2 - The Madrid Protocol Flashcards
What are the official languages of the Madrid protocol
English, French and Spanish
Where must the base application be filed?
A protocol country in which the applicant has:
- a real and effective industrial or commercial establishment
- their country of domicile or
- their country of nationality
Can a MP application be based on more than one application or registration?
Yes, where it is the same mark, same ownership and same office of origin
Where is the international application filed?
At the office of origin
What fees are due on filing an international application?
Basic fee
Supplementary fee for each class above three
Complementary fee for each territory designated
What type of examination does WIPI complete?
A formalities , I.e. not substantive
What does WIPO do if there is a reason a mark should not be registered?
Issues an irregularity notice via the office of origin
What are some common objections from WIPO?
- amendment to a classification because WIPO has its own interpretation of Nice classification
- payment of official fees
What happens if WIPO objections are overcome?
WIPO registers the mark as an international registration and issues a certificate of registration. Registration is advertised in Les Marques Internationales, the journal of WIPO
Does an international registration provide enforceable rights?
No, it must enter national phase
What does WIPO do after the mark is internationally registered?
Sends details to the National trade mark office of each designated country.
Each National office examines the registration as if it were examining a national application.
Can national offices object to an international registration because of the number of classes and/or goods/services?
No
What happens if the National office does not examine with twelve (or 18m where applicable)?
It loses the power to object and the mark is registered in that territory
What is the duration of an international registration?
10 years, which can be renewed indefinitely in 10 year blocks
Can international registrations change ownership?
Yes, and can be recorded in respect of all or some of the designations or some of all of the goods/services.
The new owners must meet requirements for filing an IR
Can designations be added after registration?
Yes, you can add ‘subsequent designations’ but they will have a later date of protection. There is a single renewal fee due.
How long is the international registration linked to the base application and what is this period called?
Five years, the dependency period
What is the main risk during the dependency period?
If the basic application is cancelled or not registered, then the international registration is also cancels. This is called central attack.
What is ‘transformation’?
If an international registration is subject to central attack, it can be transformed to national applications within three months of cancellation. The National applications will retain the filing date of the international application
What is replacement?
If the owner of a IR has an earlier National registration for the same mark, for the same goods/services and in the same ownership, the IR is deemed to replace the National registration in that territory
