3 - Laws of Member States of the Madrid Protocol

Question 1

Any requirement to pay registration fees once an application has been
accepted for registration?

Answer 1

EU - No
France - No
Germany - No
Ireland - No
Italy - No
Spain - No
UK - No
China - No
Japan - Yes, individual fees payable in two parts
USA - No

Question 2

Any requirement of intent to use the mark?

Answer 2

EU - No
France - No
Germany - No
Ireland - Yes. The Office requires an intention to use, made via a simple declaration included within the MM2/MM4
Italy - No
Spain - No
UK - Yes. The Office requires intention to use. Applicants must provide information
specified on the MM2 (International Application) or the MM4 form (Subsequent
Designation)
China - No
Japan - No
USA - Yes. The Office requires intention to use. Applicants must complete Form MM18
DECLARATION OF INTENTION TO USE THE MARK – UNITED STATES OF
AMERICA and supply alongside application. Must be signed in good faith

Question 3

Can the Office refuse a registration, ex-officio, on relative grounds?

Answer 3

EU - No. The Office examines international registrations on absolute grounds only
France - No. The Office examines international registrations on absolute grounds only
Germany - No. The Office examines international registrations on absolute grounds only
Ireland - Yes. The Office examines international registrations on absolute and relative
grounds.
Italy - No. The Office examines international registrations on absolute grounds only.
Spain - Yes. The Office examines international registrations on absolute and relative
grounds.
UK - No. The Office examines international registrations on absolute grounds only.
China - Yes. The Office examines international registrations on absolute and relative
grounds.
Japan - Yes. The Office examines international registrations on absolute and relative
grounds.
USA - Yes. The Office examines international registrations on absolute and relative
grounds.
The USA has declared that the time limit to notify a refusal of protection shall be 18
months and that, where a refusal of protection results from an opposition to the
granting of protection, such refusal may be notified after the expiry of the 18 month
time limit.

Question 4

What is the length of the opposition period?

Answer 4

EU - 3 months - commencing after the expiry of 1 month following the date of first
republication in the EUTM Bulletin
France - 2 months. The time limit begins on the date WIPO publishes the international
registration in the WIPO Gazette.
Germany - 3 months from first day of the month after publication in the WIPO Gazette
Ireland - 3 months. The time limit begins on the date the Office publishes the international registration
Italy - 3 months. The time limit begins on the date the Office publishes the international registration
Spain - 2 months. The time limit begins on the date the Office publishes the international registration (in the Spanish Official Gazette)
UK - 2 months unless a request for an extension has been made, which extends the
opposition period by a further one month. The time limit begins on the date the
Office publishes the international registration
China - 3 months. The time limit begins on the first day of the month immediately following
the month in which the international trademark has been published in the WIPO
Gazette.
Japan - 2 months. The time limit begins on the date the Office publishes the international
registration.
USA - 30 days from date of publication of the examined US application. The potential
opposer may (before the end of the period):
1. request a 30-day extension as of right; or
2. request a 90-day extension for good cause or consent.
If the 30-day extension is granted, an additional 60 day extension may be requested
for good cause or consent.
After a total 90-day extension, one final request may be made, for an extension of
time for an additional 60 days (with consent or under extraordinary circumstances).

Question 5

What is the length of the period after which a mark can be revoked for non-use?

Answer 5

EU - 5 years from the registration date.
France - 5 years from the date of publication of the registration.
Germany - 5 years from the registration date.
Ireland - 5 years from the date of publication of the registration.
Italy - 5 years from the registration date.
Spain - 5 years from publication of notice of grant of the registration.
UK - 5 years after the date of registration.
China - 3 years. A request for cancellation of a registered international trade mark on the ground of non-use for three consecutive years without a justifiable reason should be filed three years after the expiration of the 12 or 18 months period of refusal.
Japan - 3 years after the date of registration.
USA - 3 years from grant.

Question 6

Any maintenance requirements beyond paying a renewal fee?

Answer 6

No for all countries except USA:

USA -The Office requires actual use of the mark. Holders must file an affidavit or
declaration of use in commerce or excusable non-use to avoid cancellation of
protection in the US.

Affidavits must be filed:
1. between the 5th and 6th anniversary dates of the issuance of the certificate of
extension of protection (i.e. US registration); and

2. within the year preceding the end of each 10-year period after the date of
   registration.

Affidavits must contain:
- Statement that the mark is in use in commerce;
- List of goods and services on which the mark is in use; and
- Be accompanied by specimens (examples) showing actual use – one per
class.
- Payment of a fee.

Specimens can be: labels, tags, web page printouts (if include picture/description of
goods, the mark, and ordering information), screenshots for computer programmes, a
frame from a film etc.

Also, as with all International designations, the holder of a registered extension of
protection of an international registration to the United States must renew the
international registration with the International Bureau