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Trade Marks International
Trade Marks How
does it work?
How does it Work?
Country
of Origin
Processing
by the International Bureau
Requirements
for an International Application
Effect
of International Registration
Subsequent
designations
Renewal
Processing
Changing the ownership of an International Registration
Refusal*
of Protection
Why
an International Registration might be cancelled
Transforming
a cancelled International Registration
Country of Origin
An international application must be based on one or more applications or registrations
in a Protocol country where the applicant lives, carries on business or is of
that nationality. The international application must be filed through that country's
trade mark office. That office certifies the international application details
and trade mark are the same as on the national application or registration and
forwards it to the International Bureau (IB) of WIPO. The international application
must designate at least one Protocol country but not the country of origin.
Processing by the International Bureau
The International Bureau does not examine an International Application for
substantive matters. It undertakes a formalities check (including fees), indexes
device marks according to the Vienna Classification and classifies the goods
and/or services of the application according to the Nice Agreement.
If there are irregularities in the International Application, such as incorrect
fees or the official form was not used, the International Bureau will notify
the Office of Origin and/or the applicant, and will allow time in which the
irregularities may be corrected. If there are no irregularities or they are
overcome within the specified time, the International Bureau will register the
trade mark in the International Register, notify the Office of Origin and send
the certificate of registration to the holder. It will also publish the registration
in the WIPO Gazette of International Marks and send the details to all designated
countries.
Each Designated Country examines the International Registration
in accordance with its own trade mark legislation. If there are objections during
examination, or opposition is lodged, the designated country must notify the
IB, which in turn advises the International Registration holder. In these cases
the designated country may also insist that the holder reply through an address
for service in that country.
Requirements for an International Application
The application must be:
- filed through the Office of Origin;
- based on a registration or an application for registration filed with the
Office of Origin by the same person; AND
- must designate the Contracting Parties in which protection is sought.
An International Application must be based on an application for registration
or on a registration for the same trade mark in the 'home' country. It must
be filed through that country's Trade Marks Office which is known as the Office
of Origin. At least one Contracting Party must be designated in the International
Application. The Country of Origin cannot be designated.
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Effect of International Registration
From the date of filing of the International Application it shall have the
same effect as a national filing in each of the designated Contracting Parties.
Where no refusal is notified, or if refusal is withdrawn in a designated country,
the International Registration shall have the same effect as a national registration
in that country.
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Subsequent designations
Additional countries can be added to the International Registration later and
are called subsequent designations. This may happen when a holder's markets
expand or other countries join the Protocol.
- The IB and the designated countries treat the request for subsequent designation(s)
in the same way as original designations; ie the request is checked by the
International Bureau, then examined in the newly designated countries according
the laws of each country.
- The effective date for subsequent designation(s) is the date the request
for subsequent designation(s) is received by an office of a contracting state
or by the International Bureau.
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Renewal
One letter and one payment in Swiss francs will effect renewal of an International
Registration. Both the request and payment can be submitted through the office
of origin or lodged directly with the International Bureau.
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Changing the ownership of an International Registration
(Article 9 of the Protocol) A holder of an International Registration can request
in a single letter that all or part of that International Registration be transferred
to another party. There is also only one fee required to change the ownership
in all designated countries, compared to the existing system where you would
require different documents in different languages as well as different fees
in different currencies. The International Bureau can only record the change
of ownership of an International Registration in whole or in part where the
transferee is a person or entity entitled to file an International Application.
This means that the new holder must:
- have a real and effective business establishment in a Contracting Party,
or
- be domiciled in a Contracting Party, or
- have the nationality of a Contracting Party.
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Refusal* of Protection
- must be notified within 12 or 18 months from the date on which the International
Bureau notifies the contracting party that it has been designated
- must be based on grounds existing under the national law of the designated
country and must be permissible under the Paris Convention
* In Australia, provisional refusal under the Protocol is similar to a first
adverse report.
Each designated country must process the International Registration in accordance
with its trade marks legislation. Refusal can only be based on grounds of rejection
in the national legislation and permitted under the Paris Convention. If there
is a problem with the International Registration in any designated country,
that country will notify the IB of refusal within 12 or 18 months of the date
on which the IB notified that country of the designation.
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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:
- of the number of the International Registration
- of the name of the Holder
- of 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
- of the outcome of the proceedings
A basic application may lapse, be refused or withdrawn, or may become registered
for a narrower range of goods and/or services than originally applied for. A
basic registration may be removed because it was not renewed or because of a
non use action, or it may be cancelled or expunged by order of a court. If any
of these occur within the 5 year period the International Registration is cancelled
when the Office of Origin notifies the International Bureau.
The IB records the notification from the Office of Origin 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 effected by the cancellation.
Note: The International Registration is also cancelled after
the end of the 5 year period if the relevant proceedings, for example non-use
or court action, commenced before the end of the 5 year period.
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Transforming a cancelled International Registration
Within 3 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.
Providing the transformation application is made within the 3 month period,
the national application will enjoy the filing date of the International Registration
together with any convention priority that was relevant for that designation.
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