Guide to the International Registration of Marks
Part B: Chapter II
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CHAPTER II: THE INTERNATIONAL PROCEDURE
Entitlement to Make the Subsequent Designation
Presentation of the Subsequent Designation
Language of the Subsequent Designation
Official FormItem 1: International Registration Number
Item 2: The HolderItem 3: Appointment of a Representative
Item 4: Contracting Parties Subsequently DesignatedDeclaration of Intention to Use the Mark
Indication of a Second Language and Seniority Claim (for the Purpose of the Designation of the European Community)Item 5: Goods and Services for Which the Subsequent Designation is Made
Item 6: Miscellaneous Indications(a) Additional Indications Relating to the Holder
(b) Indication of Part(s) of the Mark in Color
(c) and (d) TranslationItem 7: Request Relating to the Date of Effect
Item 8: Signature of the Holder or His Representative
Item 9 and 10: Date of Receipt of the Request by the Office and Signature by the Office
Fee Calculation SheetEffect of Subsequent Designation
Date of Subsequent Designation
Irregular Subsequent Designation
Recording, Notification and Publication
Period of Protection
Refusal of ProtectionOfficial Form and Contents
Presentation of the Subsequent Designation Resulting from Conversion
Date of Subsequent Designation Resulting from Conversion
[Also in PART B, CHAPTER II:
Introduction | The International Application | The International Registration | Refusal of Protection | Subsequent Designation | Changes in The International Registration | Renewal of International Registration | Dependence and Independence | Facts in Contracting Parties Affecting International Registrations | Continuation of Effects of International Registrations in Certain Successor States]
Subsequent Designation |
Entitlement to Make the Subsequent Designation |
No Subsequent Designations Possible in Certain Cases |
Presentation of the Subsequent Designation |
Rule 24(2)(a) Rule 24(2)(a)(i) |
41.01 Subject to the exceptions mentioned below, the holder may present the subsequent designation either directly to the International Bureau or through the Office of the Contracting Party of the holder. However: - the subsequent designation must be presented to the International Bureau by the Office of the Contracting Party of the holder where any of the Contracting Parties to which it relates is a country which is designated under the Agreement; - the subsequent designation must be presented to the International Bureau by the Office of origin where Rule 7(1), as in force before October 4, 2001, applies; that is, where the Contracting Party whose Office is the Office of origin has declared that, where the holder's address is in its territory, subsequent designations must be presented to the International Bureau by that Office. |
| A.I. Sections 6 to 11(a) | 41.02 A subsequent designation may be transmitted to the International Bureau by mail, by fax (no confirmation is needed) or by electronic means (see paragraphs B.I.03.01 to 03.05). |
| Rule 24(10) | 41.03 Where a subsequent designation should have been presented through an Office (see paragraph B.II.41.01) but is presented directly to the International Bureau, that subsequent designation will not be considered as such. Any fees already paid will be reimbursed to the party having paid them. |
Language of the Subsequent Designation |
Official Form |
Rule 24(2)(b) |
43.01 The subsequent designation must be presented on the official form (MM4) established by the International Bureau, or on a form having the same contents and format (see paragraphs B.I.04.02 and 04.03). One form may be used to designate several Contracting Parties. |
Item 1: International Registration Number |
Item 2: The Holder |
Item 3: Appointment of a Representative |
Item 4: Contracting Parties Subsequently Designated |
Rule 24(3)(a)(iii) |
43.06 The official form provides a box to be checked for each Contracting Party for which an extension of the protection subsequent to the international registration is sought. If the holder produces his own form, he may instead list the Contracting Parties he wants to designate. |
43.07 The official form is regularly updated and the latest version made available under the heading Trademarks/Madrid System/Forms of WIPO's website. If however the holder wishes to designate a Contracting Party that is not listed (because it has become party to the Agreement or Protocol since the form was printed), he should write the name of that Contracting Party in the space available for that purpose in item 4. The holder should check that the accession of that Contracting Party has become effective. If it has not, the designation will be disregarded by the International Bureau, which will reimburse any complementary or individual fee paid in respect of that Contracting Party. |
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Declaration of Intention to Use the Mark |
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Rule 24(3)(b) |
43.08 The remarks in paragraphs B.II.17.11 and 17.12 apply mutatis mutandis to a subsequent designation. |
Indication of a Second Language and Seniority Claim (for the Purpose of the Designation of the European Community) |
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Rule 24(3)(c)(iii) |
43.09 The remarks in paragraphs B.II.17.05 to 17.07 (concerning the indication of a second language before OHIM) and in paragraphs B.II.17.08 to 17.10 (concerning seniority claims) apply mutatis mutandis to a subsequent designation. However, it should be noted that in the case of a subsequent designation of the European Community, the second language may not be the language of the international application from which the international registration resulted, regardless of the language of the subsequent designation. Thus, for example, if the international application had been filed in French and the subsequent designation in question is filed in English, French may not be selected as the second language for the purpose of the subsequent designation of the European Community. |
Item 5: Goods and Services for Which the Subsequent Designation is Made |
Item 6: Miscellaneous Indications |
Item 7: Request Relating to the Date of Effect |
Item 8: Signature of the Holder or His Representative |
Items 9 and 10: Date of Receipt of the Request by the Office and Signature by the Office |
Fee Calculation Sheet |
See the remarks concerning completion of the fee calculation sheet in the international application form (paragraphs B.II.20.01 to 20.14), and the general remarks concerning payment of fees to the International Bureau (paragraphs B.I.08.01 to 08.12).
Rule 24(4) |
44.01 The fees payable in connection with a subsequent designation consist of: - the basic fee; - an individual fee for the designation of each designated Contracting Party that has made the relevant declaration (see paragraph B.II.20.04) and is designated under the Protocol, except where that designated Contracting Party is a State bound (also) by the Agreement and the Office of origin is the Office of a State bound (also) by the Agreement (in respect of such a designation, a complementary fee is payable); - a complementary fee for each designated Contracting Party for which no individual fee is payable. The fee calculator on the Trademarks/Madrid System page of WIPO's website may be used to calculate the fees payable in respect of a subsequent designation. |
44.02 These fees are in respect of the remainder of the 10 years for which the fees have already been paid for the international registration concerned. In other words, the amount of the fees is the same irrespective of the number of years during which the subsequent designation will have effect until the renewal of the international registration. |
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44.03 The payment may be made by any of the different means listed in part (b) of the fee calculation sheet. As in the case for an international application, probably the most convenient method of payment is to use a current account with the International Bureau and merely instruct the International Bureau (by completing part (a) in the fee calculation sheet) to debit the required amount; where payment is made by this method, the amount to be debited should not be specified. Where the fees are paid other than by debit from an account with the International Bureau, or where the party making the payment wishes to specify the amount to be debited from an account with the International Bureau, the method of payment, the amount paid or to be debited and the party making the payment or giving the instructions should be indicated in part (b) of the fee calculation sheet. |
Effect of Subsequent Designation |
Date of Subsequent Designation |
Rule 24(6)(a) |
45.01 A subsequent designation which is presented by the holder directly to the International Bureau will bear the date on which it was received by the International Bureau. |
| Rule 24(6)(b) | 45.02 A subsequent designation which is presented to the International Bureau by an Office bears, if it complies with the applicable requirements, the date on which it was received by the Office, provided that it has been received by the International Bureau within two months from that date. If the International Bureau receives the subsequent designation after the expiry of that time limit, it will bear the date of its receipt by the International Bureau. |
| 45.03 The date of a subsequent designation may be affected if it contains irregularities (see paragraph B.II.46.02). | |
| 45.04 In general, the possibility of being accorded an earlier date will be of advantage to the holder. In certain circumstances however, this new possibility can cause complications, and may have even disadvantages. For example, a subsequent designation which is presented through an Office shortly before renewal of the international registration is due but reaches the International Bureau after that date will nonetheless bear a date earlier than the renewal date. It will therefore expire on that date and, in order to maintain it in force, it will be necessary to pay again the complementary fee or (where appropriate) the individual fee required in respect of the newly designated Contracting Party. | |
| 45.05 In contrast to a subsequent designation, the recording of a change under Rule 25 is deemed to take effect when it is actually recorded in the International Register, whether the request to record the change was presented through an Office or directly to the International Bureau. Thus, where subsequent designation and a request to record a change are presented at the same time through an Office, the subsequent designation will generally bear a date which is earlier than the effective date of the change. For example, it sometimes happens that a holder wishes to renounce protection in respect of a particular Contracting Party (because of a threatened refusal by that Contracting Party) and then immediately re-extend the protection to that Contracting Party by means of a subsequent designation. If the renunciation and the subsequent designation are presented simultaneously through an Office then, as a consequence of Rule 24(6)(b), the renunciation with respect to the Contracting Party concerned will take effect after the new territorial extension to that Contracting Party. | |
| Rule 24(6)(d) | 45.06 In order to avoid problems of the kind just described, where a subsequent designation contains a request that it take effect immediately after some other event (such as renewal or the recording of a change or cancellation), the subsequent designation will bear the date of the recording of that other event. |
| 45.07 Where the date of the subsequent designation, determined as described in the foregoing paragraphs, is not more than six months after any priority date recorded in respect of the international registration, the priority which the latter enjoys will also have effect in the Contracting Parties covered by the subsequent designation (see paragraph B.II.47.02). |
Irregular Subsequent Designation |
Rule 24(5)(a) |
46.01 Where the International Bureau considers that there is an irregularity regarding the subsequent designation, it will so notify the holder. Where the subsequent designation was presented by an Office, it will also notify the Office. |
| Rule 24(6)(c)(i) | 46.02 Where a subsequent designation contains an irregularity which relates to the number of the international registration concerned, the indication of the Contracting Parties designated, the indication of the list of goods or services or any declaration of intention to use to be annexed to the subsequent designation, the date of the subsequent designation will be the date on which the irregularity is remedied. Where however the subsequent designation was presented to the International Bureau by an Office, the date of the subsequent designation will not be affected by any of these irregularities if they are remedied within two months of the date on which the request to present the subsequent designation was received by the Office; in this case, the subsequent designation will continue to bear the date on which the request was received by the Office. |
| Rule 24(6)(c)(ii) | 46.03 Any other irregularity does not affect the date of the subsequent designation. |
| Rule 24(5)(b) | 46.04 If the irregularity is not remedied within three months from the date of the notification by the International Bureau, the subsequent designation will be considered abandoned. In particular, where the irregularity lies in the fact that a declaration of intention to use the mark is missing or defective and such irregularity is not remedied within the prescribed period of three months, it should be noted that the entire subsequent designation will be considered abandoned - that is, with respect to all the Contracting Parties which have been designated subsequently. The International Bureau will refund the fees paid, subject to the retention of one half of the basic fee, to the party (holder, representative or Office) that paid them. |
| 46.05 The rules do not specify who should remedy the irregularity. If the holder presented the subsequent designation directly to the International Bureau, then clearly he has to remedy the irregularity. If the subsequent designation was presented by an Office, that Office may remedy the irregularity. Indeed, depending on the nature of the irregularity, it may be difficult or even impossible for the holder to remedy the irregularity himself (for example, if the Office has not signed the subsequent designation or has not indicated the date when it received the request to present it). Where, therefore, a holder is notified by the International Bureau that there is an irregularity in a subsequent designation which has been presented through an Office, he would be well advised to contact that Office to ensure that the irregularity will be remedied in good time. | |
| Rule 24(5)(c) | 46.06 An exception to the general rule relating to irregularities is made in the case where the International Bureau considers that the holder is not entitled to make the subsequent designation with respect to some or all of the Contracting Parties mentioned (see paragraphs B.II.39.01 to 39.04). Where the lack of entitlement applies to only some of the Contracting Parties mentioned, the subsequent designation will be deemed not to contain the designation of those Contracting Parties; the respective complementary or individual fees paid in respect of them will be refunded. Where the deficiency applies to all the Contracting Parties mentioned, the subsequent designation is considered to be abandoned. In addition to all the complementary and individual fees, the International Bureau will also reimburse one half of the basic fee. |
Recording, Notification and Publication |
Rule 24(8) |
47.01 Where the International Bureau finds that the subsequent designation conforms to the applicable requirements, it will record it in the International Register and notify the Office of the Contracting Party that has been designated. It will at the same time inform the holder and, if the subsequent designation was presented through an Office, that Office. |
| Rule 32(1)(a)(v) | 47.02 The subsequent designation will be published in the Gazette. Where the date of the subsequent designation, as determined in accordance with Rule 24(6) (see paragraphs B.II.45.01 to 45.06) is not more than six months after the priority date of the international registration, the information concerning the declaration of priority will be included in the publication of the subsequent designation. |
| Rule 6(3) | 47.03 The subsequent designation will be recorded and published in English, French and Spanish. As regards international registrations that, under the previous versions of Rule 6, were published only in French, or were published only in English and French, they will be published in English and Spanish and republished in French, or published in Spanish and republished in English and French, respectively (see paragraphs B.I.07.05 to 07.07). That subsequent designation itself will be recorded in the International Register in English, French and Spanish. |
Period of Protection |
Rule 31(2) |
48.01 The period of protection under the subsequent designation expires on the same date as the international registration. For example, if an international registration has already been registered for eight years (or the last installment of fees was paid eight years ago), the fees to be paid for a subsequent designation will cover a period of only two years. This means that the date of renewal of the international registration (or the date of payment of the renewal fees) is the same for all designations contained in the international registration, irrespective of the date on which the designations were recorded (see also paragraph B.II.45.04). |
| Rule 40(3)(a) | 48.02 Where an international registration was effected before the entry into force of the Common Regulations (April 1, 1996) and the required fees had been paid for 20 years and a subsequent designation is made during the first 10 years of this period, fees paid in respect of the subsequent designation will cover only the remainder of that 10-year period. At the end of that period, it will be necessary to pay the appropriate complementary and/or individual fees in respect of the second 10-year period (see also paragraphs B.II.71.01 and 71.02). |
Refusal of Protection |
Rule 24(9) |
48.03 The refusal of protection, by a designated Contracting Party, of a subsequent designation follows the same procedures as for the refusal of protection of a designation contained in the international application. Rules 16 to 18 therefore apply mutatis mutandis, it being understood that the time limit for a Contracting Party to notify a refusal of protection starts from the date on which the International Bureau has notified the subsequent designation to the Office of that Contracting Party. The comments made in paragraphs B.II.33.01 to 37.07 are referred to. |
A Particular Case of Subsequent Designation: Subsequent Designation Resulting from the Conversion of the Designation of a Contracting Organization (the European Community) |
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48.05 The effect of a conversion is that the national trademark application resulting from conversion is allocated the same filing date as that of the Community trademark application or registration (and enjoys, if applicable, the same priority date and/or seniority claimed), provided in particular that the request for conversion is filed within the time limit prescribed by the Community legislation. |
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| Rule 24(7)(a) | 48.06 Having regard to this feature of the Community Trade Mark system, the Common Regulations provide that, where a Contracting Organization (in practice the European Community) is designated in an international registration and to the extent that such designation has been withdrawn, refused or has ceased to have effect, conversion may also be requested through a subsequent designation of its Member States under the Madrid system. This mechanism, offering the holder of an international registration the option of converting the designation of the European Community into either a national application filed directly with the Office of a Member State or a subsequent designation of that Member State under the Madrid system, is often referred to as the "opting-back" provision. |
| 48.07 As a general principle, subsequent designations resulting from conversion must comply with the requirements set out for "ordinary" subsequent designations (see paragraphs B.II.38.01 to 48.03), subject however to the following. |
Official Form and Contents |
Presentation of the Subsequent Designation Resulting from Conversion |
Date of Subsequent Designation Resulting from Conversion |
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