Filing and Prosecution: UK, Overseas, Madrid, EUTM Flashcards
What is the official fee for filing online applications at the UKIPO?
£170 with each additional class £50 per class (online or paper)
What is the fee for filing paper application at the UKIPO?
£200 with each class being £50 extra
What is the priority date from a UK application?
6 months from the filing date
What is the time period to respond to an EU examination report?
2 months
Once a UK TM is registered when will it fall due for renewal?
10 years from the filing date
Name three members of Benelux
Belgium, Netherlands and Luxembourg
Name three members of OAPI
Chad, Congo, Cameroon
Name five members of the European Union
Spain, Italy, France, Germany and Netherlands
If there is no TM legislation in a country, what could be published and explain what such publication does
A practise has evolved of putting third parties on notice of trade mark rights by publishing them in local newspapers. These are called cautionary notices
What is the criteria to file a international trade mark?
- Entitlement - be a national of a contracting party. Be domiciled in a contracting party or have a business in a contracting party.
- A base mark - application or registration in your home country or base country. The base country will be jurisdiction you are claiming priority from.
What country in terms of registration counted from the hiji (lunar) calendar?
Saudi Arebia
In what countries are they not allowed to register their trade marks for alcoholic beverages, pork meat and gambling and bar/nightclub?
Saudi Arabia and UAE
Explain the process from issuing of a provisional refusal by one of the designated country’s trade mark offices to the filing of a response to the provisional refusal
Reported to WIPO by national offices- WIPO report to applicant/ representative responses made to local trade mark offices through a local agent.
If you elected to cover a country through a national filing instead of designating in the international application under what basis or bases would we file this application?
Wh before which office should a subsequent designation be filed online for speed and efficiency?
Directly with WIPO, through WIPOS online tool or alternatively can be made on form MM4
What countries receive individual fees for international registration in two parts?
Brazil, Cuba and Japan
What countries require a declaration of use or non use to keep the trade mark in force?
Mexico, Philippines, United States, Cambodia, Mozambique
What are the 5 requirements to be met to make a successful priority claim when filing a UK trade mark application?
- The previous application is a first regular filing
- The mark in the earlier application and the mark applied for are the same
- The goods and services are identical or are contained within those of the earlier application
- The proprietor is the same
- The filing date of the mark is within 6 months of the filing date of the first application
Explain the routes to appeal an opposition at the UKIPO.
Two routes of appeal, to the courts or to the appointed person.
Appeal to the courts is this is more formal and costly approach any further appeals may be made to the Supreme Court.
The appointed person is a senior lawyer who is an expert in IP law the decision is final can be done on a form TM55 must include a statement of grounds of appeal and filed within 28 days of the decision being filed.
The appeal deadline can be extended by filing a form TM9 and 100£
What are the official languages of the EUIPO?
English, French, Spanish, German and Italian
Name non member states of WIPO
Argentina
Kosovo
Nigeria and South Africa
Qatar and Saudi Arabia
Hong Kong and Taiwan
Papua New Guinea
Languages of WIPO
English, French and Spanish you file in the language of your OOO office of origin (where your base mark is)
How do you limit a specification of an international application?
Form MM6 filed with WIPO
How do you divide an international application?
This is possible where there are objections to some of the classes in a multi class application the classes with objections can be transferred to a divisional application and be dealt with later
Form m22 filed with the national office and fees
What countries have second part individual fees?
Brazil, Cuba and Japan
What countries use single classification systems?
Argentina, Brazil, Mexico, Nigeria, Saudi Arabia, South Africa UAE
What countries use the former British classification system?
The Bahamas and Fiji
What countries have sun divided classes?
Iraq and Kurdistan region for example clothing, headwear, footwear is divided into
- Clothing
-headwear
Footwear and each sub divided class attracts an official fee
What countries have a single class system?
Argentina
Brazil
Mexico
Nigeria
Saudi Arabia
South Africa
UAE
Is Kosovo a member of WIPO?
No, but priority claims are still accepted
What are disclaimers
If you tried to register SMIRNOFF VODKA you may have to disclaim the exclusive right to use VODKA apart from the mark ahownn
How would you overcome a relative grounds objection during examination?
Letter of consent from the owner sayinf you can use it
Assignment of the coed mark (but it and transfer it to your ownership)
Apply to cancel the cited mark on the grounds of non use
Successfully argue that the mark covered by the citation and the mark you have applied for are not the same
What countries have a post registration opposition procedure?
Denmark
Finland
Germany
Iceland
Japan
Norway
What countries have 15 year renewal terms?
Lebanon and Venezuela
How many countries does OAPI cover?
17
How do you limit a specification on an international application to satisfy the concerns of an examiner in a provisional refusal? ?
File a form MM6 with WIPO
Is it possible to divide an international registration?
Yes, this can occur where there are objections to some of the classes in a multi class application. The classes with objections can be transferred to a divisional application and be dealt with later. Division is done using form MM22 and usually this is filed with the office of the designated party in which you want to request division there will be a fee of 177 Swiss francs
How do you make a subsequent designation?
MM4 filed at WIPO or through WIPO IP portal. Can also be made at the office of origin but usually done at WIPO.
What countries do not accept subsequent designations that date prior to their accession?
Brazil
Estonia
India
Philippines
What is the fee for a subsequent designation?
Extension basic fee is 300 CHF individual, complementary and supplementary fees are the same as they would be in an application.
Advantages of the Madrid system?
Single application and single payment in one currency to provide protection in multiple countries
Can be filed at own national office in your own language
Cost effective compared to filing national applications
New countries joining all the time
What can you do if a base mark for an international application is lost? (In the first 5 years)?
Transformation applications must be filed within 3 months of the date of cancellation of the international. These backdate to the date of the IR. Tm4 is used for transformation applications in the UK no fee.
How many countries does a EYTM cover?
27
What are the filing routes for filing i the EU?
National trade mark in individual member states of the EU
Regional trade marks for example Benelux
International registration though WIPO
EU trade mark at EUIPO
What are the benefits of an EU trade mark?
cost effective
Enlargement
Size of market
Indefinite
What is the opposition period of a EUTM?
3 months from date of publication and cannot be extended
What are essential requirements for an EUTM? And how long did you get to reply to deficiency letters?
the application fee has been paid
The application is a request for the registration of an EUTM
the applicant has been identified
The application included a list of goods and services and a representation of the trade mar
2 months to reply to dificeny letters if you don’t reply a new filing date will be issued.
What is conversion of an EUTM and what is the deadline for requesting?
If an EU trade mark is abandoned it can be converted into a national trade mark in EU member states
It can only be converted in member states in which the objection would not apply.
Conversion can be requested within 3 months calculated from the date on which the EUTM ceases to have effect. The official fee is 200 euros and can be filed online.
Does a UK trade mark extend to jersey and Isle of Man?
Automatically Extends to Isle of Man
To file in jersey you would need a UK dependent you would need to have a UK reg to file in jersey
What is revocation and invalidity actions?
Invalidity actions - REMOVE FROM REGISTER
revocation - concerned with how the mark has or has not been used (non use)
