The Madrid Protocol: Protection of trade marks in EU (unitary right), France, Germany, Ireland, Italy, Spain, UK, USA, China and Japan. (3)

Question 1

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

Answer 1

No

Question 2

EU - Any requirement of intent to use the mark?

Answer 2

No

Question 3

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

Answer 3

No. The Office examines international registrations on absolute grounds only.

Question 4

EU - Length of opposition period.

Answer 4

3 months. The opposition period begins at one month after republication by WIPO of an International Registration and ends four months after republication. (For example, if the first republication is on 15/02/2017, the opposition period starts on 16/03/2017 and ends on 15/06/2017).

Question 5

EU - The length of the period after which a mark can be revoked for non-use.

Answer 5

5 years from the registration date.

Question 6

EU - Any maintenance requirements beyond paying a renewal fee.

Answer 6

No.

Question 7

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

Answer 7

No

Question 8

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

Answer 8

No.

Question 9

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

Answer 9

No

Question 10

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

Answer 10

No

Question 11

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

Answer 11

No

Question 12

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

Answer 12

No

Question 13

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

Answer 13

No

Question 14

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

Answer 14

Yes. Individual fees are payable in two parts.

Question 15

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

Answer 15

No

Question 16

DE - The length of the period after which a mark can be revoked for non-use.

Answer 16

5 years from the registration date.

Question 17

DE - Any maintenance requirements beyond paying a renewal fee.

Answer 17

No.

Question 18

IE - Any requirement of intent to use the mark?

Answer 18

Yes. The Office requires intention to use. Applicants must provide information specified on the MM2 form (International Application form) or the MM4 form (Subsequent Designation form).

Question 19

IT - Any requirement of intent to use the mark?

Answer 19

No

Question 20

ES - Any requirement of intent to use the mark?

Answer 20

No

Question 21

UK - Any requirement of intent to use the mark?

Answer 21

Yes. The Office requires intention to use. Applicants must provide information specified on the MM2 (International Application) or the MM4 form (Subsequent Designation).

Question 22

CN - Any requirement of intent to use the mark?

Answer 22

No

Question 23

JP - Any requirement of intent to use the mark?

Answer 23

No.

Question 24

US - Any requirement of intent to use the mark?

Answer 24

Yes. The Office requires intention to use. Applicants must also complete Form MM18 DECLARATION OF INTENTION TO USE THE MARK – UNITED STATES OF AMERICA and annex to application

Question 25

IT - The length of the period after which a mark can be revoked for non-use.

Answer 25

5 years from the registration date.

Question 26

IE - Any maintenance requirements beyond paying a renewal fee.

Answer 26

No

Question 27

IT - Any maintenance requirements beyond paying a renewal fee.

Answer 27

No

Question 28

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

Answer 28

Yes. The Office examines international registrations on absolute and relative grounds.

Question 29

ES - Length of opposition period.

Answer 29

2 months. The time limit begins on the date the Office publishes the international registration (in the Spanish Official Gazette).

Question 30

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

Answer 30

No. The Office examines international registrations on absolute grounds only.

Question 31

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

Answer 31

Yes. The Office examines international registrations on absolute and relative grounds.

Question 32

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

Answer 32

Yes. The Office examines international registrations on absolute and relative grounds.

Question 33

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

Answer 33

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 34

UK - The length of the period after which a mark can be revoked for non-use.

Answer 34

5 years after the date of registration.

Question 35

CN - The length of the period after which a mark can be revoked for non-use.

Answer 35

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.

Question 36

UK - Any maintenance requirements beyond paying a renewal fee.

Answer 36

No.

Question 37

CN - Any maintenance requirements beyond paying a renewal fee.

Answer 37

No

Question 38

JP - Length of opposition period.

Answer 38

2 months. The time limit begins on the date the Office publishes the international registration.

Question 39

JP - The length of the period after which a mark can be revoked for non-use.

Answer 39

3 years after the date of registration.

Question 40

JP - Any maintenance requirements beyond paying a renewal fee.

Answer 40

No

Question 41

US - Length of opposition period.

Answer 41

30 days after the date of publication. The opposition period is extendable up to 180 days after the mark is published (with cause). Time limit begins on the date on which the mark is published for opposition in the US Official Gazette.

Question 42

US - The length of the period after which a mark can be revoked for non-use.

Answer 42

3 years from grant.

Question 43

US - Any maintenance requirements beyond paying a renewal fee.

Answer 43

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.

Question 44

US - Any maintenance requirements beyond paying a renewal fee.

Answer 44

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.

Question 45

Section 8 of the Lanham Act. (15 United States Code, Section 1058) DURATION, AFFIDAVITS AND FEES - (a) Time periods for required affidavits

Answer 45

Each registration shall remain in force for 10 years, except that the registration of any mark shall be canceled by the Director unless the owner of the registration files in the United States Patent and Trademark Office affidavits that meet the requirements of subsection (b), within the following time periods:

(1) Within the 1-year period immediately preceding the expiration of 6 years following the date of registration under this chapter or the date of the publication under section 12(c).
(2) Within the 1-year period immediately preceding the expiration of 10 years following the date of registration, and each successive 10-year period following the date of registration.
(3) The owner may file the affidavit required under this section within the 6-month grace period immediately following the expiration of the periods established in paragraphs (1) and (2), together with the fee described in subsection (b) and the additional grace period surcharge prescribed by the Director.

Question 46

Section 8 of the Lanham Act. (15 United States Code, Section 1058) DURATION, AFFIDAVITS AND FEES - (b) Requirements for affidavit

Answer 46

The affidavit referred to in subsection (a) shall—

(1) (A) state that the mark is in use in commerce;
(B) set forth the goods and services recited in the registration on or in connection with which the mark is in use in commerce;
(C) be accompanied by such number of specimens or facsimiles showing current use of the mark in commerce as may be required by the Director; and
(D) be accompanied by the fee prescribed by the Director; or

(2)

(A) set forth the goods and services recited in the registration on or in connection with which the mark is not in use in commerce;
(B) include a showing that any nonuse is due to special circumstances which excuse such nonuse and is not due to any intention to abandon the mark; and
(C) be accompanied by the fee prescribed by the Director.

Question 47

Section 8 of the Lanham Act. (15 United States Code, Section 1058) DURATION, AFFIDAVITS AND FEES - (c) Deficient affidavit

Answer 47

If any submission filed within the period set forth in subsection (a) is deficient, including that the affidavit was not filed in the name of the owner of the registration, the deficiency may be corrected after the statutory time period, within the time prescribed after notification of the deficiency. Such submission shall be accompanied by the additional deficiency surcharge prescribed by the Director.

Question 48

Section 8 of the Lanham Act. (15 United States Code, Section 1058) DURATION, AFFIDAVITS AND FEES - (d) Notice of requirement

Answer 48

Special notice of the requirement for such affidavit shall be attached to each certificate of registration and notice of publication under section 12(c).

Question 49

Section 8 of the Lanham Act. (15 United States Code, Section 1058) DURATION, AFFIDAVITS AND FEES - (e) Notification of acceptance or refusal

Answer 49

The Director shall notify any owner who files any affidavit required by this section of the Director’s acceptance or refusal thereof and, in the case of a refusal, the reasons therefor.

Question 50

Section 8 of the Lanham Act. (15 United States Code, Section 1058) DURATION, AFFIDAVITS AND FEES - (f) Designation of resident for service of process and notices

Answer 50

If the owner is not domiciled in the United States, the owner may designate, by a document filed in the United States Patent and Trademark Office, the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the person so designated by leaving with that person or mailing to that person a copy thereof at the address specified in the last designation so filed. If the person so designated cannot be found at the last designated address, or if the owner does not designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark, such notices or process may be served on the Director.