Seminar and Roundtable on the Madrid System for

Seminar and Roundtable on the Madrid System for the International Registration of Marks Eric FONTAINE Assistant Team Coordinator Examination and Registration Section Brands and Designs Sector Tel Aviv February 8 and 9, 2012.

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 System Madrid Agreement and Madrid Protocol Applicant Establishment Domicile Nationality Basic Registration Basic Application

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 (MM 18 form) Fees Certification from OO with date and signature/seal n Basic registration n Basic application n Type of mark: Colour, 3 -D, sound, etc. n Disclaimer n Transliteration of the mark n 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

Examination procedure: irregularities Registered No correction w/in time limits Abandoned Irregularities Correction w/in time limits Registered

3 categories of irregularities Miscellaneous – OO, Applicant or Both, to remedy OO, Entitlement, Basic registration/application, priority, MM 18, 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 2 months December 8, 2011 February 7, 2012 Reception by IB Reception by OO IR date = 08/12/11

International Registration Date Modified International Registration Date = Date IB receives the completed application Beyond 2 months period but within 3 months from the IB irr. letter date 2 months July 17, 2011 Reception by OO September 5, 2011 Reception by IB BUT (Irr. Rule 15 = mandatory element missing) November 17, 2011, Reception by IB of the corrected application

International Application Administrative mistakes form MM 2

Incorrect !! x

correct !! This is neither a verbal nor a colour mark!

X Red and green.

X

X Orange (Pantone 151).

ai love

International Application Administrative mistakes form MM 2

Fee Calculation Sheet In order to identify the payer If you have the WIPO receipt number Report the basic application number or basic registration number + any other bank references 20090042596 TV 2009 C 000292

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. 9 sexies(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. 6 quinquies (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 – 1 st 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 mentioned Opposition 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 – 2 nd Stage – The statement of Grant of Protection following a provisional refusal (Rule 18 ter(2)) or The confirmation of total refusal (Rule 18 ter (3)) Rule 18 ter (2)(i) Totally protected Rule 18 ter (2)(ii) Protected G & S Rule 18 ter (3) Totally refused

Notification of Refusal – 3 rd Stage – Further Decision affecting protection (Rule 18 ter (4))

Useful Resources www. 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. team 3@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 Simulator Madrid Fee Calculator Madrid e-Payment Madrid e-Renewal Madrid Dynamic Statistics Goods and Services Manager ROMARIN WIPO Gazette of International Marks Global Brands Database New Services: Madrid Real-Time Status Madrid Portfolio Manager Madrid Electronic Alerts

Existing services Madrid Application Simulator http: //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 Calculator http: //www. wipo. int/madrid/en/fees/calculator. jsp For calculating the cost of an application for international registration, subsequent designation or renewal. Madrid e-Payment https: //webaccess. wipo. int/epayment/enter. Fee. ID_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-Renewal https: //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 Manager http: //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. ROMARIN http: //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: //www 3. 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: //www 3. 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 Resources www. 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. team 3@wipo. int Tel. + 41 22 338 91 11

Thank you