legal framework (ii) october 2010 diego agustín carrasco pradas head, legal section, legal and...
TRANSCRIPT
Legal Framework (II)
October 2010
Diego Agustín CARRASCO PRADAS
Head, Legal Section, Legal and Promotion Division, International Registries of Madrid and Lisbon, Brands and Designs Sector
THE MADRID SYSTEM
Role of the International Bureau
INTERNATIONALBUREAU
Applicant
Formality Examination
No Irregularities
Recordsin the int’l Register
Publishesin the Gazette
County A
County B
County C
Issuesa registration
certificate
NotifiesDesignated
Contracting Parties
Effects of the International Registration
Refusals
International Registration
Effects of International Registration
National application
National registration
as from the date of the international registration
in the absence of refusal
Effects of the International Registration – Article 4 –
The International Registration =
A National Application
until the expiry of the time limit to issue a refusal
A National Registration once
the time limit to issue a refusal
has expired (assuming no
refusal or refusal withdrawn)
Designations of Contacting Parties: Agreement
International application governed exclusively by the Agreement
Use official form MM1
AAP AA
France Algeria
Designations of Contacting Parties: Protocol
International application governed exclusively by the Protocol
Use official form MM2
P
P!AP
Por
Viet Nam
APFrance
JapanP
Designations of Contacting Parties: Mixed
International application governed by both the Agreement and the Protocol
Use official form MM3
A
P!AP
Aor
Viet Nam
APFrance
Algeria
A+P
Designated Contracting Parties
What is the role of the Office of the Designated
Contracting Parties?
No specific role
But possibility to issue a Refusal
Designated Contracting Parties
may notify the IB of
Substantive Examinationwithin set time limits(12 or 18 months)
Provisional Refusal Grant of Protection*= National Registration
OFFICE OFDESIGNATED
CONTRACTINGPARTY
Confirmationof Refusal
Withdrawalof Refusal
= National Registration
* No Office shall be obliged to send statements of grant of protection before January 1, 2011.
Time Limits
Notification of provisional refusal:
12 months
Mandatory under Agreement
Optional under Protocol
18 months
Optional under Article 5(2)(b) of the Protocol
“18 months +” in case of opposition
Article 5(2)(c) of the Protocol
Non-Valid Grounds for Refusal
Formal grounds
Classification of the goods and services (Rule 12)
Multi-class registration (Article 5(1))
Limited goods or services (Article 5(1))
Latest developments:
Statements of ground of protection
Interfaces between the Madrid System and the Community Trade Mark
MS & CTM - Similarities
Single filing mechanisms for international protection
Cost effectiveness over national filings
Administrative efficiency over national filings
MS & CTM – Fundamental Differences (1)
MS
Bundle of national rights
Part of national systems
CTM
Unitary right
Overlaid onto
national systems
Implications
MS & CTM – Fundamental Differences (2)
Implications
MSMS
No inherent conflict with national systemsNo inherent conflict with national systems
CTMCTM
High number of oppositionsHigh number of oppositions
MS & CTM – Other Points of Comparison (1)
Geographical scope
MSMS
Goes well beyond EUGoes well beyond EU
CTMCTM
EU onlyEU only
MS & CTM – Other Points of Comparison (2)
Invalidity
MSMS
Once dependency is over, invalidation only via Once dependency is over, invalidation only via
national actionsnational actions
CTMCTM
Always vulnerable to destruction of unitary nature Always vulnerable to destruction of unitary nature
by invalidation in one Member Stateby invalidation in one Member State
MS & CTM – Other Points of Comparison (3)
Language
MS
French only – MA
French/English/Spanish - MP
CTM
5 working languages [English, French, Italian,
Spanish, German]
MS & CTM – the Link (1)
Designate CTM within MP application
Base MP application on CTM
MS & CTM – the Link (2)
CTM as designation
Usually a good option
“Opting back” choices – safety net
MS & CTM – What’s the Answer? (1)
Neither system should predominate
Complementary
MS & CTM – What’s the Answer? (2)
Costs in a given set of circumstances
Filing costs – easy to estimate
Prosecution costs – harder
Oppositions – almost impossible
