Madrid

Question 1

MP - languages

Answer 1

EN, FR, ES

Question 2

base application

Answer 2

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

Question 3

MP application

Answer 3

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

Question 4

MP fee structure

Answer 4

basic fee
supplementary fee for each class above 3
complimentary fee for each territory designated

Question 5

WIPO examination

Answer 5

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

Question 6

MP - national phase

Answer 6

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

Question 7

MP - duration

Answer 7

10 years from registration, can be renewed indefinitely for further periods of 10 years, there’s a 6 month grace period

Question 8

MP subsequent designation

Answer 8

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)

Question 9

MP - central attack

Answer 9

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

Question 10

MP - transformation

Answer 10

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

Question 11

MP - replacement

Answer 11

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

Question 12

MP - licensing

Answer 12

cannot record TM licences in DE, NZ, AU

Question 13

International Registrations - intent to use

Answer 13

GB, IR, US only

Question 14

International Registrations - examination on relative grounds

Answer 14

IR, ES, US, CN, JP only

Question 15

International Registrations - add. registration fees once accepted

Answer 15

JP only (individual fees are payable in two parts)

Question 16

International Registrations - non-use periods

Answer 16

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

Question 17

International Registrations - opposition periods

Answer 17

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

Question 18

US affidavit - when to file

Answer 18

1. between 5th and 6th anniversary dates of the issuance of the certificate of extension of protection (i.e. US registration)
2. 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

Question 19

US affidavit - must contain

Answer 19

• 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

Question 20

US affidavit - other

Answer 20

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