On February 1, 2019, a new version of the Common regulations under the Madrid Agreement and Protocol for the international trademark went into effect..

In its information notice No. 21/2018, the World Intellectual Property Organization (WIPO) details the various changes that have been made to this text. These concern:

  • The division of an international registration in respect of a designated Contracting Party (new Rule 27bis, new point 7.7)
  • The merger of international registrations (new Rule 27ter),
  • The cancellation of an international registration resulting from division due to the ceasing of effect of the basic mark (Rule 22(2)(b)),
  • The possible notifications under New Rules 27bis, 27ter and 40(6) of the Common Regulations,
  • The publication in the WIPO Gazette of international marks (Rule 32).

 

The new features and the main rules concerning these procedures are detailed below:

 

  • The division of an international registration in respect of a designated Contracting Party (new Rule 27bis, new item 7.7)

The new Rule 27bis of the Common Regulations under the Madrid Agreement and Protocol specifies in its paragraph (1)(a) that “A request by the holder for the division of an international registration for some only of the goods and services in respect of a designated Contracting Party shall be presented to the International Bureau on the relevant official form by the Office of that designated Contracting Party, once the latter is satisfied that the division whose recording is requested meets the requirements of its applicable law, including the requirements concerning fees.”

 

Thus, the owner of an international registration may request the division of an international registration for some of the designated goods and services with regard to only one designated contracting party.

Various formalities must be respected in order to make such a division. For example, the request should be made through the intermediary of the intellectual property office concerned by the division request. Moreover, in the information notice No.21/2018, it is specified that “The Office concerned may examine the request for division of an international registration to ensure that it meets the requirements in the applicable national or regional law, as the case may be, before presenting it to the International Bureau of WIPO. The Office may also require the payment of a fee, directly to this Office, different from the fee due to the International Bureau of WIPO.”

It is the responsibility of the International Bureau of WIPO to examine the request in order to determine whether it meets the requirements of Rule 27bis and to notify the Office that submitted the request so that any irregularity can be corrected, while at the same time informing the holder. The concerned office has a period of three months from the date of the notification to correct any such irregularity. Otherwise, the request will be considered abandoned.

Finally, the information notice No.21/2018 specifies that, if the conditions are met, the International Bureau of WIPO shall record the division of the international registration with regard to a designated contracting party and then create “ a divisional international registration for the goods and services specified in the request and with the Contracting Party concerned as the sole designated Contracting Party, notify the Office that presented the request and inform the holder”.

 

  • The merger of international registrations (new Rule 27ter)

The information notice specifies that “all provisions dealing with the merger of international registrations will be consolidated in new Rule 27ter of the Common Regulations” following the deletion of Rule 27(3) from the same text.

These provisions relate to the merger of international registrations resulting from the recording of a partial change of ownership, the merger of international registrations resulting from the recording of the division of an international registration and the recording and notification of such mergers.

A request for the merging of international registrations resulting from the recording of a partial change of ownership must be submitted to the International Bureau of WIPO by the holder directly or through the Office of the Contracting Party of the said holder.

The information notice No.21/2018 specifies to that matter that “A divisional international registration may be merged only with the international registration from which it was divided”. A request for the merging of international registrations resulting from the recording of the division of an international registration may be submitted only by the holder through the Office that filed the division request.

 

  • The cancellation of an international registration resulting from division due to the ceasing of effect of the basic mark (Rule 22(2)(b))

WIPO says in its information notice No.21/2018 that: “the International Bureau of WIPO will be required to cancel, in whole or in part, as the case may be, an international registration resulting from the recording of division when the international registration from which it was divided is either totally or partially cancelled, at the request of the Office of origin, due to the ceasing of effect of the basic mark”.

 

  • The possible notifications under New Rules 27bis, 27ter and 40(6) of the Common Regulations

The information notice No. 21/2018 of the WIPO specifies that “a Contracting Party, the law of which does not provide for the division of applications for the registration of a mark or of registrations of a mark, may notify the Director General of WIPO, before new Rule 27bis enters into force or before that Contracting Party becomes bound by the Madrid Protocol, that it will not present to the International Bureau of WIPO requests for division of international registrations”.

The same applies to requests for the merger of international registrations resulting from a division.

Contracting Parties, having made such notifications to the Director General of WIPO, may subsequently change their position at any time and accept such requests.

 

Finally, this same information notice specifies that “any Contracting Party may, before new Rules 27bis(1) and 27ter(2)(a) of the Common Regulations enter into force or before the Contracting Party becomes bound by the Madrid Protocol, notify the Director General of WIPO that either one or both of the new Rules 27bis(1) and 27ter(2)(a) of the Common Regulations are not compatible with the applicable national or regional laws, as the case may be”. Contracting Parties which have sent such a notification shall again have the possibility to withdraw it.

 

  • The publication in the WIPO Gazette of international marks (Rule 32)

Finally, the amendments and points detailed in the previous paragraphs also have an impact on Rule 32, of the Common Regulations under the Madrid Agreement and Protocol, regarding the publication of marks in the WIPO Gazette of International Marks. Paragraph (1)(a) of this Rule now provides that “The International Bureau shall publish in the Gazette relevant data concerning […] (viiibis) division recorded under Rule 27bis(4) and merger recorded under Rule 27ter”. Moreover, paragraph 2 provides that “The International Bureau shall publish in the Gazette (i) any notification made under Rules […], 27bis(6), 27ter(2)(b) or 40(6) […]”.

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