Management of an IR: Selected forms and procedures to encounter during the lifespan of the IR

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

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 18bis • Grant of protection – Rule 18ter(1) • Final decisions – Rule 18ter(2) and (3) • Further decision – Rule 18ter(4) • Invalidation – Rule 19

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

Interim status – Rule 18bis(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 18bis(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 18ter(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 18ter(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• Conditions • After notification of provisional refusal • All procedures completed, and • Provisional refusal is withdrawn (total withdrawal), or • Protection granted for some goods and services (partial withdrawal or confirmation of partial provisional refusal) • Content: Scope of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 18ter(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 18ter(4) • Conditions • After declarations under Rules 18ter(2) o 18ter(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 • 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 procedurescompleted 18ter(1) MF4 grant of protection no opposition observation 18ter(2) MF5 total or partial protection 18bis(1)(a) MF8 interimstatus grant total o partial no grounds for refusal opposition observation? 18ter(4) 19(1) 17(1) & (3) MF3 refusal based on opposition invalidation further decision further decision invalidation opposition total 18ter(3) MF6 confirmation of total provisional refusal refusal limit refuse

interim status 17(1) &(3) MF3 18bis(1)(b) MF8 opposition or observation? refusal based on opposition opposition 18ter(2) MF5 total or partial protection total o partial grant 18ter(4) MF7 19(1) 17(1)(a) MF3 provisional refusal invalidation further decision further decision invalidation grounds for refusal total 18ter(3) MF6 confirmation of total provisional refusal refusal limit refuse

Subsequent designation “Territorial extension of protection” (Art 3ter 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 MM4 (1) • Form MM4 (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 MM4

The form MM4 (2) • Certain requirements for certain CPs • To declare in the form (2nd 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 • MM4 presented directly to the IB – it will bear the date in which it was received by the IB • MM4 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 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 MM16 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 • Form MM9 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 MM10 is optional

Restrictions in the protection of the IR • The holder may wish to record restrictions in the protection of his IR • A limitation (MM6) • A renunciation (MM7) • A cancellation (MM8) • Forms to be presented to the IB directly by the holder or by the Office of the CP of the holder

Limitation (MM6) • 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

Renunciation (MM7) • 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 (MM8) • 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

Change in ownership • 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 MM5 is compulsory and regard total and partial change in ownership

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 MM5 • 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 Egypt CP of the transferor CP of the transferee Israel Germany France Algeria China

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

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) 3 4 Renewal Notification Inscription to Register IB Designated Office • Renewal Reception • Data Entry • Renewal Examination • Finance processing • Renewal Inscription • 6.1 Gazette • 6.2 Notification to the DCPs • 6.3 Certificate to the holder Reminder Renewal Request 1 ＋Payment Six months before the expiry 2 REP Reminder 1 Holder

Thank you for your attention debbie.roenning@wipo.int

Management of an IR: Selected forms and procedures to encounter during the lifespan of the IR