial or total cancellation of IR. 5 -Year Dependency International Registration (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. Always Dependent Effect of IR as a national/regional registration No particular action required; some designated Contracting Parties may update their databases.

Transformation In order to soften the consequences of the “Central Attack”, the Protocol provides Transformation 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.

TIME: The application has to be filed within 3 months from the date on 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 Transformation The transformation is not available: 1. Where the IR has been cancelled at the request of the holder 2. With respect to a Contracting Party in the territory of which the IR has been subject of a total refusal, invalidation or renunciation 3. In a Contracting Party whose designation is not governed by the Protocol or in a Contracting State where the IR did not have effect

Managing an International Registration • Subsequent designations • Modifications – changes in name and Managing an International Registration • Subsequent designations • Modifications – changes in name and address of holder/representative – assignments (change in ownership for all or some G&S and for all or some DCPs) – Recording of limitation of G&S for all or some DCPs – Recording of renunciation of all G&S for some DCPs – Recording of cancellation of all or some G&S for all DCPs – Recording of licenses – Recording of restriction of the holder’s right of disposal • Term of protection and Renewal of an International Registration

Managing the International Registration Subsequent Designations Art. 3 ter(2) (Rule 24) Managing the International Registration Subsequent Designations Art. 3 ter(2) (Rule 24)

Presentation Form MM 4 By the Holder or by Office of the Contracting Party Presentation Form MM 4 By the Holder or by Office of the Contracting Party of the Holder

Subsequent Designation: Principle A Contracting Party may be designated subsequently if, at the time 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 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

Term of a Subsequent Designation The period of protection of a subsequent designation does 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

SUBSEQUENT DESIGNATION MADE BEFORE 10 YEARS 1/01/2006 1/01/1996 1/01/2016 __________________________ PAYMENT VALID ONLY UNTIL SUBSEQUENT DESIGNATION MADE BEFORE 10 YEARS 1/01/2006 1/01/1996 1/01/2016 __________________________ PAYMENT VALID ONLY UNTIL 1/01/2006

SUBSEQUENT DESIGNATION MADE AFTER 10 YEARS 1/01/2006 1/01/1996 1/01/2016 __________________________ PAYMENT VALID UNTIL 1/01/2016 SUBSEQUENT DESIGNATION MADE AFTER 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

Managing the International Registration Change in Ownership Managing the International Registration Change in Ownership

Recordal of Change in Ownership Article 9 Protocol Article 9 bis and 9 ter Recordal of Change in Ownership Article 9 Protocol Article 9 bis and 9 ter Agreement Rule 25 Form MM 5

Change in Ownership May result from, e. g. : - Contract/Assignment - Court decision 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 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) • directly to the IB • by the recorded Presentation of Request Rule 25(1)(b) • directly to the IB • by the recorded holder: (the transferor) Office of holder’s CP • through an Office of new owner’s CP Office of holder’s CP • by the new owner: (the transferee) • through an Office of new owner’s CP

Managing the International Registration Limitation, Cancellation, Renunciation Rules 25, 26 and 27 Managing the International Registration Limitation, Cancellation, Renunciation Rules 25, 26 and 27

Limitation, Cancellation, Renunciation some designated Contracting Parties Limitation some of the goods and services Limitation, Cancellation, Renunciation some designated Contracting Parties Limitation some of the goods and services all designated Contracting Parties some of the goods and services Cancellation all designated all the goods and services Renunciation all the goods and services Contracting Parties some designated Contracting Parties

EFFECTS LIMITATION PARTIAL CANCELLATION RENUNCIATION CONSEQUENCES no protection for the goods/services subsequent designation is EFFECTS LIMITATION PARTIAL CANCELLATION RENUNCIATION CONSEQUENCES no protection for the goods/services subsequent designation is possible goods/services remain kept in the International Register goods/services taken into account for calculating renewal fees no protection for the goods/services no subsequent designation in respect of those goods/services are removed from the International Register goods/services are not taken into account for calculating renewal fees no protection in the Contracting Party subsequent designation of the Contracting Party is possible

Term of Protection Renewal Articles 6(1) and 7(1) Rule 30(4) Term of Protection Renewal Articles 6(1) and 7(1) Rule 30(4)

Term of Protection and Renewal term of registration: 10 years renewal for further 10 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 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 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 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

Thank you! andre. ntamack@wipo. int Thank you! andre. [email protected] int