Trademark Protection at home and

Abroad. The Madrid System for the

International Registration of Marks

International Registration and its Management

Tallinn,

June 5 and 6, 2014

Normunds LAMSTERS

Principal Examiner, Processing Team 1,

Operations Division, Madrid Registry

Content of the presentation

Effects of the International Registration

Subsequent Designation

Change in Ownership

Limitation, Renunciation and Cancellation

Changes in the Name and/or Address

Appointment of Representative

Ceasing of Effect

Transformation

Renewal

Replacement

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Abbreviations

CP – Contracting Party

DCP – Designated Contracting Party

G&S – Goods and Services

IB – International Bureau

IR – International Registration

OO – Office of Origin

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Effects of the International Registration

4

Effects of the International Registration (1)

Subsequent designations «branches»

International Registration «trunk»

Basic application/registration «roots»

© MICHAEL HALBERT

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Effects of the International Registration (2)

From the date of the IR,

the protection of the mark

in each of the DCPs is the

same as if:

The mark had been filed

directly with the Office of that

CP, and

The mark had been

registered by the Office of

that CP, if no refusal is

notified within the applicable

time limit

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Subsequent Designation

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Subsequent Designation (1)

The holder of an IR has the possibility of extending the geographic scope of a registration’s protection to other CPs to the Madrid System by requesting a subsequent designation

A CP may be designated subsequently if, at the time of this subsequent designation, it is bound by the same treaty as the CP of the holder

May relate to all or some of the G&S

A particular case: subsequent designation resulting from

the conversion of the designation of a Contracting

Organization (European Union)

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Subsequent Designation (2)

Compulsory to use the official form MM4 or webform via E-subsequent designation

Presentation:Directly to the IB by the holder/recorded representative;

Through the Office of the CP of the holder if a CP is designated under the Agreement

Fees:Basic fee – 300 CHF

Complementary fee(s) without individual fee – 100 CHF per each designated CP and/or

Individual fee(s) if the designated CPs made the declaration provided for by Article 8(7) of the Protocol (and if the derogation provided for by Article 9sexies(1)(b) of the Protocol does not apply)

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Subsequent Designation (3)

Requirements for certain designated CPs:

European Union

Indication of a second working language (mandatory);

Possibility of claiming seniority – Form MM17

United States of America

Declaration of intention to use the mark – Form MM18(mandatory)

India, Ireland, New Zealand, Singapore and the United Kingdom

The mere fact of designating any of these Contracting Parties is taken, per se, as comprising the required declaration of intention to use

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Notification

Subsequent Designation (4)

1

3

3

Information

MM4

IB

Holder

Office of CP

of the holder

Office(s) of DCP

Recorded in the International Register

2

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Conversion - “Opting Back” (1)

Where a designation of the European Union in an IR has been withdrawn, refused or has ceased to have effect

The holder may request conversion through subsequent

designation of its member States

Form MM16 to be presented through OHIM

Must indicate the ground for conversion

A subsequent designation resulting from conversion will

bear the date on which the designation of the European

Union was recorded in the International Register

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MM16 +

Application for

Conversion

Conversion -“Opting Back” (2)

IB DCPs

Local. repHolder

MM16Recorded in the

International

Register

Notification

OHIM

Holders not having their domicile nor a

real commercial establishment in the

European Union (Professional

representation is mandatory)

Holders having their domicile

or a real commercial

establishment in the

European Union

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Change in Ownership

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Change in Ownership (1)

May result from, e.g.

A contract (such as an assignment)

A court decision or operation of law (such as an

inheritance or bankruptcy)

Scope

Total (all the G&S and all the DCPs)

Partial (some of the G&S, and/or some of the DCPs)

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Change in Ownership (2)

Compulsory to use the official form MM5

Presentation:

Directly to the IB by the holder/recorded representative

Through the Office of the CP of the recorded holder or the

Office of the CP of the new owner

Fees:

177 CHF per international registration

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Change in Ownership (3)

The IB is only concerned with the formalities of the

recording of a change in ownership and does not require

or examine evidence of the said change (no supporting

documents should be sent)

Entitlement to be the new holder:

The new holder must be entitled to file international applications

His entitlement shall be considered in respect of each DCP

Possibility of cumulative entitlements

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CP of the transferor

France (A/P)Tunisia (P)

United States of

America (P)

Germany (A/P)

Algeria (A)

China (A/P)

CP of the transferee

Change in Ownership (4)

Change in Ownership (5)

Information

NotificationIB

Holder

Office(s) of DCP

New Owner

(transferee)

(transferor)

MM5

1MM5 Consent from the holder

+1

Recorded in the International Register

2

3

3

Office of CP

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Merger of International Registrations

Conditions for Merger of IRs:

The same recorded holder has two or more IRs resulting from a

partial change in ownership

Request can be submitted directly to the IB or through

the Office of CPs

No fee, no official form

Advantages of merger of IRs:

Easy-to-manage the said IRs

Cost saving on renewal

Transferee B

= Holder A

Holder A

Merged international registrations

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Restrictions in the Protection of the

International Registration

Limitation, Renunciation and

Cancellation

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Limitation, Renunciation and Cancellation (1)

A limitation is a procedure to remove some G&S in

respect of all or some of the DCPs in an IR

A renunciation is a procedure intended to abandon the

effects of an IR for all the G&S in respect of some of the

DCPs

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 DCPs

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Limitation, Renunciation and Cancellation (2)

Compulsory to use the official form:

Limitation - MM6

Renunciation - MM7

Cancellation - MM8

Fees:

Limitation – Yes (177 CHF per IR)

Renunciation/Cancellation – No

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Limitation, Renunciation and Cancellation (3)

Presentation of Limitation:

Directly to the IB by the holder/recorded representative

Through the Office of the holder

Presentation of Renunciation/Cancellation:

Directly to the IB by the holder/recorded representative

Through the Office of the CP of the holder only if the designation of the CP affected is governed by the Agreement.

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Limitation, Renunciation and Cancellation (4)

Limitation

(MM6)

Renunciation

(MM7)

Cancellation

(MM8)

Goods &

ServicesSome All Some or All

Designated

OfficesSome or All Some All

Subsequent

Designations

Fees 177 CHF Free of charge Free of charge

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Change in the Name and/or Address

of the Holder

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Change in the Name and/or Address

Compulsory to use the official form MM9

May be presented directly to the IB by the holder/recorded representative, or through the Office of the CP of the holder

Fees: 150 CHF irrespective of the number of IRs concerned

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Appointment of Representative

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Appointment of Representative (1)

A representative may be appointed:In the international application form (MM1, MM2 and MM3)

In the subsequent designation form (MM4)

In the request for the recording of a change (MM5 to MM9)

In a separate communication by means of an optional form (MM12) or a letter signed by the holder

No “blanket” appointments - each international registration number must be indicated

Only one recorded representative per international application or registration

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Appointment of Representative (2)

Any communication addressed to the IB by the recorded

representative has the same effect as if it had been

addressed by the applicant or holder

Cancellation of representative:

Appointment may be cancelled at any time at the request of the

holder or the representative

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Change in the Name and/or Address of

the Representative

By means of an optional form MM10 or a letter signed by the representative

To be presented to the IB directly

No fee

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Ceasing of Effect

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Dependency Period

For a period of five years from the date of the IR, the protection resulting from the IR remains dependent on the basic application or registration (“basic mark”)

This dependence is absolute, and is effective regardless of the reasons why the basic application is rejected or is withdrawn or the basic registration ceases to enjoy, in whole or in part, legal protection

After the five-year dependency period, the IR becomes independent of the basic mark

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Ceasing of effect

Ceasing of effect of the basic mark can be due to:The withdrawal, lapse or renunciation or the final decision of rejection, revocation, cancellation or invalidation

An act or failure to act by the owner of the basic mark

An act by the Office of origin or a third party

Must occur:Before the expiry of the five-year dependency period, or

After the expiry of the five-year dependency period if related to a proceeding initiated before the expiry of the five-year period

The OO must notify the IB of the facts and decisions affecting the basic application or registration

The IB cancels the IR to the extent applicable

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Transformation

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Transformation

Provided for only by the Protocol

Transformation may only follow a cancellation of the IR

as a result of “ceasing of effect”

The mechanism, offering the holder of an IR the option of

converting to a national or regional application filed

directly with the Office of the DCP

Preservation of filing date and priority of IR

Must be filed within 3 months from the date of the

cancellation of the IR

Actual process subject to national laws, regulations and

practices (no WIPO procedure)

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Ceasing of Effect and Transformation

IB DCP

Local. repHolder

Recorded in the

International

Register

OO

Power of Attorney

Notification

(Rule22)

TransformationCancellation

Cancellation

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Renewal of an International

Registration

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Term of Protection and Renewal

Term of registration: 10 years

Renewal for further periods of 10 years (upon payment

of the prescribed fees)

Renewal in respect of all or some of the DCPs

May not include any change in relation to the IR

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Request for Renewal

Optional form (Form MM11)

Any communication giving the necessary information

(IR number concerned, DCP(s) to be renewed and

purpose of the payment)

E-renewal (a secure interface available at: https://webaccess.wipo.int/trademarks_ren/erenewal_en.jsp).

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Renewal - Fees

Basic fee – 653 CHF

Supplementary fee for each class of G&S beyond three classes, except if the renewal is made only for DCP(s) in respect of which individual fees are payable – 100 CHF

Complementary fee(s) without individual fee(s) –100 CHF per each DCP and/or

Individual fee(s) if the DCPs concerned have made the declaration under Article 8(7) of the Protocol

Except where the derogation provided for by Article 9sexies(1)(b) of the Protocol applies in which case the complementary fee will be payable

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Renewal Procedure

Certificate

OfficesIB

Holder (or the

Representative if

appointed)

Recorded in the International Register

3

2

MM11

4

Reminder

1

4

Renewal

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Replacement

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Replacement (1)

Why and when can replacement be useful?

Preexisting national or regional registrations for same mark in a DCP of an IR

Incorporate such preexisting national registrations into a single (IR) and therefore take advantage of the centralized maintenance and management features of the Madrid System

Conditions:

Both the national or regional registration and the IR must be in the name of the same holder

Protection of the IR extends to the CP concerned

All the G&S and services listed in the national or regional registration are also listed in the IR in respect of that CP

Such extension must take effect after the date of the national or regional registration

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Replacement (2)

Where a mark that is the subject of a national registration

in the designated CP is also the subject of an IR

IR is deemed to replace the national registration, provided

that:

Protection of the IR extends to the said CP

All the G&S listed in the national registration are also listed in the IR

Such extension takes effect after the date of the national

registration

Both registrations stand in the name of the same person+

=

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Useful Information

Legal texts, treaties, regulations, administrative instructions are available at: http://www.wipo.int/madrid/en/legal_texts/

Forms: http://www.wipo.int/madrid/en/forms/

Individual Fees: http://www.wipo.int/madrid/en/madridgazette/remarks/ind_taxes.html

Fee calculator: http://www.wipo.int/madrid/en/fees/calculator.jsp

E-subsequent designation: https://www3.wipo.int/osd/index.xhtml

E-Renewal: https://webaccess.wipo.int/trademarks_ren/erenewal_en.jsp

ROMARIN: http://www.wipo.int/romarin

The WIPO Gazette of International Marks: http://www.wipo.int/madrid/en/madridgazette/

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New Web Based Client Services

Madrid Real-Time Status (http://www.wipo.int/mrs/):

A tool to inform of the status of an international

application/registration

Madrid Portfolio Manager (https://www3.wipo.int/mpm/):

A tool to allow the holders and representatives of international registrations to view and modify their portfolio online

Madrid Electronic Alert (https://www3.wipo.int/mea/):

A tool to allow users to submit a list of international registrations to monitor and to be informed by email when any of them change

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Contact Us

General queries on the Madrid System

Madrid Customer Service: +41 22 338 8686

intreg.mail@wipo.int

Specific queries on IA or IR

madrid.team1@wipo.int +41 22 338 750 1

madrid.team2@wipo.int +41 22 338 750 2 (Estonia)

madrid.team3@wipo.int +41 22 338 750 3

http://www.wipo.int/madrid/en/contact.html

For the electronic communication with IB

e-marks@wipo.int

http://www.wipo.int/madrid/en/services/electronic_notification.html

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Thank you

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