Madrid Flashcards
MP - languages
EN, FR, ES
base application
needs one before filing an MP application
the applicant needs to apply to register their mark in the office of origin (MP country), where they have:
(a) a real and effective industrial/commercial establishment
(b) domicile
(c) nationality
MP application
can be based on more than one base application/registration, provided that same mark/owner/office of origin
file with the Office of Origin
designate the countries of interest, cannot designate office of origin
exceptions: Malta, HK, ZA, AR, UAE, Chile
form + fee, applicant’s ID, list of goods/services, representation
can be filed months/years after filing of the base application, unless need to claim priority
MP fee structure
basic fee
supplementary fee for each class above 3
complimentary fee for each territory designated
WIPO examination
formalities only, i.e. not substantive examination
irregularity notice, 3 months to reply
if overcome/no objections, WIPO registers the mark as International Registration
not an enforceable right, national phase begins
MP - national phase
each national office has 12/18 months to raise objections to a mark within the national phase
if objection is raised, WIPO is notified, in order to respond, need to appoint a local attorney
MP - duration
10 years from registration, can be renewed indefinitely for further periods of 10 years, there’s a 6 month grace period
MP subsequent designation
possible to register subsequent designations
will have a different date of protection
not much cost advantage at the application stage, but cost advantage when paying renewal fees (single renewal fee for MP)
MP - central attack
First 5 years from filing an MP application, its validity is linked to the basic application
if the basic application is not registered or is cancelled, then the MP is also cancelled
once those 5 years elapsed, the applications/registrations are independent of each other
can be assigned separately
MP - transformation
MP equivalent of “conversion”
if a MP app/reg is subject to a successful central attack, it can be transformed to national TM applications in any designated country
retains filing/priority dates
3 months from cancellation of the base app/reg
apply to national offices, appoint LAs
same owner, same TM, identical/narrower goods/services
MP - replacement
equivalent of “seniority”
earlier national TM registration, same owner, same goods/services
MP can replace that registration in that territory
helps streamline renewal and maintenance activities, simplifies administration and reduces costs
MP - licensing
cannot record TM licences in DE, NZ, AU
International Registrations - intent to use
GB, IR, US only
International Registrations - examination on relative grounds
IR, ES, US, CN, JP only
International Registrations - add. registration fees once accepted
JP only (individual fees are payable in two parts)
International Registrations - non-use periods
5y from registration = EU, DE, UK, IT
5y from publication of registration: FR, IR, ES
3y from registration = CN, JP, US
For CN, file request for cancellation 3y after expiration of 12/18m period for refusal
International Registrations - opposition periods
2m following publication of IR: FR, ES, JP, UK (extendable by 1m)
3m following publication of IR: IR
3m after 1m following republication of IR by WIPO: EU
30 days from publication: US (extendable with cause to 180 days)
3m starting on the first day of the month after publication of IR: CN, DE, IT
US affidavit - when to file
- between 5th and 6th anniversary dates of the issuance of the certificate of extension of protection (i.e. US registration)
- within the year preceding the end of each 10 year period after the date of registration
there is a 6 month grace period - will need to pay surcharge
US affidavit - must contain
- list of good or services for which the mark is used/not used
- fee
- statement that the mark is in use/a showing that any non use is due to special circumstances which excuse nonuse and not due to any intention to abandon the mark
- if used, specimens demonstrating actual use - one per class
US affidavit - other
deficient submissions can be corrected after the statutory time period and within the time prescribed after notification of the deficiency, will need to pay a surcharge
