Guide to the International Registration of Marks

Part B: Chapter II

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CHAPTER II: THE INTERNATIONAL PROCEDURE

Ceasing of Effect during the Dependency Period

Ceasing of Effect of the Basic Application or Registration
Procedure for Notification of Ceasing of Effect
Change in Ownership of the International Registration during the Dependency Period
Division or Merger of the Basic Application, the Registration Resulting therefrom or the Basic Registration

Transformation

Transformation following Change in the Applicable Treaty

[Also in PART B, CHAPTER II:

Dependence and Independence

Ceasing of Effect during the Dependency Period

	77.01 For a period of five years from the date of the international registration, the protection resulting from the international registration remains dependent on the mark registered or whose registration has been applied for with the Office of origin (basic application, registration resulting therefrom, or basic registration). The protection resulting from the international registration may no longer be invoked if, or to the extent that, the basic registration, or the registration resulting from the basic application is canceled, renounced, revoked, invalidated or has lapsed, or if the basic application is the subject of a final decision of rejection or is withdrawn, either within that five-year period or as a result of an action commenced within that period.
	77.02 This dependence is absolute, and is effective regardless of the reasons why the basic application is rejected or is withdrawn or the basic registration ceases to enjoy, in whole or in part, legal protection. The process by which an international registration may be defeated for all countries in which it is protected, by means of a single invalidation or revocation action against the basic registration has become generally known by the term "central attack".
	77.03 Under the Protocol, there is an increased risk of the holder who chooses to base his international registration on an application with the Office of origin losing his protection as a result of the basic application ceasing to have effect. This need not be the result of a "central attack", in the sense of an action brought by a third party. The basic application may be refused protection, totally or partially, on absolute grounds or because of the existence of a prior right cited ex officio in the examination procedure, or as a result of an opposition by the holder of such earlier right in that territory. In all these cases, and provided the decision in respect of the basic application is final (that is, no longer subject to review or appeal), the Office of origin is required to request the International Bureau to cancel the international registration, either totally or partially.
	77.04 In order to soften the consequences of the five-year dependency feature of the Madrid system, the Protocol provides for the holder of an international registration which is canceled as a result of the ceasing of effect of the basic application, the registration resulting therefrom, or the basic registration to apply, within three months of the date of the cancellation of the international registration in the International Register, for registration of the same mark with the Offices of all Contracting Parties whose designation are governed by the Protocol where the international registration had effect. The national or regional applications resulting from this so-called "transformation" are treated as if they had been filed on the date of the original international registration. (For details, see paragraphs B.II.82.01 to 82.07.)
	77.05 Although an international application must be filed by the person who is the holder of the national or regional registration or application on which it is based, the validity of an international registration is not affected if it and the national or regional registration or application subsequently become owned by different persons. It does not even matter if the national or regional application or registration is transferred to a person who would not qualify to be the holder of an international registration. Since however the international registration continues to be dependent on the fate of the basic mark, the holder of an international registration runs a risk if, during the five-year dependency period, he does not control the basic mark (see paragraph B.II.80.01).
Article 6(2)	77.06 At the end of the five-year dependency period, the international registration becomes independent of the basic mark (subject to paragraphs B.II.78.01 to 78.03). It should be noted that there is no separate dependency for subsequent designations; the only dependency period is the one which runs from the date of the international registration.

Ceasing of Effect of the Basic Application or Registration

Article 6(3)

78.01 The protection resulting from the international registration may no longer be invoked if, before the expiry of five years from the date of the international registration, the basic application or the registration resulting therefrom or the basic registration no longer enjoys legal protection because it:

- has been withdrawn;
- has lapsed;
- has been renounced; or
- has been the subject of a final decision of rejection, revocation, cancellation or invalidation.

Where the ceasing effect of the basic application, of the registration resulting therefrom or of the basic registration is in respect of only some of the goods or services listed in the international registration, the protection of the international registration is restricted accordingly.

78.02 Under the Agreement, this provision applies also when legal protection has later ceased as the result of an action begun before the expiry of the period of five years. The Protocol contains a more detailed provision, which takes into account the possibility of a basic application; the same rules apply if:

- an appeal lodged within the five-year period against a decision refusing the effects of the basic application,
- an action started within the five-year period requesting the withdrawal of the basic application or the revocation, cancellation or invalidation of the registration resulting from the basic application or of the basic registration, or
- an opposition to the basic application which is filed within the five-year period,

results, after the expiry of the five-year period, in a final decision of rejection, revocation, cancellation or invalidation, or ordering the withdrawal, of the basic application, the registration resulting therefrom or the basic registration, as the case may be.

78.03 Furthermore the same rules apply under the Protocol if the basic application is withdrawn, or the registration resulting therefrom or the basic registration is renounced, after the expiry of the five-year period, in a case where, at the time of the withdrawal or renunciation, the application or registration was the subject of one of the proceedings referred to in the preceding paragraph, such proceeding having begun before the expiry of the five-year period. This provision prevents the holder of an international registration from frustrating the effects of central attack, when his basic application, the registration resulting therefrom or the basic registration has come under attack within the five-year period of dependency, by abandoning that application or registration after the end of that period but before an Office or a court has given a final decision on the matter.

Procedure for Notification of Ceasing of Effect

Rule 22(1)(a)	79.01 Where the basic application, the registration resulting therefrom or the basic registration has ceased to have effect within the five-year period of dependency, the Office of origin notifies the International Bureau the following facts and decisions: - the basic application is refused ex officio before the end of the period of five years from the date of the international registration, or such a refusal becomes final (for example, following an appeal) after the expiry of that period; - the basic application is refused as a result of an opposition which was begun before the expiry of that five-year period, whether or not such refusal becomes final before the end of that period; - the basic application has been withdrawn following a request made before the expiry of the five-year period; - the basic application has lapsed because of some event (for example, failure to comply with a procedural requirement of the Office of origin) before the expiry of the five year period, even if a decision concerning the lapsing of the application becomes final only after the end of that period; - the basic registration (or the registration resulting from the basic application) is renounced, canceled, revoked or declared to be invalid following a request made (whether by the holder or by another party) before the end of the five-year period, even if the renunciation, cancellation, revocation or invalidation becomes effective or final only after the expiry of that period; - the basic registration (or the registration resulting from the basic application) has lapsed (for example because of failure to pay renewal fees) before the end of the five-year period, even if a decision concerning the lapsing becomes final only after the end of that period.
Rule 22(1)(a)	79.02 Such notification must indicate the number of the international registration concerned and the name of the holder. The notification must also indicate the facts and decisions affecting the basic application (or the registration resulting therefrom) or the basic registration, and the effective date of those facts and decisions. By an indication of the facts and decisions is meant some statement such as: - application number [###] has been refused by a decision of the [name of Office] dated [date]; the period allowed for filing an appeal against this decision expired on [date]; - application number [###] has been withdrawn following a request dated [date]; - registration number [###] ceased on [date]; the period within which the registration could be restored expired on [date]; - by a decision of the [name of court] dated [date], registration number [###] was revoked with effect from [date]; the period allowed for filing an appeal against this decision expired on [date]. There is no need for the Office of origin to give the International Bureau any indication of the grounds for the refusal or other decision.
Rule 22(1)(a)(iv)	79.03 Where these facts and decisions affect only some of the goods and services covered by the international registration, the notification must indicate which goods and services are affected or which goods and services are not affected. The obligation of the Office of origin to notify relates to relevant facts and decisions; where therefore a refusal, withdrawal, cancellation etc., affects the basic application, the registration resulting therefrom or the basic registration only in respect of goods and services which are not covered by the international registration, no notification should be sent to the International Bureau.
Rule 6(2) Rule 6(2)(i) Rule 40(4)	79.04 In general, the notification may be in English, French or Spanish, at the option of the Office making the communication. However, for all international registrations resulting from applications filed before April 1, 2004, and pending the recording of the first subsequent designation: - if governed exclusively by the Agreement, French will continue as the sole language of notification. - if governed wholly or partly by the Protocol, French or English will continue as the languages of notification. 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 notification. (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.07.01 to 07.07).)
	79.05 The notification should not be sent until it is clear that there is no possibility of the ceasing of effect being reversed (but see also the following paragraph). For example, in the case of an administrative or judicial decision, the notification should not be sent until any appeal has been decided or until the period allowed for filing an appeal has expired. In particular, in the case of ceasing of effect of the registration resulting from the basic application or of ceasing of effect of the basic registration for failure to pay renewal fees, the notification should not be sent until any period of grace allowed for late payment, or for applying for restoration of the registration has expired.
Rule 22(1)(b)	79.06 Where however the Office of origin is aware that any of the following is pending at the end of the period of five years from the date of the international registration: - a judicial action concerning the basic registration; - an appeal against a decision refusing the basic application; - an action requesting withdrawal of the basic application; - an opposition to the basic application; - an action requesting the revocation, cancellation or invalidation of the basic registration, or of the registration resulting from the basic application; it should notify accordingly the International Bureau as soon as possible. Such notification should make clear that the action in question has not yet resulted in a final decision.
Rule 22(1)(c)	79.07 Where the Office of origin has sent a preliminary notification as referred to in the preceding paragraph, the Office should, once the decision has become final, promptly notify the International Bureau accordingly. Where the Office is not directly notified of the decision (where for example the decision is given by a court or similar authority), the Office should notify the International Bureau as soon as it becomes aware of the decision. For example, the Office may be informed about the decision by the holder or by another party to the proceedings.
Article 6(4)	79.08 Where applicable, the Office of origin will request the International Bureau to cancel the international registration to the extent applicable (that is, for those goods and services with respect to which the basic application, the registration resulting therefrom, or the basic registration has ceased to have effect).
	79.09 It is of course possible for an Office to notify the International Bureau only if it is aware of the action in question. This will be the case if the action is before that Office or is an appeal against a decision of the Office. The Office will however not necessarily be aware of an action brought by a third party before a court. It may be expected however that, where the decision is one which adversely affects the basic application, the registration resulting therefrom or the basic registration, and which thus requires cancellation of the international registration, the party who brought the action will bring it to the attention of the Office.
Rule 22(2)	79.10 The International Bureau records any notification in the International Register, and transmits copies of the notification to the holder and to the Offices of the designated Contracting Parties. Where the notification requests cancellation of the international registration, it will be so canceled, to the extent applicable; the International Bureau will notify accordingly the holder and the Offices of the designated Contracting Parties.
Rule 32(1)(a)(viii) Rule 32(1)(a)(xi)	79.11 Any cancellation of the international registration will be published and recorded, with an indication of the date of the cancellation. Similarly, any notification that an action begun before the end of the five-year period of dependence is still pending at the end of that period will be published in the Gazette.
	79.12 There is no official form for use by an Office of origin for requesting cancellation of an international registration. The form (MM8) for use by a holder for requesting cancellation should not be used by an Office.
	79.13 Where the notification does not comply with the requirements mentioned in paragraphs B.II.79.02 to 79.05, the International Bureau will inform the Office which sent it that it cannot record the ceasing of effect until the notification is put in order.

Change in Ownership of the International Registration during the Dependency Period

Article 6(3)

80.01 A change in ownership of the international registration or the basic mark (or both) during the five-year period of dependence has no influence on the effects of that dependence. The international registration remains dependent on the protection the basic mark in the Contracting Party whose Office is the Office of origin. Thus, for example, the international registration will cease to be protected if the basic registration or the registration resulting from the basic application is not renewed, or if the basic application is withdrawn or is refused by the Office of origin, even if it stands in the name of a person who is not the holder of the international registration.

Division or Merger of the Basic Application, the Registration Resulting therefrom or the Basic Registration

Rule 23	81.01 It may be possible for a national or regional application or registration on which an international registration is based to be divided into several applications or registrations by distributing among them the goods and services listed in the initial application or registration, or for several basic applications or basic registrations to be merged into a single application or registration. Where this is done during the five-year period of dependence of the international registration, the Office of origin must notify the International Bureau accordingly.
Rule 23(1)	81.02 This notification must indicate: - the number of the international registration concerned; where this is not yet available, the number of the basic application should be given instead (this will enable the International Bureau to identify the international registration concerned); - the name of the holder or applicant; - the number of each application resulting from the division of the basic application or the number of the application resulting from the merger.
Rule 23(3)	81.03 Similarly, the Office of origin must notify the International Bureau of a division of the basic registration or merger of the basic registrations, or of the registration(s) which resulted from the basic application(s), during this five-year period.
Rule 32(1)(a)(xi)	81.04 The International Bureau records the notification in the International Register and notifies the division or merger to the Offices of the designated Contracting Parties and to the holder of the international registration. The relevant data are published in the Gazette.
	81.05 The entry in the International Register will only record the fact that the basic application or the basic registration has been divided or that the basic applications or basic registrations have been merged. It will not mention the goods and services covered by each application or registration resulting from the division. The full particulars of those applications and/or registrations may be obtained from the Office of origin.
	81.06 Such division or merger has no legal effect on the international registration. The purpose of the notification by the Office of origin and its recording, notification and publication by the International Bureau is simply to provide the Offices of designated Contracting Parties and third parties with information concerning the situation of the basic mark during the period when the international registration is dependent on it.

Transformation

P Article 9quinquies	82.01 The effect of transformation of an international registration into one or more national or regional applications is that an application to the Office of a Contracting Party for the registration of a mark which was the subject of an international registration designating that Contracting Party will be treated by that Office as if it had been filed on the date of the international registration or, where that Contracting Party had been designated subsequently, the date of the subsequent designation. Where the international registration claimed priority, the national or regional application will benefit from that claim.
	82.02 Transformation may take place only where the international registration has been cancelled, in respect of all or some of the goods and services, at the request of the Office of origin, as described in paragraphs B.II.79.01 to 79.06. It is not available where the international registration has been canceled at the request of the holder.
	82.03 Transformation may take place with respect to any of the Contracting Parties in the territory of which the international registration had effect, that is any of the designated Contracting Parties in respect of which the international registration had not been the subject of a total refusal, invalidation or renunciation.
	82.04 In order to benefit from this provision, the national or regional application must be filed within three months of the date of cancellation of the international registration. The goods and services listed in the application must have been covered by the list in the canceled international registration (or in the canceled part of the international registration) in respect of the Contracting Party concerned.
	82.05 Apart from the special provisions regarding date, an application resulting from transformation is in effect an ordinary national or regional application. The application must be filed with the Office concerned. This filing is not governed by the Protocol or the Regulations, nor is the International Bureau involved in any way.
	82.06 It is up to each Contracting Party to determine the modalities for giving effect to such transformation into a national or regional application. It may require that such an application comply with all requirements that apply to national or regional applications filed with its Office, including requirements concerning fees. That is, it may require that the full amount of application and other fees be paid; alternatively, and particularly where the Office concerned has already received individual fees in respect of the international registration concerned, it may decide to provide for reduced fees in the case of such an application.
	82.07 Since transformation is provided for only in the Protocol (and not in the Agreement), its benefits can be claimed only in a Contracting Party whose designation is governed by the Protocol.

Transformation following Change in the Applicable Treaty

Rule 1bis

82.08 A change may occur in the treaty applicable to the recorded designation of a Contracting Party in the International Register (see paragraphs A.02.26 to 02.31). Since the possibility of transformation is provided for under the Protocol only, a holder will become entitled to request transformation, in the appropriate circumstances, following a change in the applicable treaty from the Agreement to the Protocol, provided that this change took place, at the latest, on the date of recording of the cancellation of the international registration.

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