Changes in the International Registration

Change of Name or Address of the Holder or of His Representative

Change of Name or Address of the Holder

Rule 25(1)(a)(iv)
A.I. Section 4(e)

49.01 A request to record a change in name or address of the holder must be presented to the International Bureau on the official form (MM9) established by the International Bureau (or on a form having the same contents and format).

Official Form (MM9)

50.01 The form for a request relating to a change of name and address of the holder must not be used where the change of name results from a change in ownership. In such a case, form MM5 should be used (see paragraphs B.II.59.01 to 65.02).

Item 1: International Registration Number

50.02 A single request may relate to several international registrations recorded in the name of the same holder. It is sufficient, for the purpose of the identification of the international registrations to which the request refers, to indicate the numbers of the respective registrations.

50.03 If, in respect of a given international registration, the number is not known (because the international registration has not yet been effected or notified to the holder), no other number should be given; the holder should wait until he is notified of the international registration number concerned and make a further request.

Item 2: Name of the Holder

50.04 The name of the holder as recorded in the International Register must be indicated.

Item 3: Change in Name and/or Address of the Holder

50.05 Spaces are provided in item 3 to indicate the new name, new address, new phone and facsimile numbers and new e-mail address. Only the information which has changed need be indicated. That is, where only the name has changed, it is sufficient to indicate the new name, leaving the other spaces blank; similarly, where only the address has changed, there is no need to repeat the name.

Rule 36(ii)

50.06 Where only the telephone and/or facsimile number has changed it is sufficient to indicate the new number(s). It should be noted that, where this is the only change to be recorded, no fee is payable for the request.

Item 4: Address for Correspondence

50.07 Space is provided to indicate an address for correspondence, if any, and if different from the address of the holder indicated in item 3.  If this item is not completed, an address for correspondence which may already have been recorded in the International Register is automatically disregarded by the International Bureau.

Item 5: Appointment of a Representative

50.08 The opportunity may be taken, in a request to record a change in the name or address of the holder, to appoint a representative.

50.09 Where there is no change in the representative already recorded, this item of the form should be left blank.

Item 6: Signature by the Holder or His Representative

Rule 25(1)(c)

50.10 Where the request is presented directly to the International Bureau, it must be signed by the holder (or his representative as recorded).

50.11 Where the request is presented to the International Bureau through an Office, that Office may require or permit the holder or his representative to sign the form. The International Bureau will not question the absence of a signature from this item.

Item 7: Signature of the Office

Rule 25(1)(c)

50.12 A request which is presented to the International Bureau by an Office must be signed by that Office. (If the holder submits a request directly to the International Bureau and produces his own form, he may omit item 6).

Fee Calculation Sheet

50.13 A request to record a change in the name or address of the holder (including a change concerning the address of correspondence) is subject to the payment of the fee specified in the Schedule of Fees, which covers any number of international registrations mentioned in the request. The payment may be made by any of the different means listed in part (b) of the fee calculation sheet. 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) of 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).

Change of Name or Address of the Representative

A.I. Section 5(a)
Rule 36(i)

50.14 A request to record a change in the name or address of the representative need not be made on an official form - a simple letter will suffice. An optional form (MM10) is however available for this purpose. This form is similar to the form (MM9) to be used for the request to record a change in the name or address of a holder. The main differences are that the name of the holder need not be indicated and that the change to be indicated, of course, relates to the name or address of the representative. The recording of a change in name or address of a representative is free of charge.

50.15 Form MM10 is to be used only to request the recording of the change in the name or address of a representative whose appointment has already been recorded. It may not be used to request the recording of the appointment of a new representative.

50.16 A single request may relate to several specified international registrations. The International Bureau cannot accept a request to record a change in the name or address of a representative which simply refers to all international registrations in the name of the same representative.

Irregular Requests

Rule 26

51.01 If a request to record a change in name or address of the holder or representative does not comply with the applicable requirements, the International Bureau notifies that fact to the holder and, if the request was presented through an Office, to that Office. The irregularity may be remedied within three months from the date of the notification. If this is not done, the request will be considered abandoned; any fee paid will be reimbursed to the party that paid it, after deduction of an amount corresponding to one half of the fee.

51.02 Where the request was presented through an Office, the holder should establish whether that Office intends to remedy the irregularity, or whether he must do this himself.

Recording, Notification and Publication

Rule 27(1)(a)
Rule 27(1)(b)

Rule 32(1)(a)(vii)

52.01 The International Bureau records the change of name or address in the International Register and notifies accordingly the Offices of the designated Contracting Parties. At the same time, it informs the holder and, where the request was presented by an Office, that Office. The change is recorded as of the date of receipt by the International Bureau of a request complying with the applicable requirements; however, where so requested, the change may be recorded after the recording of another change or cancellation or a subsequent designation in respect of the international registration concerned or after the renewal of the international registration. In addition, as regards a change in the name or address of the holder, the International Bureau publishes the relevant data in the Gazette.

Limitation, Renunciation and Cancellation

53.01 The holder may wish to have recorded one of the following restrictions in the protection of his international registration:

Effects and Consequences of Limitation, Renunciation or Cancellation

54.01 The recording of a limitation does not entail the removal of the goods and services concerned from the international registration as recorded in the International Register. The sole effect is that the international registration is no longer protected for the goods and services concerned in the Contracting Parties covered by the limitation. Even if a limitation of the list of goods and services has been recorded with effect for all designated Contracting Parties, the goods and services which have been the subject of a limitation may be made the subject of a subsequent designation. They are therefore taken into account when calculating any supplementary fees due on renewal. Similarly Contracting Parties in respect of which protection has been renounced can always be designated again.

Request for Recording

Rule 25(1)(a)
A.I. Section 4

55.01 A request to record a limitation, renunciation or cancellation must be presented to the International Bureau on the appropriate official form (MM6, MM7 or MM8) established by the International Bureau or on a form having the same contents and format.

Rule 25(1)(c)

55.02 Where a renunciation affects any Contracting Parties whose designation is, on the date of receipt of the request by the International Bureau, governed by the Agreement, the request must be presented to the International Bureau through the Office of the Contracting Party of the holder.

- if governed exclusively by the Agreement, French will continue as the sole language of communication, recording and publication.

- if governed wholly or partly by the Protocol, French and English will continue as the language of communication, recording and publication.

For international registrations resulting from applications filed between April 1, 2004, and August 31, 2008, and pending the recording of a subsequent designation:

- if governed exclusively by the Agreement, then, as above, French will continue as the sole language of communication, recording and publication.  (Registrations resulting from applications filed during this period and governed wholly or partly by the Protocol will enjoy the full trilingual regime, following the introduction of Spanish as from April 1, 2004.)

Presentation of Request to Record Renunciation of Cancellation following Change in Applicable Treaty

Rule 1bis

55.07 A change may occur in the treaty applicable to the recorded designation of a Contracting Party bound by both the Agreement and the Protocol (see paragraphs A.02.26 to 02.31).

Rule 25(1)(c)

55.08 Where a renunciation or a cancellation affects any of the Contracting Parties whose designation is governed by the Agreement, the request to record same must be presented to the International Bureau through the Office of the Contracting Party of the holder.

Official Form

56.01 Separate official forms (MM6, MM7 and MM8 respectively) are available for requesting the recording of a limitation, renunciation or cancellation. They are broadly similar and are described together, with the differences being commented on.

International Registration Number

56.02 The number(s) of the international registration(s) concerned should be indicated. A single request may relate to several international registrations, provided the scope of the limitation, renunciation or cancellation is the same for each; that is, the Contracting Parties affected are the same for each international registration (as is necessarily the case for cancellation) and either the change relates to the same goods and services for each registration or else (as is necessarily the case for renunciation) it relates to all the goods and services covered by each registration.

Holder

56.04 The name of the holder must be the same as the name recorded in the International Register.

Appointment of a Representative

56.05 The opportunity may be taken, in a request to record a limitation, renunciation or cancellation, to appoint a representative.

Contracting Parties

56.07 If a limitation of the list of goods and services is to apply to all the designated Contracting Parties, it is sufficient to check the relevant box under item 4 of form MM6. Otherwise those Contracting Parties in respect of which the limitation is to be recorded should be listed; where the request relates to several international registrations, this list will apply to all of them.

Goods and Services

56.09 In the case of a limitation, the scope of the limitation of the list of goods and services should be set out under item 5 of form MM6. Where any of the terms used to describe a particular good or service are to be replaced by another (narrower) term, it must be clearly indicated which terms are to be replaced by which. Whatever method is used to indicate the limitation, the goods and services must be grouped by classes, indicating the number of the respective class, and in the sequence of the numbers of the International Classification of Goods and Services.

Signature by the Holder or Representative

Rule 25(1)(d)

56.11 Where the request is presented directly to the International Bureau, it must be signed by the holder (or his representative).

56.12 Where the request is presented to the International Bureau through an Office, that Office may require or permit the holder or his representative to sign the form. The International Bureau will not question the absence of a signature from this item.

Signature of the Office

Rule 25(1)(c)

56.13 A request which is presented to the International Bureau by an Office must be signed by that Office. (If the holder submits a request directly to the International Bureau and produces his own form, he may omit this item).

Fee Calculation Sheet (Limitation Only)

56.14 A request to record a limitation is subject to the payment of the fee specified in the Schedule of Fees. Where the request relates to several international registrations, a fee must be paid with regard to each one of them. The payment may be made by any of the different means listed in part (b) of the fee calculation sheet. 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 to be paid or to be debited and the person (holder, representative or Office) making the payment or giving the instructions should be indicated in part (b).

Irregular Requests

Rule 26

57.01 If a request to record a limitation, renunciation or cancellation does not comply with the applicable requirements, the International Bureau notifies that fact to the holder and, if the request was presented through an Office, to that Office. The irregularity may be remedied within three months from the date of the notification. If this is not done, the request will be considered abandoned; any fee paid will be reimbursed to the party that paid it, after deduction of an amount corresponding to one half of the fee.

57.02 Where the request was presented through an Office, the holder should establish whether that Office intends to remedy the irregularity, or whether he must do this himself.

Recording, Notification and Publication

Rule 27(1)(a)
Rule 27(1)(a)
Rule 32(1)(a)(vii)
and (viii)
 

58.01 The International Bureau records the limitation, renunciation or cancellation in the International Register and notifies accordingly the Offices of those designated Contracting Parties concerned (necessarily all of them in the case of a cancellation). At the same time it informs the holder and, where the request was presented by an Office, that Office. The recording is made as of the date of receipt by the International Bureau of a request complying with the applicable requirements; where, however, the holder has so requested, it may be made after the recording of another change or cancellation or a subsequent designation in respect of the international registration concerned or after the renewal of the international registration. In addition, the International Bureau publishes the relevant data in the Gazette.

Rule 27(1)(b)

Declaration that a Limitation Has No Effect

Rule 27(5)(a) to (c)

58.03 The Office of a designated Contracting Party which is notified by the International Bureau of a limitation in the list of goods and services affecting it may declare that the limitation has no effect in its territory (in particular, because it considers that the change requested is not in fact a limitation but an extension of the list). Any such declaration must be sent to the International Bureau before the expiry of 18 months from the date on which that notification was sent to the Office concerned. In its declaration, the Office must indicate the reasons for which the limitation has no effect and where the declaration does not affect all the goods and services to which the limitation relates, those which are affected by the declaration or those which are not affected by the declaration, as well as the corresponding essential provisions of the law and whether the declaration is subject to review or appeal. The International Bureau will notify accordingly the party (holder or Office) that presented the request for the recording of the limitation.

Change in Ownership

59.01 The ownership of a trademark may change for various reasons and in different ways. A change in ownership may result from a contract, such as an assignment. Other reasons might be a court decision, or operation of law, such as an inheritance or bankruptcy. An automatic change in ownership can result from the merger of two companies.

Rule 1(xxi)

59.03 The Regulations do not distinguish between such different causes for, or different types of, change in ownership. Like Article 9 of the Protocol, they use the uniform terminology "change in ownership" for all cases. Until the change has been recorded in the International Register, the former owner of the international registration is referred to as the "holder", since this term is defined as the person or legal entity in whose name the international registration is recorded. The new owner is referred to as the "transferee". Once the change in ownership has been recorded, he of course becomes the holder of the international registration.

Entitlement of the Transferee to be the New Holder

60.01 The change in ownership may be recorded only if the transferee is a person who is entitled to file international applications. Moreover, his entitlement needs to be considered in respect of each of the Contracting Parties in respect of which he seeks to be recorded as the new holder of the international registration concerned.

Rule 25(2)(a)(iv)

60.02 In the request to record the change in ownership, the transferee must indicate the Contracting Party or Parties with respect to which he fulfills the conditions, under Articles 1(2) and 2 of the Agreement or under Article 2(1) of the Protocol, to be the holder of an international registration. In other words, the transferee must indicate the Contracting Party or Parties to the Agreement and/or the Protocol in which he has a real and effective industrial or commercial establishment or is domiciled, or the country which is party to the Agreement and/or Protocol (or which is a member State of an organization party to the Protocol) and of which he is a national. A transferee may claim the necessary connection with several Contracting Parties, some of which may be party to the Agreement and some to the Protocol.

60.03 The principles which determine whether a person may be recorded as the holder of an international registration in respect of a given designated Contracting Party are as follows:

60.04 The following examples will illustrate what is indicated in paragraphs B.II.60.02 and 60.03:

The transferee is a national of a State, bound only by the Protocol and has no domicile or establishment in any other country;

If, on the other hand, that same transferee also has a real and effective establishment in a Contracting Party bound by the Agreement, the change in ownership can be recorded with respect to all designated Contracting Parties.

Change of Applicable Treaty following the Recording of a Change in Ownership

60.08 It is possible for a designation which was governed by the Agreement to become governed by the Protocol, or vice versa, following a change in ownership of the international registration. (In this regard, see also paragraphs A.02.26 to 02.31.) For example, where a country which is party to both the Agreement and the Protocol was designated in an international application filed through the Office of a country party to the Agreement only, the designation will have been governed by the Agreement; if, subsequently, following a change in ownership of the international registration, the new owner's claim to be entitled to be the holder of an international registration is through a Contracting Party to both the Agreement and the Protocol, the designation will henceforth be governed by the Protocol (see paragraphs A.02.21 to 02.25). Such a change does not affect matters which are already completed, or procedures which have already started. Thus, matters such as the presentation of a request for renunciation or cancellation are governed by whichever was the applicable treaty at the time when the request in question was received by the International Bureau. Subsequent renewal of the international registration with respect to that Contracting Party will however, in the example given, be governed by the Protocol (however, as regards the liability to pay individual fees, see paragraph B.II.73.02).

Request to Record a Change in Ownership

Rule 25(1)(a)(i)
A.I. Section 4

61.01 A request to record a change in ownership must be presented to the International Bureau on the official form (MM5) established by the International Bureau or on a form having the same contents and format.

- if governed exclusively by the Agreement, French will continue as the sole language of communication, recording and publication.

- if governed wholly or partly by the Protocol, French and English will continue as the language of communication, recording and publication.

For international registrations resulting from applications filed between April 1, 2004, and August 31, 2008, and pending the recording of the first subsequent designation:

- if governed exclusively by the Agreement, then, as above, French will continue as the sole language of communication, recording and publication.  (Registrations resulting from applications filed during this period and governed wholly or partly by the Protocol will enjoy the full trilingual regime, following the introduction of Spanish as from April 1, 2004 (see also paragraphs B.I.07.02 to 07.07).)

Official Form

Item 1: International Registration Number

62.01 The number(s) of the international registration(s) concerned should be indicated. A single request may relate to several international registrations being transferred from the same holder to the same transferee provided that, for each of the international registrations concerned, the change applies to all the designated Contracting Parties, or to the same Contracting Parties, and that it concerns all the goods and services, or the same goods and services.

Item 2: Holder

62.03 The name of the holder must be the same as the name recorded in the International Register.

Item 3: Transferee

Rule 25(2)(a)(iii)

62.04 The name and address of the transferee should be given, following the guidelines concerning the name and address of the applicant in an international application (see paragraphs B.II.09.01 to 09.06).

Item 4: Entitlement of the Transferee to Be the Holder

Rule 25(2)(a)(iv)

62.05 There should be indicated, in the appropriate spaces, the Contracting Party or Parties of which the transferee is a national (or the name of the member State of a Contracting Organization of which he is a national), in which he is domiciled or in which he has a real and effective industrial or commercial establishment. Any or all of these spaces may be used, and more than one Contracting Party may be given in any one space. Where the transferee is domiciled or has an establishment in, a Contracting State which is also a member State of a Contracting Organization, both of these Contracting Parties may be indicated in any or all of the spaces, as appropriate.

Item 5: Appointment of a Representative

62.08 The opportunity may be taken, in a request to record a change in ownership, to appoint a representative. Item 5(a) of the form should be used where the recorded holder (the transferor) wishes to appoint a new representative (where the change of ownership is only partial). Where there is no change in the representative of the transferor already recorded, item 5(a) of the form should be left blank.

Rule 3(6)(a)

62.09 Item 5 should be used for the appointment of a representative of the new holder (the transferee). In the case of a total change in ownership, the recording of the representative of the transferor will be cancelled ex officio by the International Bureau. Where the person recorded as the representative of the transferor is to be recorded as the representative of the transferee, he should be reappointed by completing item 5.

Item 6: Scope of the Change in Ownership

62.10 If the change in ownership relates to all the designated Contracting Parties covered by the international registration, and to all the goods and services covered by the said registration, box (a) should be checked.

Item 7: Miscellaneous Indications

Rule 25(2)(b)

62.12 Where the transferee is a natural person, his nationality may be given under (a) (whether or not this information has already been given under item 4(a)). Where the transferee is a legal entity, the nature of the entity may be indicated, together with the State (and, where appropriate, the territorial unit within that State) in which it is incorporated. These indications are optional and their absence will not be questioned by the International Bureau (see paragraph B.II.09.08).

Item 8: Signature by the Holder or His Representative

Rule 25(1)(d)

62.13 Where the request is presented directly to the International Bureau, it must be signed by the holder (or his recorded representative).

Item 9: Signature of the Office

Rule 25(1)(d)

62.15 A request which is presented to the International Bureau by an Office must be signed by that Office. (If the holder submits a request directly to the International Bureau and produces his own form, he may omit item 9.)

Fee Calculation Sheet

62.16 A request to record a change in ownership is subject to the payment of the fee specified in the Schedule of Fees. Where the request relates to several international registrations, a fee must be paid with regard to each one of them. The payment may be made by any of the different means listed in the third part of the fee calculation sheet. 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).

Irregular Requests

Rule 26

63.01 If a request to record a change in ownership does not comply with the applicable requirements, the International Bureau notifies that fact to the holder and, if the request was presented through an Office, to that Office. The irregularity may be remedied within three months from the date of the notification. If this is not done, the request will be considered abandoned; any fee paid will be reimbursed to the party that paid it, after deduction of an amount corresponding to one half of the fee.

63.02 Where the request was presented through an Office, the holder or the transferee should establish whether that Office intends to remedy the irregularity, or whether he must do this himself.

Recording, Notification and Publication

Rule 27(1)(a)

64.01 The International Bureau records the change in ownership in the International Register and notifies accordingly the Offices of the designated Contracting Parties in respect of which the international registration has been transferred. At the same time it informs the holder and, where the request was presented through an Office, that Office. The International Bureau will also inform the former holder (in the case of a total change in ownership) or the holder of the part of the international registration which has been assigned or otherwise transferred (in the case of a partial change in ownership).

Rule 27(1)(b)
Rule 32(1)(a)(vii)
Rule 6(3)

Partial Change in Ownership

A.I. Section 16

65.01 Where a request is made to record a change in ownership of an international registration in respect of some only of the goods and services or some only of the designated Contracting Parties, the change will be recorded in the International Register under the number of the international registration concerned. Where the change relates to all the designated Contracting Parties, the goods and services that are the subject of the change in ownership will be canceled from the international registration. The part which has been transferred will be recorded as a separate international registration, which will bear the same number as the registration of which a part has been transferred, together with a capital letter. The publication in the Gazette consists of the part of the international registration which has been transferred (with, inter alia, the reproduction of the mark, the list of goods and services and the designated Contracting Parties concerned).

65.02 Either of the resulting separate international registrations may be the subject of a subsequent total or partial change in ownership.

Merger of International Registrations following Change in Ownership

Rule 27(3)

66.01 Where the same party has been recorded as the holder of two or more international registrations of the same mark resulting from a partial change in ownership, that party may request the International Bureau to record the merger of the international registrations.

66.04 The international registration resulting from the merger will bear the number of the international registration of which a part had been assigned, together, where applicable, with a capital letter. The following examples may explain this:

Declaration that a Change in Ownership Has No Effect

67.01 The validity of a change in ownership of an international registration in respect of a particular Contracting Party is governed by the law of that Contracting Party. In particular, where the change in ownership is for only some of the goods and services, a designated Contracting Party has the right to refuse to recognize the validity of the change if the goods and services included in the part transferred are similar to those remaining in the name of the holder. This possibility is expressly mentioned in Article 9ter(1) of the Agreement. This might be done where the transferee is a person or legal entity which, under the law of that Contracting Party, is not entitled to own marks. Or it may be done because the law of the Contracting Party concerned does not allow a transfer which, in its view, would be of such a nature as to mislead the public.

Rule 27(4)(a) to (c)

67.02 The Office of a designated Contracting Party which is notified by the International Bureau of a change in ownership affecting it may therefore declare that the change in ownership has no effect in its territory. Any such declaration must be sent before the expiry of 18 months from the date on which the notification of the change of ownership was sent to the Office concerned. In its declaration, the Office must indicate the reasons for which the change in ownership has no effect, the corresponding essential provisions of the law and whether the declaration is subject to review or appeal (it being noted that, where the designation of the Contracting Party concerned is governed by the Agreement, the grounds on which a partial change in ownership may be declared as having no effect are limited to the grounds specified in Article 9ter(1) of the Agreement). The Office notifies such declaration to the International Bureau which will notify accordingly the party (holder or Office) that presented the request for the recording of the change and the new holder.

Rule 27(4)(d) and (e)
A.I. Section 18
Rule 32(1)(a)(xi)

Corrections in the International Register

Rule 28(1)

68.01 Where the International Bureau considers that there is an error concerning an international registration in the International Register, it corrects that error ex officio. It will also correct such an error on request of the holder or of an Office.

68.02 Before giving effect to a request for the correction of an error, the International Bureau must be satisfied that the International Register is in fact incorrect. Its practice is as follows:

Rule 28(4)

68.03 With effect from April 1, 2002, an error which is attributable to an Office and the correction of which would affect the rights deriving from the international registration may be corrected only if a request for correction is received by the International Bureau within nine months from the date of publication of the erroneous entry in the International Register. This time limit does not apply to errors made by the International Bureau, since the document on which the entry containing the error was based has always been in the custody of the International Bureau. Nor does it apply to non-substantive errors such as those concerning the name or address of the holder or obvious mistakes in the list of goods and services.

Refusal Following a Correction

Rule 28(3)

68.05 Any Office so notified may declare in a notification to the International Bureau that protection cannot, or can no longer, be granted to the international registration as corrected. This may be done where there are grounds for refusal of the international registration as corrected which did not apply to the international registration as originally notified to the Office concerned.

No Other Change in the International Register

69.01 No other changes affecting the mark that is the subject of an international registration may be recorded in the International Register (see however, below, the section entitled "Facts in Contracting Parties Affecting International Registrations" as regards the recording of such facts in the International Register).