Refusal of protection
Provisional refusal under the Protocol is similar to a first adverse report in an Australian application.
Refusals of protection:
- must be notified within 12 months or within 18 months from when the International Bureau (IB) notifies the contracting party that it has been designated. Each designated country must process the international registration in accordance with its trade marks legislation.
- must be based on grounds existing under the national law of the designated country
- must be permissible under the Paris Convention.
- If there is a problem with the international registration in any designated country, that country will notify the International Bureau (IB) of refusal within 12 months or within 18 months from when the IB notified that country of the designation.
Each designated country must process the international registration in accordance with its trade marks legislation.
Why an international registration might be cancelled
The international registration is dependent on the basic trade mark for five years from the date on which the International Application was filed. The office of origin must monitor the basic trade mark during that period and notify the International Bureau if it ceases to exist, either in part or in full.
They must also inform the International Bureau:
- the number of the international registration
- the name of the holder
- the facts and decision affecting the basic trade mark
- whether only some of the goods and/or services are involved
- if and when (within the five-year period) any proceedings begin, which may result in a ceasing of protection
- the outcome of any proceedings.
A basic application may:
- be refused or withdrawn
- become registered for a narrower range of goods and/or services than originally applied for
- be removed because it was not renewed
- be removed because of a non-use action
- be cancelled or expunged by order of a court.
If any of these occur within the five-year period the international registration is cancelled when the office of origin notifies the International Bureau.
The IB records the notification and cancels the international registration 'to the extent applicable'. The International Bureau also notifies the holder and all designated countries of the cancellation. That notification includes the date on which the international registration was cancelled and the goods and/or services affected by the cancellation.
Note: The international registration is also cancelled after the end of the five-year period if the relevant proceedings, for example non-use or court action, commenced before the end of the five-year period.
Transforming a cancelled international registration
Within three months from the date of the cancellation, the holder of the cancelled international registration can apply for a national application in any or all of the designated countries.
The national application must be for the same trade mark and goods and/or services covered by the cancelled international registration. Any national fees must be paid and the application must comply with the laws of each designated country.
If the transformation application is made within the three-month period, the national application will have the filing date of the international registration and any convention priority that was relevant for that designation.
Last Updated: 06/12/2012