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THE MADRID SYSTEM

THE MADRID SYSTEM. Legal Framework (II). Diego Agustín CARRASCO PRADAS Head, Legal Section, Legal and Promotion Division, International Registries of Madrid and Lisbon, Brands and Designs Sector. October 2010. Role of the International Bureau. Applicant. Issues a registration certificate.

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THE MADRID SYSTEM

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  1. THE MADRID SYSTEM Legal Framework (II) Diego Agustín CARRASCO PRADAS Head, Legal Section, Legal and Promotion Division, International Registries of Madrid and Lisbon, Brands and Designs Sector October 2010

  2. Role of the International Bureau Applicant Issues a registration certificate INTERNATIONALBUREAU Formality Examination No Irregularities Records in the int’l Register Publishes in the Gazette Notifies Designated Contracting Parties County A County B County C

  3. International Registration Effects of the International Registration Refusals

  4. Effects of International Registration • National application • National registration as from the date of the international registration in the absence of refusal

  5. Effects of the International Registration – Article 4 – The International Registration = A NationalRegistration once the time limit to issue a refusal has expired (assuming no refusal or refusal withdrawn) • A National Application • until the expiry of the time limit to issue a refusal

  6. Designations of Contacting Parties: Agreement • International application governed exclusively by the Agreement • Use official form MM1 A A AP A France Algeria

  7. Designations of Contacting Parties: Protocol • International application governed exclusively by the Protocol • Use official form MM2 P P P AP Japan or P! France AP Viet Nam

  8. Designations of Contacting Parties: Mixed • International application governed by both the Agreement and the Protocol • Use official form MM3 A A A+P AP Algeria or P! France AP Viet Nam

  9. Designated Contracting Parties • What is the role of the Office of the Designated Contracting Parties? • No specific role • But possibility to issue a Refusal

  10. Designated Contracting Parties • may notify the IB of OFFICE OFDESIGNATEDCONTRACTINGPARTY Substantive Examination within set time limits (12 or 18 months) Grant of Protection* = National Registration Provisional Refusal * No Office shall be obliged to send statements of grant of protection before January 1, 2011. Confirmation of Refusal Withdrawal of Refusal = National Registration

  11. 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

  12. Non-Valid Grounds for Refusal • Formal grounds • Classification of the goods and services (Rule 12) • Multi-class registration (Article 5(1)) • Limited goods or services (Article 5(1))

  13. Latest developments: • Statements of ground of protection

  14. Interfaces between the Madrid System and the Community Trade Mark

  15. MS & CTM - Similarities • Single filing mechanisms for international protection • Cost effectiveness over national filings • Administrative efficiency over national filings

  16. MS & CTM – Fundamental Differences (1) • CTM • Unitary right • Overlaid onto national systems • MS • Bundle of national rights • Part of national systems Implications

  17. MS & CTM – Fundamental Differences (2) • Implications • MS • No inherent conflict with national systems • CTM • High number of oppositions

  18. MS & CTM – Other Points of Comparison (1) • Geographical scope • MS • Goes well beyond EU • CTM • EU only

  19. MS & CTM – Other Points of Comparison (2) • Invalidity • MS • Once dependency is over, invalidation only via national actions • CTM • Always vulnerable to destruction of unitary nature by invalidation in one Member State

  20. MS & CTM – Other Points of Comparison (3) • Language • MS • French only – MA • French/English/Spanish - MP • CTM • 5 working languages [English, French, Italian, Spanish, German]

  21. MS & CTM – the Link (1) • Designate CTM within MP application • Base MP application on CTM

  22. MS & CTM – the Link (2) • CTM as designation • Usually a good option • “Opting back” choices – safety net

  23. MS & CTM – What’s the Answer? (1) • Neither system should predominate • Complementary

  24. MS & CTM – What’s the Answer? (2) • Costs in a given set of circumstances • Filing costs – easy to estimate • Prosecution costs – harder • Oppositions – almost impossible

  25. Thank You diego.carrasco@wipo.int

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