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THE MADRID SYSTEM FOR THE INTERNATIONAL REGISTRATION OF MARKS

THE MADRID SYSTEM FOR THE INTERNATIONAL REGISTRATION OF MARKS. André Ntamack Tel Aviv, July 4-5, 2007. Preparing the International Application. Entitlement to file an International Application Types of International Applications Choosing the Office of origin

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THE MADRID SYSTEM FOR THE INTERNATIONAL REGISTRATION OF MARKS

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  1. THE MADRID SYSTEM FOR THEINTERNATIONAL REGISTRATION OF MARKS André Ntamack Tel Aviv, July 4-5, 2007

  2. Preparing the International Application Entitlement to file an International Application Types of International Applications Choosing the Office of origin Representation before the International Bureau

  3. Entitlement to File an International Application

  4. Someone . . . • Natural Person • Legal Entity

  5. . . . who has a connection . . . • Real and Effective Industrial or Commercial Establishment (“Establishment”) • Domicile • Nationality

  6. . . . with a member of the Madrid Union • Contracting State • Contracting Organization • Must have an establishment in, or be domiciled in, the territory of an intergovernmental organization that is party to the Madrid Protocol, or be a national of a Member State of that organization • Member State of organization does not have to be party to the Madrid Agreement or Madrid Protocol.

  7. 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.).

  8. 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.

  9. Nationality • Intended to have same meaning as Article 2 of Paris Convention • 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.

  10. Types of International Applications

  11. One System 2 Treaties 2 Possible Designations 3 Types of International Applications

  12. Types of Applications Governed by Agreement and Protocol somedesignations governed by Agreement somedesignations governed by Protocol Rule 1(viii): Governed exclusively by Agreement all designations governed by Agreement MM1 Rule 1(ix): Governed exclusively by Protocol all designations governed by Protocol MM2 Rule 1(x): MM3

  13. MM1 Why is this type of international application governed exclusively by the Agreement? A A A A San Marino or A AP Egypt France

  14. MM1 Why is this type of international application governed exclusively by the Agreement? Madrid Protocol, Article 9sexies (“Safeguard Clause”) “. . . the provisions of this Protocol shall have no effect . . .” A A A San Marino AP or A AP France Vietnam

  15. Office of origin: Filing basis: Form: Language: Cascade applies - Article 1(3) of the Agreement Basic Registration MM1 French MM1 - Requirements International Application Each Designation Fees: Refusal Period: Supplemental + Complementary 12 months

  16. MM2 Why is this type of international application governed exclusively by the Protocol? P P P P USA or P AP Israel China

  17. MM2 Why is this type of international application governed exclusively by the Protocol? P P Israel P AP or P P China UK

  18. Cascade does not apply Basic Registration or Basic Application MM2 French, English or Spanish Office of Origin Filing basis: Form: Language: MM2 - Requirements International Application Each Designation Fees: Refusal Period: Supplemental + Complementary, or Individual 12 months, or 18 months, or 18+ months

  19. MM3 Why is this type of international application governed by the Agreement and Protocol? Madrid Protocol, Article 9sexies (“Safeguard Clause”) “. . . the provisions of this Protocol shall have no effect . . .” A A Egypt P AP P AP Israel A France AP Switzerland

  20. Cascade applies - Article 1(3) of the Agreement Basic Registration MM3 French, English or Spanish Office of Origin Filing basis: Form: Language: MM3 - Requirements International Application Each Designation under the Agreement Fees: Refusal Period: Supplemental + Complementary 12 months Each Designation under the Protocol Fees: Refusal Period: Supplemental + Complementary, or Individual 12 months, or 18 months, or 18+ months

  21. Examples

  22. A A Egypt A A AP AP Hungary Belarus A AP Example 1 Slovakia Questions Treaty Governing IA:Application Form:Language of Application:IA can be based on a basic app: A P APMM1 MM2 MM3French English SpanishYes No

  23. A AP France A AP AP AP Germany Italy P P Example 2 Japan Questions Treaty Governing IA:Application Form:Language of Application:IA can be based on a basic app: A P APMM1 MM2 MM3French English SpanishYes No

  24. Benelux P P Israel A AP AP AP China P P Example 3 UK All 3 DCPs have opted for the 18+ months refusal period and individual fees. Questions Treaty Governing IA:Application Form:Language of Application:IA can be based on a basic app: A P APMM1 MM2 MM3French English SpanishYes No Individual fee and 18+ months refusal do not apply in which DCP?: SE CN UK

  25. Benelux P P UK P P P AP Israel Switzerland P AP Example 4 All 3 DCPs have optedfor individual fees. Questions Treaty Governing IA:Application Form:Language of Application:IA can be based on a basic app: A P A/PMM1 MM2 MM3French English SpanishYes No Which DCPs will receive individual fees?: UK CH BX

  26. Article 1(3) of the Madrid Agreement Choosing the Office of Origin:When Does the “Cascade” Apply?

  27. The Hierarchy Article 1(3) of the Madrid Agreement (3) Shall be considered the country of origin the country of the Special Union where the applicant has a real and effective industrial or commercial establishment; if he has no such establishment in a country of the Special Union, the country of the Special Union where he has his domicile; if he has no domicile within the Special Union but is a national of a country of the Special Union, the country of which he is a national.

  28. Representation Before theInternational Bureau (Rule 3)

  29. WHOmay be appointed • Rule 3(1) to change from April, 2007 • No limit on address of representative • Need not be in a Contracting Party

  30. HOWto 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 (MM12) no power of attorney is needed! Signed by person making the appointment

  31. 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

  32. International Application and Examination Content of the International Application Examination by the Office of Origin Examination by the International Bureau Irregularities

  33. Content of the International Application – Rule 9 (MM2) four mandatory elements: identity of applicant designated Contracting Parties reproduction of the mark indications of goods and services

  34. overview of the international procedure basic registration (A+P) PrerequisiteOR basic application (P) InternationalApplication checks the correspondence between the basic mark and the international mark OFFICE OF ORIGIN examination on formalities recording in the international register: international registration notification of registration to the designated contracting parties INTERNATIONAL BUREAU OFFICE OF A DESIGNATED CONTRACTING PARTY substantive examination refusal of protection no refusal => protection granted

  35. Examination by the ILPO as Office of Origin Rule 9(5)(d) Rule 11(4)

  36. Certification by Office of Origin Rule 9(5)(d) / Item 13 Application Form • Identity between, inter alia • applicant • mark • goods and services • Date of receipt of international application

  37. Irregularities to Be Remedied byOffice of Origin Rule 11(4) • Official form not used • Rule 15 Omissions (4) • Applicant’s entitlement • Certification Irregularities • No basic application/registration

  38. Procedure • Office of Origin informed/notified • Applicant informed/notified • 3-month time limit for correction

  39. Examination by the International Bureau

  40. Registration Process within the IB REGISTERED No Irregularities Finance processing Scanning Translation Examination Reception of the request Correctionw/in time limits Irregularities • Reproduction • Entitlement of the applicant • Designated Contracting Parties • Classification of goods/services • Fees paid No correctionw/in time limits REGISTERED orABANDONED

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

  42. 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”

  43. Rule 12 : Procedure Fees paid IB withdraws proposal REGISTERED(as filed) OO gives opinion IB modifies proposal Fees paid REGISTERED (as per modification or IB proposal) reminder :2 months IB confirms proposal IB Proposal 3 monthsto resolve No reply from OO REGISTERED(as per IB proposal) Fees paid ABANDONED1 Fees not paid 1Refund: fees paid minus 1/2 basic fee for a b&w registration.

  44. 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 »

  45. Rule 13 : Procedure IB accepts REGISTERED (as per proposal) OO proposal IB Suggestion IB rejects REGISTERED (term deleted if not classified ) 3 monthsto resolve If term classified REGISTERED(as filed but with notation) No reply from OO

  46. Rule 11: Other Irregularities REGISTERED Corrected OO Reply IB Proposal Uncorrected ABANDONED* 3 monthsto resolve No Reply * Refund: fees paid minus 1/2 basic fee for b&w registration.

  47. International Registration Date of the International Registration Effects of the International Registration Refusals and Responding to Refusals

  48. 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

  49. * Reception of the request by the OO Reception of the request by the IB * Reception of the request by the OO Reception of the request by the IB * Reception by the IB of the last missing mandatory element Reception of the request by the OO Date of the International Registration(*) 2 months 2 months 2 months

  50. 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 NationalRegistration once the time limit to issue a refusal has expired (assuming no refusal or refusal withdrawn)

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