Trade marks manual

International examination guide

Section last updated: August 2018.

1. Introduction

1.1 Purpose of this guide

The purpose of this guide is to explain procedures for registering and processing marks under the International System, utilising the Protocol to the Madrid Agreement. It also gives an overview of the European Union Trade Mark (EUTM) system and the role of the Intellectual Property Office in relation to EU marks.

The guide indicates to examiners the procedures to follow when examining a mark filed under the international system. The registrability of a mark is determined in the same manner as for a mark filed under the national system applying the judgements and decisions from a variety of sources including, in particular the European Courts of Justice (ECJ), Court of First Instance (CFI), UK Courts and the Appointed Persons and is not covered in this guide. For further information on registrability issues please refer to The Examination Guide.

1.2 Role of the UK Office

The office is responsible for:

  • receiving, examining and processing through to the final outcome, international trade marks which designate the UK under the Protocol to the Madrid Agreement
  • receiving, checking and certifying, forwarding and administering new international applications filed under the Madrid Protocol which are based on UK national trade marks
  • updating our records to reflect changes to the details of international registrations, where those details are relevant to the UK
  • receiving trade mark and/or design applications on behalf of the EUIPO and forwarding the applications to Alicante, Spain. Certifying requests from trade mark and design practitioners for entry onto the EUIPO list of professional representatives
  • providing information and advice to colleagues and customers regarding aspects of the international system

2. The International Trade Mark (Madrid) System

2.1 Background to the Madrid System

The Protocol to the Madrid Agreement was introduced in 1989 with a view to generating new interest in international trade mark registration. The Agreement and the Protocol together form the “Madrid System”. The system is administered by the International Bureau at the World Intellectual Property Organisation (WIPO) which is based in Geneva, Switzerland.

The United Kingdom ratified the Protocol in December 1995 and it came into force on 1 April 1996. Holders of UK trade marks may use the system to gain protection for their marks in one or more member countries of the Protocol. Similarly, holders of marks in other Protocol member countries can use the system to apply for protection in the UK.

Reference in this section to “Articles” refers to the Articles of the Protocol. Reference to “Rules” refers to the Rules listed in the Common Regulations under the Madrid Agreement and the Protocol to that Agreement.

2.2 Basic Requirements for using the Madrid System

Filing criteria

The applicant must be able to meet one of the following three criteria to be eligible to file through the international system:

Art. (2)(1)(i)

  • be a national of one of the Protocol member countries; or
  • be domiciled in one of the Protocol member countries; or *have a real and effective business or commercial establishment in one of the Protocol member countries

The question whether a person has a real and effective commercial undertaking is determined under national law. In the UK we would not accept a PO Box or something that would suggest that a persons’ establishment is only temporary.)

Requires a UK application/registration

To use the Protocol, applicants must also have a national trade mark application or registration in one of the Protocol member countries. This national mark will be used as the basis of the international application. The international application will cover the same trade mark and a list of goods and services identical or no wider than that of the basic (national) mark. The international application will designate one or more other Protocol member countries, these being countries where the applicant would like to protect his mark.

Through the Office of Origin

The international application must be filed via the national trade mark office where the basic mark is held. This national office is referred to as the “Office of Origin” of the international application (see Art. 3). The Office of Origin is required to certify that the international application falls within the scope of the basic mark, following the criteria described above. The application can then be passed to WIPO.

WIPO formalities check

At WIPO a formalities check of the application will be carried out and the mark is translated into the three languages of the system, English, French and Spanish. The mark will then be registered and the details of the registration will be published in the International Gazette. A copy of the Gazette advertisement will be forwarded to the national trade mark office in each of the member countries where the applicant of the mark seeks protection (see Art. 5(2)). Each country will examine the mark according to their national systems and must inform WIPO within a set time limit whether or not the mark may be protected in that country. Notifications of provisional refusal in designated contracting parties will be published in the International Gazette and also forwarded to the applicant for the mark.

Advantage of the Madrid System

The advantage of using the Madrid system is that applicants may protect their trade marks in several countries simultaneously by means of a single international application filed at their own national trade mark office. For trade mark owners based in the UK, there is the added benefit that the international application may be completed in English which is one of the working languages of the system (the others being French and Spanish).

UK as an Office of Origin Filing an international application

Art. 2(2)

The UK Intellectual Property Office acts as “Office of Origin” for international applications that are based on existing UK trade mark rights. The international application must be filed via the Intellectual Property Office in order so that we can perform the certification checks required by Article 3 of the Protocol.

The application form

Art. 3(1)

International applications must be made on the official form MM2, which can be downloaded from the WIPO website. The form must be completed in typescript. An original representation of the mark must be placed in the box on the form. If the mark is to be applied for in colour, or colour is to be claimed as one of the essential features of the mark, then a colour representation should be attached. Representations of the mark must be no larger than 8 cm by 8 cm and must be placed in the box on the form. It is not acceptable to attach representations of the mark to the back of the application form.

If the European Union is designated and the applicant can claim seniority from a prior registration within the European Union, then a form MM17 must be completed.

If the United States of America is included amongst the designations, form MM18 must be filed at the same time as the application form. This is the “declaration of intention to use” the mark in the USA and is a legal requirement. If the form is not filed with the application, an irregularity will be raised and this could lead to delay in the processing of the application.

The Intellectual Property Office only handle the MM17 and MM18 forms when filed with the form MM2. If the forms are not filed with the MM2 the applicant will need to send these forms to WIPO directly.

The application form must be sent to the Intellectual Property Office, together with a handling fee sheet (Form FS4) and handling fee. New international applications are received by Finance Section, who allocates a filing date. The international application is then sent to the Trademarks International Section to process the application.

Filing date

Art. 3(4)

The Office of Origin is responsible for certifying, amongst other things, the filing date of the application. Applications must be passed to WIPO within two months if they are to retain the date of filing at the national office as the official filing date. If problems are encountered and the Office of Origin is unable to certify the case and forward it within the two month deadline, then the case will be given the date on which WIPO receives the application as its filing date.

The filing date will, on registration of the mark, become the international registration date. Rights acquired by protection of the mark will run from this date.

Certification by UK Office

Art. 3

One of the criteria for using the system is that the applicant must hold trade mark rights, either as an application or a registration, in one of the member countries of the system. The international application will be based on these national rights. The certification procedure is to ensure that each international application meets this criterion. Article 3 of the Protocol states:

The Office of origin shall certify that the particulars appearing in the international application correspond to the particulars appearing, at the time of the certification, in the basic application or basic registration, as the case may be.

Rule 9(4)/9(5)

The particulars that should, or may, appear in an international application are listed in Rule 9. The certification process may be summarised as a check that:

  • the same applicant, should be applying for
  • the same mark, (in all aspects!) in respect of
  • the same or no wider goods and services than are covered by the basic mark

There is no provision under the Madrid system to register a series of marks. If an international application is to be based on a UK series mark, then the applicant will be asked to choose one of the marks in the series to act as the basis for his international mark. The chosen mark will be the mark which is registered internationally. If an applicant wishes to register all the marks in his UK series internationally, he must file a separate application for each one. Similarly, if an international application is to be based on a mark where colour has been claimed, then the international mark must be in colour. As indicated above, the rights in the international application must be the same as or no wider than those of the basic mark.

The certification check is not an examination of the application or of its acceptability. This check is simply to ensure that the applicant meets the entitlement criteria and has a mark in one of the member countries of the Madrid system. The certification check does ensure that the application form contains all the information necessary for the case to be given a filing date. If information is missing we cannot forward the case to WIPO.

If for any reason the application does not meet the criteria for filing, we will contact the applicant or his representative and explain the problem. In cases where the applicant is seeking to protect a list of goods or services which is wider than that of his basic mark, we will confirm that the international application exceeds the scope of the basic mark (see Art. 3(4). Any problem with the application prevents the certification of the case and, if the applicant is not to lose his filing date, must be resolved within the two month deadline for passing the case to WIPO.

When everything is in order and the case has been certified, we will forward the application electronically to WIPO.

Formalities Checks taken at WIPO

The International Bureau of WIPO is a paperless office. All documents received by the office are scanned into their electronic system and assigned an internal working number. Figurative marks are scanned separately using a colour scanner.

Rule 9(5)/9(6)

New applications receive a formalities examination. WIPO checks that all filing requirements have been complied with, that the classification of the goods and services listed on the application form is correct and that all appropriate fees have been paid.

This is not a check as to the validity or acceptability of the mark but simply a formalities check.

Irregularities

Rules 11-13

If WIPO finds irregularities in an application, both the applicant, or their representative, and the Office of Origin of the mark will be contacted. WIPO will highlight the problem and set a three month deadline for response. This deadline cannot be extended.

Rules 11, 12 and 13 of the Common Regulations cover fees and filing deficiencies, classification and vague terminology respectively. Fee irregularities may be dealt with directly by the applicant.

Additional Class Fees

If the irregularity related to a reclassification of certain goods and services, WIPO may insist upon adopting their own proposal for reclassification of those goods and services and may require additional fees. If an irregularity is not responded to within the time allowed or if the additional fees are not paid, the international application will simply be abandoned. For irregularities relating to vague wording, WIPO will publish the wording but with a proviso that they consider the wording to be too vague for classification purposes. It is then left to individual designated contracting parties to object to the wording.

Non-extendable Time Limits

The time limit given for responding to letters of irregularity is non-extendable. It is therefore imperative that applicants or their representatives respond to us in good time so that we can send these responses to WIPO before the deadline.

Reply through the Office of Origin

If the irregularity may only be put right by changing the content of the application, then the irregularity letter must be responded to by the Office of Origin. Responses sent directly from the applicant or their representative to WIPO will be disregarded even if they contain a clear response to the irregularity raised. This is because such responses do not comply with Rule 11. It should be remembered that international applications are based on national trade marks. It is the job of the Office of Origin to ensure that any amendments to international applications are within the scope of the basic mark.

Registration

Once the formalities check is complete, the application will be registered and assigned an international registration number. It will be published in the International Gazette. A certificate of registration will be sent to the holder. At this point the mark has achieved registration but is not yet protected in any of the designated contracting parties. A copy of the Gazette publication of the mark will be sent to each of the countries where the holder requested protection. Each country will then examine the mark according to the national system in that country and will notify WIPO whether or not the mark may be protected in that country. Details of this procedure can be found on WIPOs website.

2.3 Post-Registration Matters - Ceasing of effect and cancellation

Ceasing of Effect during dependency period

If a basic mark is cancelled, refused, successfully opposed, withdrawn, or the rights cease for other reasons, then WIPO must be informed. We will send a letter to WIPO giving details of the extent (total or partial) to which the basic mark has ceased to be valid. This letter may also request WIPO to cancel the international mark either in part or in totality. As previously noted, an international registration is based on a national trade mark for a period of five years. It may not be wider in scope than the mark upon which it is based. Hence, if the basic mark narrows in scope or ceases to be valid, then this must be reflected by the international registration.

We will write to WIPO who will then inform all interested parties of any change in the scope of the international mark or of the cancellation of the mark. This information is also published in the International Gazette. In the UK, national marks which are the basis of an international application are flagged on UKTM which alerts us of any changes to the basic mark and the need to review the matter and inform WIPO of any changes necessary to the international registration.

Central attack

If anyone wishes to attack an international registration, this may be done in two ways:

  • they may oppose individual designations in individual member countries, by following the national opposition or invalidation procedures of that country; or
  • if the mark is still within its five year dependency period, it may be possible to attack the basic mark

If the attack is successful, the basic mark will die and the entire international application, in all designated contracting parties, will have to be cancelled. Thus by attacking the base on which the international registration relies; it is possible to completely topple the international trade mark rights.

Dependency

Art. 6(3)/(4)

Each international application is, as noted above, based on one or more trade mark applications or registrations in the country of origin of the application. It is the duty of the Office of Origin to monitor these marks for a period of five years from the date of the international registration. Any “ceasing of effect” of the basic mark, whether it is total or partial, will have an effect on the international registration. The Office of Origin is responsible for notifying WIPO of changes to the basic mark during this five year period. If the international application is based on an UK application which never reaches registration, then the international case will be cancelled. It is possible that an international application may become registered before the national application upon which it is based. Even so, if the basic application is refused or cancelled for any reason, the international application will also be cancelled.

Other changes to the status of the basic application or registration which will affect the international application include successful opposition of the basic application or rectification or invalidation of the basic registration. Article 6(2) states that the international registration is dependent on the basic mark for a period of 5 years from the international registration date. Actions taken on the basic mark after this date will not affect the international mark unless action resulting in changes to the basic mark was begun before the five years expired.

Renewal

Art. 7

An international mark is valid for a period of ten years from the date of registration (see Art. 7(3)). WIPO will send an unofficial reminder to the holder of the international mark approximately six months before the mark is due for renewal. This reminder will also be copied to the holders’ representative in the country of origin of the mark, together with a copy of the renewal form. Renewals should be sent directly to WIPO,

A request to renew an international registration may be sent to WIPO up to six months before the renewal date. However, holders should be aware that if they file a request for renewal more than three months in advance of the renewal date and the fees are changed before the renewal date, they will be expected to pay the new fee. Requests for renewal may be filed in the form of a letter or by using the official renewal form MM11, which can be printed from the WIPO website. It is important to ensure that WIPO receives the renewal fee before the due date. A request for renewal cannot be actioned without the necessary fee.

It is possible to renew international trade marks for six months after the expiry of the registration. However, if renewal requests are filed in this six month “grace period” a surcharge will be added to the renewal fee.

Replacement

Art. 4bis

An international registration may replace an existing national registration in any designated contracting party. To be eligible to replace a national mark, the international designation must:

  • be in respect of the same mark
  • be held by the same holder
  • cover all the goods and services covered by the existing national mark

The international designation must also have been granted protection in the relevant country (see Art.4(bis)(2)). Replacement is deemed to happen automatically if the above criteria are met. However, it is only recorded by a particular country if a request to record is made. Holders of international marks which have designated the UK who wish these designations to be recorded as replacing their existing national rights in this country, must ask us to record this fact by filing form TM28. We will examine the request to check that it meets all the relevant criteria as defined above and we will include these details on UKTM and MPS, indicating its link with the international case. When the national mark is due for renewal the holder may then choose to let his national registration lapse. His trade mark rights will continue embodied in the international registration.

Subsequent Designation

Art. 3ter

At any time after registration the holder of an international mark may apply to add to the list of countries where his mark is protected. Such territorial extension of an international trade mark is referred to as a subsequent designation.

Rule 24(1)(a)/Rule 24(2)(b)

The holder of the international mark can file a subsequent designation - complying with the criteria laid down in Article 2 of the Protocol - using the official form MM4, which can be printed from the WIPO website. The form must be filed directly to WIPO.

Art. 3ter(2)

WIPO examine the application for subsequent designation. Irregularities will be brought to the attention of the holder of the mark. A non-extendable three month deadline for response is set. Once the formalities check is complete, the subsequent designation will be registered and the details published in the International Gazette. Details of the designation will be passed to each of the newly designated contracting parties. The mark will be examined in each new country and WIPO will be notified whether the subsequent designation can or cannot be protected in that country. The rights in each new country will run from the date of the subsequent designation. A subsequent designation is not a separate international mark. It is simply a means to add countries to an existing international registration. The international mark must be registered if a subsequent designation is to be made. The protection gained in the new countries will only run until the international registration is due for renewal. If the subsequent designation is filed nine-and-a-half years into the ten year life cycle of the international mark, the mark will only be protected for six months in the new countries. For this reason, most subsequent designations are made shortly after the registration or shortly after the renewal of the international mark.

2.4 UK as a Designated Contracting Party

In the same way that holders of UK Trade Marks may use their national mark as a basis for an international registration seeking protection in other member countries of the Protocol, so holders of marks in other Protocol member countries may use their national rights as a basis of an international registration designating the UK. Article 3(4) and Rule 14 of the Common regulations states that once an international mark is registered:

The International Bureau shall notify the international registration without delay to the Offices concerned.

Receipt of Designations

We receive notification from WIPO on a weekly basis of new international marks seeking protection in the UK. The information is received in electronic format via our electronic filing system, MPS.

We are required to inform WIPO within 18 months of the notification date whether each mark can be protected in the UK. We issue a provisional decision to WIPO at examination stage if objections are raised against the mark and follow this up with a final decision once all proceedings before this office, including any appeals to the courts, have been completed. WIPO forward all letters from us relating to the international designation to the holder, or their representative, of the mark.

Examination of designations at the UK Office

International designations under the Madrid Protocol are examined under the Trade Marks Act 1994 in exactly the same way as national applications. Examination procedures are described in The Examination Guide. New international designations are examined to ensure they comply with the Act, and searches of the UK Trade Mark Register are carried out to check for earlier rights.

The nature of the Madrid system is different from that of our own national registration system. Two main differences become evident when administering the system:

  • the status of international trade marks in the UK; and
  • the communication chain between the Intellectual Property Office and the holder of the mark

Status of international trade marks

International designations are already registered status when we receive them, having been placed onto the International Register prior to publication. This means that in practice:

  • there are limitations on what action may be taken on the case; and
  • the vocabulary, when working with international marks, differs from that associated with domestic applications.

Limitations on action

The limitations when dealing with an international designation fall into two categories • issues relating to formalities of trade mark examination • issues relating to the communication of information

Issues relating to formality checking of designations

The Trade Marks (International registration) Order 2008 specifically excludes international designations from the parts of the Act which relate to examination of formalities. Examination of international designations does not include a check that filing requirements are met or that the representation of the mark and the classification of goods and services are acceptable. These aspects have already been checked and the mark has been found to be acceptable for international registration before it is sent to the UK.

Issues relating to the communication of information

International examiners may not always communicate directly with the holder of the international designation, but must pass certain information through WIPO. Under the Madrid system, national offices must inform WIPO of any action that may affect the scope of protection of a mark within that country. WIPO pass this information to the holder or his representative as well as to all other countries involved with the mark. The information is also published in the International Gazette.

Vocabulary used in respect of international marks

When international designations reach the UK they are already registered status. It is therefore necessary to adopt a new vocabulary when dealing with international designations. A glossary of terms used in relation to international trade marks is at the back of this guide.

The Examination Procedure

International designations to the UK are subjected to the same examination procedure as new national applications. They are tested under Section 3 of the Trade Marks Act 1994 and searches are carried out to identify any earlier rights that are thought to be similar to the designation (Section 5 of the Trade Marks Act 1994). Examiners carry out examination of international marks using ACSEPTO and MPS systems, which records all findings.

Important Differences

An important difference between the international and domestic examination procedures is that international examiners do not send a report of the examination directly to the holder of the designation (see Art.5) where a substantive objection under Section 3 is raised. If objections are found, a letter of provisional refusal is sent to WIPO. This will then be forwarded to the holder by the International Bureau once the Bureau has recorded the information on the international register. Where examination of the designation finds only earlier rights issues, information regarding any conflicting earlier rights is sent directly to the representative before WIPO, or if there is not one recorded, to the holder.

Possible outcomes of examination

Examination of international designations has four possible outcomes:

  • acceptance of the mark for all goods and services; or
  • provisional total refusal of the mark, i.e. refusal of the mark for all goods and services; or
  • provisional partial refusal of the mark, i.e. objections are raised in respect of some but not all of the goods and services listed on the application, or
  • information regarding earlier rights, i.e. earlier rights have been identified which conflict with the mark for some or all of the goods/services of the designation

Whilst the examination process mirrors closely that for domestic applications, there are certain differences in administration which are necessary simply because International Section are dealing with trade marks which have already been registered. These differences are detailed below.

Acceptance of designations

If an international designation is found to be acceptable at examination stage, then the case will be forwarded directly for advertisement in the Online UK Trade Marks Journal. There is no requirement to notify WIPO regarding the case at this point. The holder/representative before WIPO will be notified of the publication of the International Registration.

International designations are published in the Trade Marks Journal and the marks are open to opposition in the same way as national marks.

Administrative Differences in examination procedure

Collective/Certification/Guarantee marks

International applications may be filed as a collective, certification or guarantee mark. The international application form does not distinguish between the types of mark and we will receive notification of the designation with the statement reading: collective/certification/guarantee mark.

Designations for collective/certification/guarantee marks are examined in the same manner as international trade mark designations. However, in all cases it will be necessary to raise a ‘provisional total refusal of protection’ for the case to be sent to WIPO. The reason for this is that for UK examination purposes, we can only accept marks as either a collective or certification mark. We do not accept guarantee marks. Therefore the holder needs to specify the type of protection applied for and they should therefore be requested to confirm this. It is also a requirement of Schedules 1 and 2 of the Trade Marks Act that a copy of the regulations governing use of the collective or certification marks are filed. The letter will request filing of form TM35 and fee together with the filing of the regulations.

Any other objections raised against the mark, such as Section 3(1)(b) or (c) objections or earlier rights, must be dealt with before the international file is examined under Schedule 1 or 2 of the Trade Marks Act 1994.

Priority claims

A claim to International Convention priority appears as a simple statement on the notification of a new international designation. The date should be checked and if this is within six months of the filing date, the claim to priority may be accepted.

The rapid processing of domestic applications may lead to a circumstance where a domestic mark, with a later filing date, has already proceeded to advertisement and even to registration before the receipt of an international designation, which has an earlier priority date.

When a conflicting domestic mark with later filing date is discovered in the course of searching for earlier rights, then the status of this mark should be considered. If it has not yet proceeded to advertisement, then the domestic examiner should be informed in order that the international mark may be raised as a late notification of an earlier right. If the domestic case has already been advertised or registered, then no action can be taken against it. The international designation, having earlier rights through priority or filing date, may also proceed.

Publication of descriptions

Descriptions filed by applicants will appear in the Trade Marks Journal advertisement for the case.

Section 3(1)(a)

WIPO examine and register representations of marks and hence there should be no reason to object to a representation of a mark. However, there are times when an objection under Section 3(1)(a) of the Act is unavoidable. It may be that it is not possible to examine the mark from the representation provided. This may be, for example, because the holder claims that the mark is three-dimensional but it is not possible to ascertain this from the representation, or the mark may consist of a graphic representation and a description but the description does not match the representation provided.

Specifications listing ‘retail services’

The Trade Marks (International registration) Order 2008 excludes international designations from the provisions of Section 34 of the Trade Marks Act 1994. Hence, it is not possible to raise the same objections to the wording of specifications listing ‘retail services’ as are raised by domestic examination units.

International designations which include a reference to ‘retail services’ or other wording which indicates retail services will be subject to objection under Section 1(1) and Section 3(1)(a) of the Act “…because such claims do not clearly identify the services within the meaning of Section1(1)” . Holders will be given the option to overcome the objection by defining their area of interest more precisely.

The objection may be overcome by adopting the wording for definition of retail services which is given in the Class 35 heading of the Nice Classification Index, together with a statement of the manner of providing the service and the goods of interest, for example:

Retail services connected with [indicate goods or type of services]

Retail services connected with the sale of [indicate goods or type of services] Mail order retail services connected with [indicate goods or type of services]

The bringing together, for the benefit of others, of a variety [indicate goods or type of services] enabling customers to conveniently view and purchase those goods.

The bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods from a clothing and accessories catalogue by mail order or by means of telecommunications.

Further guidance on this issue can be obtained by consulting Classification Section at the Trade Marks Registry.

Three-dimensional marks

If a mark claims three dimensions, then it must be clear from the representation what those dimensions are. If the three dimensions are not clear, the mark will be open to objection under Section 3(1)(a), as described above. There are no hard and fast rules as to how many representations of a mark are necessary to establish three dimensions. This will depend on the mark. WIPOs requirement that the international mark must be fitted into a box 8cm x 8cm on the application form should also be remembered. This requirement may restrict the number of representations of a mark that a holder can provide.

UK Clauses

International designations may include any amount of information relating to the mark. Clauses include descriptions of the mark or three dimensional claims. If the written information does not match the representation given, then the mark will be open to objection under Section 1(1) and 3(1)(a) of the Act. For example, a clause may indicate that colour A is claimed, but the representation of the mark shows it in colour B.

Similarly, in cases where three dimensions are claimed but the representation only shows two dimensions, it may be necessary to raise an objection.

Vague terms in specifications

Generally, these should be left. The term has already been accepted by WIPO. However, it may be that a term gives us absolutely no idea what the goods or services being described actually are, to the extent that it is not possible to examine the case in respect of those goods/services.

Rule 13 of the Common Regulations allows WIPO to object to vague terms in specifications. This objection will be raised prior to the registration of the international mark and a time limit for clarification will be set. However, if the holder does not clarify the term within the time allowed Rule 13(2)(b) will apply. This states that if the Office of Origin has classified the term then WIPO will include it in the international registration, albeit with an indication that the term is considered too vague. Thus, we may receive designations with the phrase ‘terms considered too vague by the International Bureau (Rule 13 (2)(b))’ appearing in one or more specifications of goods or services.

Where WIPO have objected to the term and we also consider it to be too vague we will query it. The query should be raised under the heading ‘Specification’ and should state that “…the following term is considered too vague for the purposes of examination. Please clarify this term”. If no other objections have been raised then a partial refusal may be offered, deleting the objectionable term and allowing publication of the acceptable terms within the specification.

Wrongly classified terms in specifications

On occasions, it may appear that a term listed in the specification of goods or services for an international designation has been wrongly classified. Classification of international trade marks is checked at WIPO prior to the international registration of the mark. The classification has been accepted and should not be queried post- registration except on the rare occasion when there has been a mistranslation from the original French or Spanish list. Occasionally, where goods and services appear to have been wrongly classified, investigation may reveal that the queried term has in fact been mistranslated. The language of the original international application can be found on the paper that notifies us of the new designation. French or Spanish versions of specifications can be found on Madrid express. If a mistranslation is spotted, a brief telephone call to the International Bureau is sufficient to arrange a correction of the translation in order that the queried terms are accurately represented in English and in the correct class.

Conflicting Earlier Rights

Where the designation is found to be acceptable under Section 3 and no issues are identified in relation to the specification, but a search of the ACSEPTO has identified earlier conflicting marks, then the holder will be informed of the conflicting marks. As earlier marks are not an official objection and are provided for information, but do not prevent the designation from proceeding to advertisement, under the rule of the Protocol it is not necessary to inform WIPO. (See also Notifications in Examination guide).

Information regarding earlier marks is sent directly to the holder, or their representative. Any amendments to the specification submitted to avoid the need to notify earlier mark, must be filed on form MM6 and sent direct to WIPO. The holder is requested to confirm they have filed the MM6 with WIPO. We will then suspend the designation to await confirmation from WIPO that they have restricted the designation.

Corrections received from WIPO

Under Rule 28 of the Common Regulations, where the International Bureau of WIPO considers that there is an error in the information recorded on the register, it will correct that information. Corrections may be initiated by the holder of the mark, by a national office or by the International Bureau itself. They may be corrections to any part of the information originally provided and may widen the scope of the specifications originally filed or even change the mark (see Rule 28(3)). However, requests by national offices to correct the international register must be made within nine months of the date of publication of the relevant information. The 18-month time limit, within which we are required to issue any refusal of protection for a case, starts from the date on which we are notified of the correction.

Corrections which limit the scope of a mark can be actioned. However, if a correction makes the case wider or changes the mark from that originally received, then the case will need to be re-examined in respect of the corrected information. If new goods or services appear in a correction then the case will be re-examined for those goods/services.

If the correction relates to a change in the substance of the mark itself, then it will be necessary to halt the progress of the original case and restart the examination procedure with the new mark. In such cases the date on which we are notified of the correction will become the new protection date for the case. If the case has already been advertised and the mark is changed, then it will be necessary to withdraw the advertisement, so that the case can be re-examined and re-advertised in respect of the amended mark. It is important to note that in these circumstances the 18-month period commences from the date of sending the notification of correction to the Registry.

It may be that a notice to correct a mark is received after that mark has been protected in the UK. Corrections that widen the coverage of the protected mark will be considered and treated as a subsequent designation. Any rights in the additional goods will derive from the date of notification of the correction.

Irregularity letters in respect of Examination issues from WIPO

Rule 18

In order for WIPO to accept letters refusing protection of a mark, these letters must contain certain information as listed in Rule 17. If our refusal letters do not comply with Rule 17, WIPO will send us a letter of irregularity pointing out the error. WIPO will send the holder our refusal letter and a letter explaining that they consider our refusal to be irregular and that if the irregularity is not corrected within two months then they will not regard our refusal to protect the mark as valid. Thus, the holder of the mark need do nothing about our refusal until they see whether the irregularity is to be corrected.

It is the responsibility of the examiner dealing with the case to correct the irregularity. The refusal letter is re-issued ensuring that the missing information is included. The re- drafted letter should include a statement to say that it is issued in response to an irregularity letter and that it totally replaces the earlier refusal letter. The examiner should set a new reply by date.

An irregularity should be corrected within two months. A deadline for receipt of the correction is normally given in the WIPO letter. However, irregularity letters must be dealt with as a matter of priority in order to ensure that all deadlines are met.

Provisional Refusal of Protection

Art. 5(1)

If examination of an international designation produces objections under absolute grounds, then that mark will be provisionally refused protection in the UK (see Rule 17). This refusal of protection must be communicated to WIPO. The refusal letter must contain certain information. In particular, paragraph (2)(vi) of Rule 17 states that if the refusal does not cover all goods/services, then the letter should indicate which goods/services are or are not affected by the refusal.

Provisional Total Refusal

A total refusal of protection may be raised under absolute grounds. The mark itself may be open to objection under Section 3 of the Act for all goods/services listed in the application. A letter is sent to WIPO to explain that the mark is provisionally being refused protection. This is headed with the words ‘Provisional Total Refusal’ states in the first paragraph that the refusal is for all goods and services. The letter details the grounds for refusal of protection of the mark and may include information regarding any earlier rights that are deemed to conflict with the designation.

WIPO records the information contained in the letter and then forwards it to the holder of the international mark or to his representative. The holder of the mark can make representations, within the time limit set by the designated office, against the provisional refusal of protection.

Provisional Partial Refusal

This refusal may also be raised on absolute grounds. The difference is that the objections raised will not be for all goods and services. There will be some goods or services for which the mark may be accepted. This will occur, for example, if an objection is raised against one class of a multi-class designation. The case may be protected for the classes of goods or services not affected by the objection. As above, it is made clear in the letter which International Section despatch to WIPO that the designation is only being refused protection in respect of certain classes. The letter will be headed ‘Provisional Partial Refusal’. Again the letter will detail the grounds and the relevant Class where refusal of protection of the mark is raised. It may also include details of any earlier rights that are deemed to be in conflict with the designation. A deadline for response is given, to allow the holder to make representations against the partial refusal of protection, if he so wishes. The letter will be sent to WIPO in order that the information it contains may be recorded in the International register. WIPO will then forward the letter on to the holder of the mark or his representative. An International registration may not be divided to overcome objections in the same way as national marks.

Time limits for raising objections by the UK Office

Art. 5(2)

Any member country of the Protocol has the right to refuse to protect an international mark within its territory. However, this refusal must be received by WIPO within a given time limit. For the United Kingdom, this time limit is 18 months from the date on which WIPO notified the UK of the new designation. A refusal letter may be reissued, for example, to correct an irregularity, provided that the case is still within the 18 month time limit.

Objections raised against a mark can of course be resolved through correspondence. However this takes time and may take an international designation beyond its 18 month time limit.

An opposition is a reason for total refusal of a case and a new provisional refusal letter must therefore be sent to WIPO. If this is sent after the 18-month deadline, it will not be accepted unless WIPO has been informed before the 18-month deadline that there is a possibility that late oppositions may be filed.

Art. 5(2)(c)(i)

Article 5(2) requires that in cases where an outcome will not be finally resolved within the 18 month period allowed, WIPO is informed before the end of the 18 months that it is possible that oppositions will be filed against the case after the 18 months. Rule 16(1)(b) requires that WIPO is informed of the start and finish dates of the opposition period, as soon as these are known. Thus, as soon as it becomes clear that a case is not going to be finally resolved before the end of the 18 month period, WIPO is informed of the possibility of late oppositions. This is done automatically with a computer- generated letter. Correspondence rounds may then be continued and the objections resolved, without fear of incurring problems with WIPO at a later date.

Post Examination

Possible action following a provisional refusal.

The holder of an international designation that is provisionally refused protection in the UK may choose to make representations against that refusal. Representations may take the form of:

  • written submissions from representatives
  • request for more time
  • filing of evidence of use of the mark in the UK
  • request for a hearing

A hearing to discuss the case may be held before a senior officer at the Trade Marks Registry by telephone, video conference link or face to face; the former two options are preferred by the Registrar.

Where problems are small and a simple agreement to a proposal will allow the case to proceed, the holder may write directly to the examiner dealing with the case. However, an address for service in the EU, Channel Islands or the European Economic Area (EEA) is required.

Appointing an EU, Channel Islands or EEA based representative

To appoint a representative, complete a form TM33 with the relevant details. A copy of the form may be downloaded from our website. Once form TM33 has been completed and forwarded to the office, the details of the representative will be updated.

It should be remembered that the UK representative can be different to the representative acting before WIPO in respect of the case. The UK representative will be responsible for all action carried out on the case before the Intellectual Property Office.

This includes responses to correspondence, attendance at hearings and requests for extensions to time deadlines. However, requests to change the substance of an international registration, such as changes to the holders’ details or limitations to the goods or services, must be filed via WIPO. It may be necessary for the holder of the mark or his representative before WIPO to file the official forms requesting these changes.

Appeal Period for response to the provisional refusal

A letter provisionally refusing protection of an international mark in the UK usually carries a two month period for response in respect of an absolute grounds objection. If the holder of the mark wishes to appeal against the refusal he must ensure that he contacts the Intellectual Property Office by the date given for response. If nothing has been heard from the holder by the deadline, then the case must be allowed to continue to its outcome.

Failure to respond

If the holder does not respond within the set time period, there are two possible ways forward at this point.

Proceeds in respect of some of the Goods/Services

Rule 17(2)(vi)

If a Provisional Partial Refusal letter was issued at examination stage, this will have listed those goods and services for which the mark could be accepted. If nothing is heard by the deadline for response, cases subject to provisional partial provisional refusal will be advertised in respect of those goods and services not affected by the provisional refusal.

Refused in respect of all goods/services

Rule 17(5) (a) (i) If a provisional total refusal letter was issued at examination stage and nothing further is heard, then the refusal will become final.

Final Refusal of the designation in the UK

Rule 17(5) (a) (i))

Total final refusal of a designation occurs in two circumstances: either there has been no response to original provisional total refusal, or there has been an exchange of correspondence and possibly a hearing, but the objections raised have been maintained.

If a form TM33 has been filed and a representative has been appointed, a refusal letter will be issued providing one month for the filing of Form TM5. If no TM5 is filed the provisional refusal of protection issued at examination stage will become final.

If the provisional refusal is appealed by filing form TM5, a statement of grounds will be issued. A month is allowed for receipt of any further appeal. If an appeal against the statement of grounds is lodged, either to the Appointed Person or to the courts, then when a final decision is reached the provisional refusal of protection issued at examination stage will become final.

WIPO are then informed of the final refusal of protection for the case. The letter refers back to the original refusal of protection and confirms that the decision is now final, for all goods and services. The letter is sent to WIPO, who record the decision and publish it in the International Gazette. WIPO forward the letter to the holder of the mark.

Publication of acceptable marks

Every international designation that is accepted in the UK is published in the Trade Marks Journal and is open to opposition, in exactly the same way as domestic applications. Anyone may file observations or oppose an international mark within the set opposition period, in the same way as for national marks.

Observations

The Trade Marks (International registration) Order 2008 allows for written observations to be sent to the registrar, about whether a mark should or should not be protected in the UK. Observations may also be sent about international designations. Observations can only be filed on absolute grounds. Any observations on international marks will be considered in the same manner as observations against domestic marks, that is, they should bring to the notice of the registrar new information regarding, for example, a descriptive or generic meaning of a mark.

Observers will need to provide evidence in support of their comments. Observations on earlier rights will not be considered as an observation and will need to be addressed via the opposition or revocation route. Observations will be duly considered and if we feel that the designation has been accepted in error, then the holder must be informed and given an opportunity to respond. If the designation is to be allowed to proceed despite the observations, the holder must nevertheless be informed of the observations. Correspondence regarding observations will always be directly between the Intellectual Property Office and the holder of the mark or his representative. It is not necessary to involve WIPO in such matters.

Oppositions

International designations are opposed in exactly the same way as national marks, that is, by filing form TM7, together with a statement of grounds of opposition and a fee.

WIPO must be informed of oppositions since an opposition is a reason for provisional refusal of protection of a designation.

It is important that WIPO is provided with all information about the opposition. A copy of the form TM7, including details of any marks referred to in the statement of case, is therefore attached to the letter informing WIPO of the provisional refusal of protection of the mark.

In cases where it has taken longer than the prescribed 18 months to process the case, we are also required to tell WIPO the start and finish dates of the opposition period Rule 16(1). In such cases, the refusal letter to WIPO will be accompanied by a separate letter providing this information.

In the UK notices of opposition are served upon the applicant for a mark and the two month period allowed for filing of a counterstatement begins on the date of serving the papers. Oppositions are time-critical and provisional refusals of protection based on opposition are therefore faxed to WIPO in order that they can be forwarded to the holder as quickly as possible.

The IPO sends a copy of the international opposition papers to holder, or their address for service in the EEA (if applicable). This copy is sent in addition to the formal notification issued to WIPO.

Opposition to an international designation is equivalent to opposition to a national application. Because oppositions are filed under the Trade Marks Act 1994, these are dealt with by Tribunal Section and not by International Section.

Protection

When the opposition period has expired and no opposition has been received, or when any filed opposition are not successful or are resolved in the favour of the holder, an international designation will gain protected status in the United Kingdom. Section 3(2) of the International Order 2008 states that:

“…… a protected international trade mark (UK) shall be treated as if it were a trade mark registered under the Act and the holder shall have the same rights and remedies but shall be subject to the same conditions as the proprietor of a registered trade mark.”

If no opposition has been received, we regard protection to have been achieved the day after the end of the opposition period for the case. This date is important for non-use revocation purposes as the 5 year period for non-use begins from the date of protection in the UK. However, the rights of the trade mark will date from the international registration date in the same way that the rights of a UK registration date from the filing of the UK application.

It should be noted that no registration certificate is issued with regard to international designations. The reason for this is that the mark received its registration certificate from WIPO when it was registered internationally, prior to being forwarded to the UK for examination. The holder will learn that his mark is protected in the UK via one of the three final letters which are sent to WIPO regarding cases. All final letters are sent via WIPO in order that the final status of the UK designation may be recorded on the international register, and published in the International Gazette for the information of third parties. WIPO will forward a copy of the final decision to the holder or their representative.

Confirmation of Protection in the UK

The UK office will notify WIPO when a designation is protected in the UK. This is done at the time the mark achieves protection in the UK and follows the procedure laid out in the Common Regulations.

Statement of Grant of Protection

Rule 18ter(1)

This letter is sent in cases where no provisional refusal has been issued. The grant of protection letter allows WIPO to close the case as regards the UK designation and the holders rights in respect of the UK are confirmed without the need to wait until the end of the 18 month period. The protection of the mark is recorded and published in International Gazette and the grant of protection letter is forwarded to the holder.

Statement of Withdrawal of Provisional Refusal

Rule 18ter(2)(i)

This letter is issued in cases where the provisional refusal issued at examination stage was waived or overcome in its entirety. The mark was advertised in the UK Trade Marks Journal for exactly the same goods and services as are recorded at WIPO. The letter informs WIPO that the provisional refusal raised has been completely withdrawn, and that the mark is now protected in the UK. The protection of the mark is recorded and published in International Gazette and the statement of withdrawal letter is forwarded to the holder

Confirmation of Final Decision

Rule 18ter(2)(ii)

This letter is issued in circumstances where a provisional refusal has been partially overcome and the case has been allowed to proceed to advertisement in respect of part of the list of goods and services originally notified. We then inform WIPO that the mark has been partially protected in the UK. The letter lists the goods and/or services that have been protected and also confirms that all other goods and services have finally been refused protection.

This information is recorded in the international register and the letter is then forwarded to the holder or his representative.

A final decision may not refuse protection to more goods and services than the provisional decision. This means that if no refusal is issued at provisional stage, then the mark will be published and protected in the UK in respect of the goods and services covered by the international designation. Similarly, if a partial refusal is issued at examination stage, we are bound to publish and protect the goods listed as acceptable. Therefore, if the holder wishes to limit the scope of his mark more than the registry proposes, or to withdraw the UK designation completely, he must do this directly with WIPO.

Transformation to national application

Art. 9quinques

Where an international application is cancelled at the request of the Office of Origin of the case, the holder may opt to try to obtain protection for his mark in some or all of his designated countries by filing national applications in those countries. If the national application is filed within three months of the recordal in the international register of the cancellation of the international mark, then the holder may claim the filing date of the international application. This procedure is known as transformation.

Transformation is defined in Article 9quinques of the Madrid Protocol. Applications must meet the following criteria in order to transform:

  • the national application must be filed within three months of the death of the international mark
  • the national application must be for the same mark and for the same or no wider goods and services than the international mark
  • all national filing requirements, including payment of fees, must be met
  • the request will be filed on form TM4

Applicants wishing to transform international rights to national (UK) rights will do so by completing and filing the relevant national application form. Details of the international mark on which the transformation is based must be provided. If the application meets all requirements and transformation is allowed, the case will be given the same status as the international mark prior to cancellation. If the international mark had protected status prior to being cancelled, then the transformed national mark will automatically be given registered status. This is possible because the case has already been through the UK examination procedure as an international designation. If the international mark was examined status, then the new national application will be examined status. It will continue through the registration procedure as a domestic application.

The International Register

The international register is kept and updated by WIPO. Any changes to details held on the international register, such as limitations to the goods or services covered by a mark or updates to the holders’ details, must be notified to WIPO. WIPO are responsible for recording these details onto the international register.

Who may update the international register?

Clearly not everyone may request changes to the details of an international registration. WIPO must be assured that the party filing the official form has authority to act with respect to the international mark in question. Persons with authority to act fall into three groups:

  • the holder or their representative in the country of origin of the mark
  • the Office of Origin of the international application; and
  • the Office of the contracting party of the holder

The holder or their representative

Every international application form carries the name and address details of the holder of the mark. The holder may also choose to allow a representative to file his application and to act for him in matters relating to the international trade mark. These are the only names that WIPO records for the mark. These are therefore the only people from whom WIPO will accept forms requesting changes to details of a mark.

The Office of Origin of the application

The Office of Origin has to inform WIPO (under Rules 22 & 25) of changes to the national mark on which the international application is based. If the basic mark is refused, opposed or falls away for some reason, within the first 5 years following filing, WIPO must be informed. Similarly, if the basic mark is registered for a narrower list of goods and services than that originally applied for, WIPO will need to limit the international mark in line with the case upon which it is based. So, the Office of Origin may forward letters from the holder requesting partial or total cancellation of an international trade mark, or may notify WIPO of ceasing of effect of the basic mark.

The Office of Origin is also authorised to accept and pass on certain of the official forms MM5, where the holders address is in the UK. These forms may be endorsed by the Office of Origin.

Office of the contracting party of the holder

In cases where an international mark has been assigned to a holder in another member country of the system, the national office of the new holder may forward official forms to WIPO, if requested to do so. The notable exception to the list of persons who may act before WIPO in respect of an international mark is the representative appointed in a single designated contracting party.

Representatives in designated contracting parties

Representatives appointed to deal with individual designations of an international registration may not normally file official forms requesting updates to the international register. These individual representatives are not recorded on the international register. Clearly, it would not be acceptable that the international register be updated by any third party that has no connection with the mark in question. Therefore, since WIPO is unable to recognise representatives from designated contracting parties, any limitations or changes to individual designations are required, such requests must be sent to WIPO by the holder or by the instructing attorney in the country of origin of the mark.

This may cause problems for attorneys dealing with UK designations of international marks.

Changes to international registrations - (Rule 25) Transfer of ownership - form MM5

See Rule 25(3)

Under the Madrid system assignment of a trade mark is referred to as transfer of ownership. If the assignment of an international registration is to be recorded on the international register, then the new owner of the mark must be entitled to hold marks under the Madrid system (entitlement to be new holder). He must also be entitled to hold the mark in question. For example, if the mark is registered under the Madrid Agreement and the new holder is a national of, resident in, or holds a real and effective commercial establishment in a Protocol only country, then the assignment of rights will not be recorded in the international register. Holders in Agreement only countries may only hold Agreement designations of international marks; likewise holders in Protocol only countries. It follows that if the new owner of the mark is in a country which is party to both the Agreement and the Protocol, he will be entitled to hold all designations of the mark.

Form MM5 is used to record the transfer of ownership of a mark to a different legal entity. (Compare form MM9, which is used to change the holders name and address details in circumstances where the legal ownership of the mark has not changed.)

The form may be sent to WIPO by the holder or by the national office of the holder. It may also be filed by the national office of the transferee, it being understood that this office is in a member country of the Madrid system. A fee is payable for recording the transfer in ownership. The new holder of the mark will be required to indicate on the form his entitlement to hold the mark.

Transfer of ownership is recorded as the date when WIPO receive a form MM5 which complies with all filing requirements. Transfers are published in the International Gazette.

Limitation, renunciation and cancellation

These three actions all have the same result - a limit in the original scope of the international registration. The difference between them is:

Limitation

Limits some of the list of goods and services, in respect of some or all of the designated contracting parties.

Renunciation

Renunciation of protection for all goods and services, in respect of some but not all designated contracting parties.

Cancellation

Cancels some or all goods and services, in respect of all designated contracting parties.

From the above definitions it will be clear that a limitation and a cancellation have much in common. There is however one important difference. A limitation means that the goods that have been struck out are no longer covered by the international registration. But if protection for the goods that have been struck out is required in the future, this can be obtained by filing a subsequent designation form. The goods and services have not been taken out of the international registration itself. They are simply „not protected in the designated contracting parties affected by the limitation.

A cancellation, however, has the effect of removing the cancelled goods or services from the international registration. It would not be possible to protect the cancelled goods and services by making a subsequent designation. This could only be achieved by filing a new international application in respect of the cancelled goods or services.

So the effects of a limitation and a cancellation are different and hence, the choice of which of these actions to take in given circumstances must be made with care.

Limitation of the list of goods and services - form MM6

An international mark may be limited in respect of some or all designations. Even if the limitation of the list of goods and services is only valid in one designated contracting party, it is still necessary to request the limitation centrally at WIPO.

It is the ultimate responsibility of the holder of the mark to ensure that his rights are reflected accurately, both on the international register and in designated contracting parties. It is therefore imperative that the desired limitation is clearly set out when filing the official form. WIPO will not interpret instructions given on the form but will simply pass on the request to limit to the designated contracting parties concerned. If a limitation is not clearly worded, then designated contracting parties may find it impossible to record the limitation. For example if it appears to widen the list of goods and services originally filed or if it requests that goods and services are struck out of the original list when in fact these do not feature in the original list.

Form MM6 is used to limit an international mark in some or all designated contracting parties, by the removal of some goods or services from the list originally filed. The form must be sent to WIPO by the holder of the mark. The form does not specify how the limitation should be set out and holders have the choice of listing the goods or services to be excluded, or stating that “the limited list should now read as follows…” Whichever of these options are taken, the desired end result should be clearly and unambiguously stated.

Limitations are recorded and published in the International Gazette. The instruction to limit is then forwarded to all the designated contracting parties concerned.

Renunciation - form MM7

Under UK law a trade mark application will be withdrawn or refused if the applicant decides that he no longer wishes to pursue it. The Madrid system requires a positive final outcome in respect of every designation to the UK. Thus, if a holder decides that he does not wish to continue with his international designation, he may choose either to renounce his rights in the UK by filing form MM7 to WIPO, or if a provisional total refusal has been raised request that we formally and finally refuse protection for the case in the UK.

Form MM7 is used to request the complete withdrawal of a request for protection of a mark in one or more of the designated contracting parties to a case. This is equivalent to the withdrawal of an application to the Intellectual Property Office. The holder no longer wishes to protect his mark in a designated contracting party where he renounces protection.

The form should be sent to WIPO directly by the holder. The holder is simply required to list the designations where he wishes the renunciation to be effective. If he wishes to renounce the mark in its entirety, that is, in all designated contracting parties, he should use a request for cancellation (MM8) rather than a renunciation form. The renunciation will be recorded and published in the International Gazette. Copies of the publication will then be forwarded to all designated contracting parties affected by the action.

Cancellation of the International Registration - form MM8

Cancellation of an international mark will be effective in all the countries designated in the international application. As with limitations, it is the responsibility of the holder of the mark to ensure that his rights are accurately reflected on the international register and in the designated contracting parties where his trade mark has protection. The difference between cancellation, limitation and renunciation should be noted and care taken to ensure that the desired result is achieved.

Form MM8 is used to request cancellation of some or all of the goods and services in all countries listed on the international registration. The cancellation has the effect that goods or services are removed from the international registration as though they had never been listed.

The form may be filed by the holder or by the office of the contracting party of the holder. The holder will be required to state whether the cancellation is to be recorded in respect of some or all goods and services covered by the international registration. If specific goods are to be cancelled the holder will need to list these. WIPO will record the cancellation and publish it in the International Gazette. A copy of the publication will be forwarded to all designated contracting parties, since all will be affected by a cancellation.

Change in name and/or address of the holder - form MM9

Form MM9 is used to record changes in the holders name and address details when there has been no change in the legal entity of the company (compare form MM5 – “Transfer of ownership”). One form may be used to record the change for several international registrations held by the same holder.

The form may be filed to WIPO directly by the holder or his representative, or via the office of the contracting party of the holder.

WIPO will record the change and publish it in the International Gazette. It will then be forwarded to all designated contracting parties concerned.

Change in name and/or address of the representative - form MM10

Form MM10 is used to update the details of the recorded representative, for example if the representative moves to new premises. One form may be used to update the representative details on many international applications. The form may be sent directly to WIPO.

Renewal - form MM11

Form MM11 may be used to request renewal of an international registration. Use of this form is not compulsory. Requests to renew international registrations can also be made by letter. It is important to ensure that renewal fees are paid on time as renewal requests cannot be actioned without the fees.

The form may be sent directly to WIPO.

Appointment of a representative - form MM12

Form MM12 is used to appoint a representative or to change to a different representative. It is not compulsory to use this form when appointing a representative.

The form may be sent directly to WIPO.

Recording a licence - form MM13

Rule 20bis

Form MM13 allows holders to record licences against international marks. The licence may be recorded against all designations covered by the international mark, or just against certain designations. The form is fee-bearing and the appropriate fees must be paid before a licence can be recorded.

The form may be sent directly to WIPO.

Amendment of a licence - form MM14

Form MM14 is used to amend the details of an existing licence, i.e. one that has been recorded on the international register. This form is fee-bearing and it is important to ensure that the correct fees are paid since amendments will not be actioned without the fee.

The form should be filed directly to WIPO.

Cancellation of a licence - form MM15

Form MM15 is used to cancel a licence that has been recorded on the international register. One form may be used to request the cancellation of a licence from several international registrations. If more than one licence is recorded against an international mark, it must be made clear beyond all doubt which licence is to be cancelled. Like other forms for licences, it may be filed directly to WIPO.

There is no fee for cancellation of a licence.

Claim to Seniority – form MM17 (for applications designating the EU)

Where applicants designate the European Union, they must also complete from MM17 when they are claiming seniority from prior registrations within the European Union.

Declaration of intention to use the mark - form MM18 (for applications designating USA)

Where applicants designate the USA, they must attach a completed form MM18 to their international application form or subsequent designation form. This form contains the exact wording of the declaration of intention to use the mark required under United States law. If the MM18 is not filed with the MM2, it should be sent directly to WIPO.

Records held by the Intellectual Property Office

The Intellectual Property Office is required keep a record of all international registrations valid in the United Kingdom. This is called the supplemental register. All records are maintained on the MPS system.

WIPO is responsible for the flow of electronic information to the MPS system. The details relating to new international registrations which have designated the UK are received on a weekly basis. The MPS system contains details of international registrations insofar as these are valid in the UK.

Details recorded on MPS

All international marks designating the UK will be examined according to the Trade Marks Act 1994. MPS is an electronic case file management system which shows the status of a designation and the history held on the system can be used to trace the progress of a case through the UK examination process. As the case proceeds, we will record changes in status and add clauses which are agreed with representatives or holders prior to publication of the mark in the UK Trade Marks Journal. To facilitate this, certain of the UK national forms ‘TM’ Forms may also be used when dealing with international designations.

Some Intellectual Property Office forms have already been mentioned in this chapter. Form TMA is used when holders file an application transforming their international rights into national (UK) trade mark rights. Forms TM7 and TM8 are used in the opposition of an international designation since the mark is being opposed under the Trade Marks Act 1994. Other TM Forms used with international designations are listed below:

TM4

Request to transform an International mark designating the UK into a domestic application

TM5

Request for a statement of grounds. This form is used when the provisional refusal is maintained after the holder has made written representations to the office, or after a hearing before one of the registrars hearing officers. The holder has the right, in the same way as national applicants are entitled, to request a written statement of the grounds for refusal of protection.

TM7

Notice of opposition and statement of grounds. This form is used to file formal opposition against a published UK or International trade mark.

TM8

Notice of defence and counterstatement. This form is used to submit applicants defence and counterstatement following the filing of form TM7.

TM7A

Notice of Threatened Opposition. This form is for any party which is considering filing an opposition against a published UK or International trade mark, and who wishes to extend that mark’s opposition period from two to three months.

TM8(N)

Notice of defence and counterstatement for use in revocation on the grounds of non-use.

TM9

Where extra time is necessary to extend a time period that has not yet expired to resolve matters at the ex officio examination stage, after a hearing or during opposition or invalidation proceedings form TM9, (with appropriate fee post hearings), must be used to request this.

TM9R

Where extra time is necessary to extend a time period that has already expired to resolve matters at the ex officio examination stage, after a hearing or during opposition or invalidation proceedings form TM9R, (with appropriate fee post hearings), must be used to request this.

TM9C

Request for a cooling off period or for an extension of such a period. This form is used in opposition proceedings.

TM9E

Request for an extension to the cooling off period.

TM9T

Request to terminate a cooling off period.

TM21B

Used during opposition proceedings to request limitation to the list of goods or services of an international designation in order to overcome the opposition. Limitations to the list of goods and services are normally recorded by filing form MM6 to WIPO. However, opposition is a reason for provisional refusal of protection to all goods and services covered by an international designation. Having provisionally totally refused protection for a designation, the IPO may then agree limited protection to overcome any problems originally raised.

TM24

This form is used for recording of registrable transactions against international designations in the UK.

TM28

Concurrent registrations are recorded using this form (see Replacement). If a holder has existing UK national trade mark rights he may request that his international mark replace his national mark. This is done by recording a concurrent registration at any time after the international mark achieves protected status in the UK.

TM31M

Information about international designations is requested using this form (compare TM31C - used for requesting information about UK trade marks). Third parties will file this form to request that they be notified for example, when the designation is published or refused.

TM33

Used to appoint an EU, Channel Islands or EEA representative to act on the holders behalf in respect of an international designation in the UK (see Appointing a UK representative).

TM35

Used for filing copies of the regulations governing use of a certification or collective mark. Appropriate fees must be paid.

TM36

This form covers amendments to the regulations governing use of a certification or collective mark. Appropriate fees must be paid.

Recording licensees

Rule 20bis

The Common Regulations allow for licences to be recorded on the International Register. A licence may be recorded in respect of one or several of the contracting countries covered by an international mark.

Licences are now recorded in the international register of trade marks maintained by WIPO. However, those licences which were recorded in the UK Registry’s supplementary register prior to the current revision of the Common Regulations (that is, before April 2002) will continue to have effect.

Requests for certified copies

The international register is held by WIPO. The Intellectual Property Office is therefore unable to give certified copies of international trade marks. These may be obtained by writing to WIPO directly. There is no official form for use when requesting certified copies. A fee is payable when requesting a certified copy from WIPO.

International Fees

Fees for international trade mark applications are paid in Swiss francs.

The fee structure is made up of many parts. Applicants pay according to the mark they are seeking to protect and the countries where protection is sought. Fees fall into two categories:

• fees relating to the mark; and • fees relating to the designated contracting parties

Basic Fees

Every applicant will be required to pay an application fee – described by WIPO as a basic fee. This covers an application with up to three classes of goods and services. Further fees relating to the application are payable according to the nature of the mark.

Is the mark in colour?

If a colour representation of the mark is provided then it will be necessary to pay the higher basic fee applicable to coloured marks. If colour is claimed as an element of the mark then a colour representation must be provided. Applicants may also choose to file a colour representation of the mark even if they do not claim colour. But in any circumstances where a colour publication of the mark is either necessary or desired it will be necessary to pay the higher basic fee.

Supplementary fees

The basic application fee covers up to three classes of goods and services. For each additional class a supplementary fee is payable.

Supplementary fees cover the additional classes in designated contracting parties that do not charge individual fees. Therefore, if all the countries designated in an application charge individual fees, then it will not be necessary to pay supplementary fees.

Fees relating to the Designated Contracting Parties

Applicants must pay a fee for each designated contracting party that is listed on the application. These fees are paid in addition to the basic fees, which are detailed above.

Individual fees

Certain member countries of the Protocol have exercised their right to collect individual fees (see Article 8(7) of the Protocol). To designate these countries it is necessary to pay the individual fees specified. An up-to-date list of the fees for individual countries is available on WIPOs fee calculator. It should be noted that different member countries specify that their fees cover different numbers of classes of goods and services. Further, some of the countries charge different individual fees depending upon whether the international application is for a trade mark or a collective mark. Thus, it is important to be clear about the nature of the mark for which international protection is being sought.

Some countries split the fee they will collect and require part of the fee when the application is filed and the rest at protection of the mark in their particular country. This will result in the applicant being requested to pay fees again, after the mark has been registered internationally and passed to individual designations. Applicants need to be aware of this, since if the fees are not paid, this may result in the designation being abandoned. The European Union Trade Marks Office requires direct applicants to pay the fees in two parts, an application fee and a registration fee. The individual fee for designating the EU under the Madrid Protocol is equivalent to both parts of this fee and is payable at the time of designation. If for any reason the designation to the EU does not become protected, the part of the individual fee equivalent to the registration fee paid by direct European applicants will be refunded.

Complementary fees

Where there are no individual fees listed for a country, applicants wishing to designate that country will instead pay a complementary fee.

The total application fee for an international application is the sum of the fees relating to the mark and those relating to the designated contracting parties. A fee calculator is available on the WIPO website.

UK handling fee

Where the international application is based on an UK mark, the Intellectual Property Office will be the Office of Origin for that case and the international application will be filed via the Intellectual Property Office. A handling fee (currently £40) is charged. This covers the cost of certification of the case, as well as, courier fees for transportation of the case to WIPO.

The application form is the only international form on which we are permitted to charge a handling fee at the Intellectual Property Office. Other forms filed via the Intellectual Property Office are forwarded to WIPO after a basic check.

Payment of international fees

International fees may be paid by:

  • deduction from a WIPO current account
  • bank transfer to WIPO’s bank account Bank name: Credit Suisse - 1211 Geneva 70 - Switzerland Account name: WIPO/OMPI Account number (IBAN): CH51 0483 5048 7080 8100 0 SWIFT code: CRESCHZZ80A
  • payment or transfer to the Swiss postal cheque account of WIPO, Account number (IBAN): CH03 0900 0000 1200 5000 8 at SWISS POST/Postfinance – Engehaldenstrasse 37 – 3030 Bern SWIFT/BIC: POFICHBE

Alternatively, if customers hold a deposit account with the IPO, they may instruct the IPO to pay the fee and debit their account with the requisite amount of Swiss francs. The IPO will also pay fees for customers who send a cheque in sterling.

3. European Trade Marks Background to the system

The European Union Intellectual Property Office (EUIPO) is based in Alicante, Spain. It was set up to process applications to register European trade marks and designs. Applications for trade marks were accepted from 1 January 1996 and the office opened officially on 1 April 1996. All applications received prior to 1 April were given a filing date of 1 April 1996.

Applicants for European trade marks file a single application, but if successful gain trade mark rights which cover all member states of the EU and are valid for ten years and renewable for further periods of ten years. The UK holds a register of all trade mark applications and registrations which are valid in the UK, including information relating to European trade marks.

European trade marks are examined by the EUIPO under European Council Regulation 40/94 on the European Trade Mark (referred to in this chapter as CR 40/94 or the European Union Trade Mark Regulation). The European Union Trade Mark Regulation is intended to harmonise the laws of member states of the European Union. The UK Intellectual Property Office is not involved in the examination of European trade marks and our contact with the European office is limited. However, there are certain procedures that we are required to carry out and these are outlined below.

Certification of professional representatives

Art. 89CR 40/94

Whilst anyone may file a European trade mark or European design application, applicants from outside the EU must appoint a representative from within the EU to act for them before the EUIPO in all proceedings after filing. Legal practitioners (solicitors or barristers) who are qualified in one of the member states of the EU are automatically entitled to act before the EUIPO. Other representatives need to be entered onto the EUIPOs list of professional representatives before they may represent applicants for European marks and/or European designs.

Article 89(2) of the European Union Trade Mark Regulation requires the Intellectual Property Office to certify representatives living or with their place of business in this country, who wish to be entered onto the EUIPOs list of professional representatives. Representatives must apply on an individual basis to be entered onto the list. There are certain criteria they must meet, namely (see Art.89(2) CR 40/94):

  • be a national of one of the member states
  • have a place of business within the EU; or
  • be entitled to represent applicants before the Intellectual Property Office, this being the national office of the member state of the EU where the representatives place of business is located

Entitlement to act before the Intellectual Property Office is assessed either by special professional qualification (such as a member of the Solicitors Roll) or by habitual practice before the UK office over a 5 year period (as detailed in Article 89(2)(c) of the Regulation).

International Policy Section examines applications to be entered on the EUIPO list of representatives, to ensure that applicants meet all of the above criteria. We then sign the certification form and send the complete application on to the EUIPO. We inform the representative that we have forwarded the application. The EUIPO confirms directly with the representative when they have been entered onto the official list of professional representatives.

Conversion to national trade mark application

Art. 108, 110 CR 40/94

Holders of European trade mark applications or registrations may apply to convert their European marks into national trade marks and may request conversion of the European trade mark to a national trade mark if the European application is refused, withdrawn, deemed to be withdrawn, or ceases to have effect. (Conversion is not permitted where the European mark has been revoked on grounds of non-use.)

For conversion to be permitted, there must have been a valid European application or registration to begin with, that is, the mark must have satisfied all filing requirements and have been granted a filing date.

A request for conversion should be made in writing, to the EUIPO within three months of the date of EUIPOs final decision. The form for making this request can be downloaded from the EUIPO website. If the request for conversion is admissible, the papers relating to the case will be forwarded to the national offices of the countries where conversion is requested.

Partial or total conversion is possible. For example, where one class of a multi-class application is successfully opposed, that class could be converted to national trade mark applications in any or all of the countries of the EU, except in the country where the opposition originated. The rest of the application, that is, the unopposed classes, will continue life as a European mark.

Converted cases retain the filing date of the application to the EUIPO. The papers are passed to us exactly as they were filed to the EUIPO - this could mean that they will be in any of the officially accepted languages of the European Office. If the papers are in a language other than English we will ask the applicant or his representative to provide a translation.

Filing a European application via the Intellectual Property Office

Art. 25(1)(b) CR 40/94

The Intellectual Property Office is authorised under Article 25(1)(b) of the European Trade Mark Regulation to receive European trade mark applications on behalf of the EUIPO. Finance Section is responsible for the receipt of European applications. We do not examine applications in any way at the Intellectual Property Office, but simply check to ensure that they are complete and can be given a filing date.

If an application complies with all the filing requirements, then the filing date assigned to the case at the EUIPO will be the date on which we at the Intellectual Property Office received the application. We forward applications by courier to the EUIPO in Alicante. We send the applicant a confirmation slip confirming the filing date assigned to the case and the number of pages, including attachments, which have been forwarded. The handling fee we charge for receiving and forwarding European applications covers the cost of the courier service.

The advantage of filing a European application via the Intellectual Property Office is that the filing date is quickly established and confirmed. However, European applications do not have to be filed through this office. They can be filed directly to EUIPO using any of the prescribed ways which now include electronic filing.

Sources of information

The EUIPO database

European trade marks and designs are examined and registered by the EUIPO. The register of European trade marks is maintained by the EUIPO. They send the Intellectual Property Office a limited amount of information about each new mark to enable us to conduct searches of the national register.

The EUIPO website

The EUIPO website includes an on-line search facility as well as general information about the European trade mark registration system.

The Bulletin and the EUIPO Journal

The EUIPO publishes all new European trade marks for opposition purposes. The EUIPO Bulletin which is published weekly, is a source of information about individual trade marks. European trademarks are published in all officially accepted languages of the European Office. The EUIPO also publishes information such as decisions and updates in law and practice in a monthly journal, the EUIPO Bulletin.

4. Annex

4.1 Glossary of international (Madrid) terms

Applicant

Holder of national trade mark rights in a member country of the system, who applies to register his mark internationally and gain protection in other designated member countries.

Application

A new request to register an international trade mark. Applications are filed to WIPO via the Office of Origin of the trade mark

Article

Refers to Articles of the Protocol relating to the Madrid Agreement concerning the International Registration of Marks.

Basic mark

National trade mark rights upon which the international application is based. Under the Protocol, the basic mark may be an application or a registration, whereas under the Agreement only registered rights may be used as the basis for an international application.

Certification

Required by Article 3 of the Protocol. To use the system an international application must be based on existing national rights. The national administration where those rights are based (Office of Origin) is required to certify that the international application is in line with the existing national rights.

Common Regulations

The Rules which govern the practical administration of the Madrid System.

Dependency

International applications are based on existing national trade mark rights - see Article 6(2) of the Protocol. For the first five years of the life of the international mark, it is dependent upon the national mark. Thus, if the national trade mark rights die for any reason during this five year period, the international mark will also die. After the five year period the international mark will become independent of the basic mark.

Designated

Contracting Party (DCP) Any member country of the system which is listed in an international application as being a country where the holder wishes to seek protection for his mark.

Designation

When an international application is filed, the applicant will designate other member countries of the system where he would like his mark to be protected. When the mark is registered, copies of the details will be sent to each of the designated contracting parties. In each individual country the application for protection will be known as a designation. For examiners of international trade marks the term designation is approximate to the term application used on domestic examination units.

ENN

The code used by WIPO to classify the details of a new mark which is seeking protection in the UK. An ENN carries all the details of the mark which we need in order to examine the case.

EXN

The code used to classify the details of an existing international mark which has just applied for protection in the UK (see subsequent designation).

Filing date

The date on which the international application was filed. In most cases this will be the date on which the application was received by the Office of Origin. When the mark is registered, the filing date will become the international registration date.

Holder

The registered proprietor of an international trade mark. The holder of an international mark is recorded on the international register.

International Gazette

Published by WIPO, this contains details of new International trade marks as well as any updates to details of existing marks on the International Register.

Irregularity Notice

Notice from WIPO to the applicant for international registration to notify him of any instance where the application does not comply with the Common Regulations. Irregularity notices are sent both to the holder and the Office of Origin for the mark. Irregularity notices may also be sent to Designated Contracting Parties where refusal letters do not comply with the Regulations.

Madrid Agreement

Treaty of April 1891(and still in force) allowing for the international registration of trade marks. Member countries of the Madrid Agreement are referred to in this chapter as Agreement countries.

MPS

MADRID PROTOCOL SYSTEM the IPOs electronic file system

Madrid Protocol

Protocol to the Madrid Agreement, adopted in 1989 with a view to making the Protocol more accessible to a greater number of parties. Member countries of the Protocol are referred to in this chapter as Protocol countries.

Madrid System

System for the international registration of trade marks based on two system international treaties - the Madrid Agreement and the Protocol to the Madrid Agreement.

National Representative

Trade mark attorney, lawyer or other individual representing the holder in respect of one designation of the international registration before the national administration of the designated contracting party.

Office of Origin

National trade mark office where the basic mark is held - thus the office of the international application. The Office of Origin never changes, even if a mark is transferred into the ownership of another party who is based in another of the member countries of the system.

EUIPO Bulletin

This publication contains details of new European trade marks which are published for opposition purposes, as well as marks which have achieved registration.

EUIPO Journal

Details of updates to law and practice as well as legal decisions are published in the EUIPO Journal.

Protected

Similar to registered status for domestic cases and indicates that an international designation has successfully passed through the UK examination and advertisement procedure. International designations are already registered when they come to us and the term protected is therefore used to describe the final status of cases which have achieved protection in the UK.

Refusal

We examine all designations to the UK under the Trade Marks Act 1994. Just as with UK trade marks, international marks will be accepted or refused protection. Where there are grounds to object to a mark a provisional refusal letter will be drafted (may be compared to the domestic examination report. Partial or total refusal is possible.

Registration/Registered

A registered international mark is one which has been recorded in the international register. Marks are registered internationally before being sent out to the member countries of the system which are designated in the international application. Thus, a registered mark may not yet have achieved any protection in countries other than its country of origin. (See also Protected).

Representative

Trade mark attorney, lawyer or other person designated by the applicant to act on his behalf before WIPO. (Compare national representative).

ROMARIN

A record of the current marks on the International Register. This is produced by WIPO and available on the WIPO website.

Rule

Refers to the Common Regulations under the Madrid Agreement and the Protocol relating to that Agreement.

Safeguard

This phrase refers to Article 9sexies of the Protocol as amended in September 2008, repeals the safeguard clause. New paragraph (1)(a) of Article 9sexies provides that the Protocol, and the Protocol alone, will, in all aspects, apply between Contracting Parties bound by both the Agreement and the Protocol. As a result, as from September 2008, designations of a Contracting Party bound by both the Agreement and the Protocol made in an international application or subsequent to an international registration, by an applicant or holder of a Contracting Party also bound by both the Agreement and the Protocol will be governed by the Protocol. For convenience, such designations are hereinafter referred to as “designations governed by the Protocol by virtue of new Article 9sexies”.

Subsequent Designation

Once an international trade mark is registered, the holder may apply to add further countries to the list of those where he seeks or has protection. This is done, as the name suggests, by filing an application to designate further member countries subsequent to the registration of the international mark.

Transformation

Article 9quinques of the Protocol deals with this. Where an international registration is cancelled at the request of the Office of Origin (i.e. because of the death of the basic mark) then the holder of that registration may request transformation of his international rights in one or all of the countries designated to national rights in those countries. This request must be made within three months of the cancellation of the international application. Partial or total transformation of a case is possible.

WIPO

World Intellectual Property Organisation.