Guide to the International Registration of Marks

Part B: Chapter II

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CHAPTER II: THE INTERNATIONAL PROCEDURE

FACTS IN CONTRACTING PARTIES AFFECTING INTERNATIONAL REGISTRATIONS

Invalidation in a Designated Contracting Party
Restriction of the Holder's Right of Disposal
Licenses

Presentation of Request
Irregular Request
Recording and Notification
Declaration that the Recording of a Given License Has No Effect
Declaration that the Recording of Licenses in the International Register Has No Effect in a Contracting Party
Amendment or Cancellation of the Recording of a License

Replacement of National or Regional Registration by International Registration
Facts Concerning Seniority Claims

[Also in PART B, CHAPTER II:

Facts in Contracting Parties affecting International Registrations

83.01 The following paragraphs deal with facts in designated Contracting Parties other than the refusal of protection, which is covered in paragraphs B.II.33.01 to 37.07.

Invalidation in a Designated Contracting Party

Article 5(6)	84.01 Invalidation, by the competent authorities of a Contracting Party, of the effects, in the territory of that Contracting Party, of an international registration may not be pronounced without the holder having, in good time, been afforded the opportunity of defending his rights. Proceedings concerning such invalidation take place directly between the holder of the international registration, the party who has brought the action for invalidation and the competent authority concerned (Office or court). It may be necessary for the holder to appoint a local representative. The proceedings are governed entirely by the law and practice of the Contracting Party concerned.
	84.02 The procedures and substantive law governing such invalidation should be the same as for marks registered by the Office of that Contracting Party. For example, the protection of the mark may be revoked because the holder has not complied with provisions of the law of the Contracting Party concerning the use of the mark, or because the mark has been allowed to become generic or misleading, or because it has been established (for example, in proceedings brought by a third party, or in a counterclaim in infringement proceedings) that protection ought to have been refused when the designation was originally examined.
Rule 19 Rule 32(1)(a)(x)	84.03 Where the effects of an international registration are invalidated (in whole or in part) in a Contracting Party, and the invalidation is no longer subject to any appeal, the Office of that Contracting Party must notify the International Bureau of the relevant facts, namely: - the authority (for example, the Office or a particular court) which pronounced the invalidation, the date on which it was pronounced and the fact that it is no longer subject to appeal; - the number of the international registration and the name of the holder; - if the invalidation does not concern all the goods and services, those which are concerned (either by indicating those goods and services which are no longer covered or those which are still covered); - the date on which the invalidation was pronounced and its effective date. The International Bureau records the invalidation in the International Register, as of the date of receipt of a notification complying with the applicable requirements, together with the data contained in the notification, and informs accordingly the Office of origin, if that Office has informed the International Bureau that it wishes to receive such information, and the holder. It also publishes the invalidation in the Gazette.
Rule 1(xixbis) Rule 19(1)(vi)	84.04 In the Regulations, the term "invalidation" means any decision by a competent authority (whether administrative or judicial) of a designated Contracting Party revoking or canceling the effects, in the territory of that Contracting Party, of an international registration with regard to all or some of the goods or services covered by the designation of that Contracting Party. For this reason, an Office should notify not only the date on which the invalidation was pronounced but also, wherever possible, the effective date of the invalidation.

Restriction of the Holder's Right of Disposal

Rule 20(1)	85.01 With effect from April 1, 2002, the scope of this provision has been greatly expanded. The holder, or the Office of the Contracting Party of the holder, may inform the International Bureau that the holder's right to dispose of the international registration has been restricted. Such restriction may apply to the international registration as a whole or in respect of only some of the designated Contracting Parties; in the latter case, this should be specified in the information given to the International Bureau. Similarly, the Office of a designated Contracting Party may inform the International Bureau that the holder's right of disposal has been restricted but, in this case, the information may only relate to a restriction in the territory of that Contracting Party. Such information should consist of a summary statement of the main facts concerning the restriction - for example, that it results from a court order concerning the disposal of the assets of the holder. This statement should be brief, and in a form suitable for recording in the International Register. Copies of court decisions or deeds should not be sent to the International Bureau. The International Bureau cannot however act on the basis of such information coming from a source other than the holder or an Office, for example, from a third party.
Rule 20(2)	85.02 An example of a reason for such a restriction would be that the extension of the international registration in that Contracting Party has been given as security or is the subject of a right in rem, or that there is a court order concerning the disposal of the assets of the holder. However, this provision does not apply to licenses, which are the subject of a separate provision (see paragraphs B.II.86.01 to 86.21).
	85.03 Where the International Bureau has been informed of a restriction in accordance with this provision, the party that communicated the information should similarly inform the International Bureau of any partial or total removal of the restriction.
Rule 20(3) Rule 32(1)(a)(xi)	85.04 The International Bureau records any information communicated about restrictions and their removal in the International Register, as of the date of its receipt, provided that the communication complies with the applicable requirements and informs, accordingly, the holder, the Office of the Contracting Party of the Holder and the Offices of the designated Contracting Parties concerned. The information is also published in the Gazette.

Licenses

86.01 Some Contracting Parties provide for the recording at the national level of licenses in respect of international marks, such recording then having the same legal effect as does the recording of a license in respect of a national mark. With effect from April 1, 2002, however, it is possible for such licenses to be recorded in the International Register, thereby relieving holders of international registrations from the need to take such action with the Office of each Contracting Party in respect of which a license has been granted.

Presentation of Request

Rule 20bis(1)	86.02 A request to record a license may be presented to the International Bureau either directly by the holder or through the Office of the Contracting Party of the holder or a Contracting Party in respect of which the license is granted. The request must be signed by the holder or by the Office through which it is presented. No supporting documents, such as copies of the license agreement, should be sent to the International Bureau.
	86.03 A licensee who wishes to have his license recorded in the International Register may ask the Office of his Contracting Party to present the request. That Office may take whatever measures it considers appropriate in order to verify that the person concerned is entitled to be recorded as a licensee. The International Bureau cannot however accept such a request from the licensee (who is a person unknown to the International Bureau) which is not signed by either the holder or an Office.
Rule 20(bis)(1)(b) A.I. Section 4(f)	86.04 The request must be presented on the official form (MM13) and must indicate - the number of the international registration concerned, - the name of the holder, - the name and address of the licensee, given in accordance with the guidelines concerning the name and address of the applicant (paragraphs B.II.09.01 and 09.02), - the designated Contracting Parties with respect to which the license is granted, - that the license is granted for all the goods and covered by the international registration, or the goods and services for which the license is granted, grouped in the appropriate classes of the International Classification of Goods and Services.
	86.05 The above list is based on the indications or elements listed in Article 2 of the Joint Recommendation Concerning Trademark Licenses adopted by the General Assembly of WIPO and the Assembly of the Paris Union in September 2000³, and in Rule 10 of the Regulations under the Singapore Treaty on the Law of Trademarks⁴. Those indications or elements which do not appear pertinent in the framework of the recording of licenses at the international level have not been included.
Rule20 bis(1)(c)	86.06 The request may also indicate - where the licensee is a natural person, the State of which the licensee is a national, - where the licensee is a legal entity, the legal nature of that entity and the State (and, where applicable, the territorial unit within that State) under the law of which the said legal entity has been organized, - that the license concerns only a part of the territory of a specified designated Contracting Party, - where the licensee has a representative, the name and address of the representative, given in accordance with the Administrative Instructions, - where the license is an exclusive license or a sole license, that fact⁵, - where applicable, the duration of the license.
	86.07 The list in the preceding paragraph comprises additional elements which may be required by some designated Contracting Parties with respect to which the license is granted.
	86.08 The recording of a license is subject to the payment of the fee specified in the Schedule of Fees. It is possible for a single request to cover several international registrations in the name of the same holder where the facts to be recorded (licensee, Contracting Parties and goods and services concerned) are the same, though the fee will need to be paid for each international registration mentioned in the request.

Irregular Request

Rule 20bis(2)(a)

86.09 If the request for the recording of a license does not comply with the applicable requirements, the International Bureau will notify that fact to the holder and, if the request was presented by an Office, to that Office.

Rule 20bis(2)(b)

86.10 If the irregularity is not remedied within three months from the date of the notification of the irregularity by the International Bureau, the request will be considered abandoned, and the International Bureau will notify accordingly and at the same time the holder and, if the request was presented by an Office, that Office, and refund any fees paid, after deduction of an amount corresponding to one-half of the relevant fees to the party having paid those fees.

Recording and Notification

Rule 20bis(3)

86.11 Where the request complies with the applicable requirements, the International Bureau will record the license in the International Register, as of the date of receipt of a request complying with the applicable requirements, together with the information contained in the request, notify accordingly the Offices of the designated Contracting Parties in respect of which the license is granted and inform at the same time the holder and, if the request was presented by an Office, that Office.

Declaration that the Recording of a Given License Has No Effect

Rule 20bis(5)

86.12 The Office of a designated Contracting Party which is notified by the International Bureau of the recording of a license in respect of that Contracting Party may declare that the recording of that license has no effect in the said Contracting Party. Such a declaration may be made, on a case-by-case basis, where the law of the Contracting Party concerned recognizes the effects of licenses recorded in the International Register but there are objections with respect to a particular license, for example, on the ground that the public could be misled.

86.13 The declaration must indicate:

(i) the reasons for which the recording of the license has no effect,

(ii) where the declaration does not affect all the goods and services to which the license relates, those which are affected by the declaration or those which are not affected by the declaration,

(iii) the corresponding essential provisions of the law, and

(iv) whether such declaration may be subject to review or appeal.

86.14 The declaration must be sent to the International Bureau before the expiry of 18 months from the date on which the notification of the recording of a license was sent to the Office concerned. The International Bureau will record the declaration in the International Register, as of the date of receipt of a communication complying with the applicable requirements, and notify accordingly the party (holder or Office) that presented the request to record the license. Any final decision relating to a declaration should also be notified by the Office to the International Bureau, which will record it in the International Register and notify accordingly the party (holder or Office) that presented the request to record the license.

Declaration that the Recording of Licenses in the International Register Has No Effect in a Contracting Party

Rule 20bis(6)(a)

86.15 The Office of a Contracting Party whose law does not provide at all for the recording of trademark licenses may notify the Director General that the recording of licenses in the International Register has no effect in that Contracting Party.

Rule 20bis(6)(b)

86.16 The Office of a Contracting Party whose law does provide for the recording of trademark licenses but does not recognize the effects of licenses recorded in the International Register may notify the Director General that the recording of licenses in the International Register has no effect in that Contracting Party.

Rule 32(2)(i)

86.17 Any notification made as described in the above paragraphs are published in the Gazette. A holder or licensee will therefore be aware that a request to record a license in respect of a Contracting Party that has made such a notification will have no legal effect. The International Bureau will nonetheless proceed with the recording and will notify the Office of the Contracting Party concerned. There is no need for that Office to issue a declaration as described in paragraphs B.II.86.12 to 86.14 since, by virtue of the general notification under Rule 20bis(6)(a) or (b), it is to be understood that the recording has no legal effect in that Contracting Party.

Amendment or Cancellation of the Recording of a License

Rule 20bis(4)	86.18 After the recording of a license, the holder or the licensee may wish to amend some details concerning the license (for example its duration). The request must be made on the official form (MM14). Paragraphs B.II.86.02 to 86.06 apply.
	86.19 Where a new licensee is to be recorded in respect of an international registration, this request is not considered as an amendment of a license but as a request for the recording of a new license and should be filed on form MM13.
	86.20 Paragraphs B.II.86.02 and 86.03 also apply to the request for cancellation of the recording of a license. The request must be made on the official form (MM15). Once the cancellation has been requested, the license will be removed from the International Register. There is no fee for the cancellation of the recording of a license.
	86.21 Where several licenses are recorded in respect of a given international registration, any request to amend or cancel the recording of license should specify clearly and unambiguously to which license the request relates.

Replacement of National or Regional Registration by International Registration

Article 4bis(1)	87.01 Article 4bis of the Agreement and of the Protocol provides that a mark that is the subject of a national or regional registration in the Office of a Contracting Party is, under certain conditions, deemed to be replaced by an international registration of the same mark. These conditions are: - both the national or regional registration and the international registration must be in the name of the same holder; - the protection of the international registration extends to the Contracting Party in question; - all the goods and services listed in the national or regional registration are also listed in the international registration in respect of that Contracting Party; - the extension of the international registration to that Contracting Party (which may be a subsequent designation) takes effect after the date of the national or regional registration.
	87.02 Furthermore, it is expressly stated that such effect is without prejudice to any rights acquired by virtue of the earlier national or regional registration (for example, rights resulting from a priority claim or from prior use of the mark).
	87.03 It is up to the holder to satisfy himself whether, in a given case, these conditions are actually fulfilled, in particular, the requirement that all the goods and services listed in the national or regional registration must also be listed in the international registration. Clearly, the international registration need not have an identical list of goods and services; the list can be broader in scope. However, it cannot be narrower. Furthermore, the names used in the international registration must, at least in their meaning, be equivalent.
	87.04 The reference to the international registration being deemed to replace the national or regional registration is not to be taken as meaning that that registration is suspended or otherwise affected. It remains on the register of the Contracting Party concerned, with all the rights attaching to such a registration, as long as it is renewed by its holder.
Article 4bis(2)	87.05 The Office in whose national or regional register the mark is recorded is required, upon request by the holder (made direct to that Office), to take note in its register of the international registration. This should not be interpreted as a mandatory requirement in order to benefit from replacement. The wording of Article 4bis(1) clearly provides that the replacement is deemed to take place automatically, without any action by the holder being necessary and without any record having to be made of the replacement. It is however advisable, for the information of third parties, to request that the Office take note of the international registration in its register.
	87.06 Notwithstanding replacement of a national or regional registration, it will be in the interest of the holder of the international registration to renew the national or regional registration during the five-year period during which the international registration is dependent on the fate of the basic application, the registration resulting therefrom or the basic registration.
Rule 21 Rule 32(1)(a)(xi)	87.07 Where the Office of a designated Contracting Party has taken note in its Register, following a request made by the holder with that Office, that a national or regional registration has been replaced by an international registration, that Office must notify the International Bureau accordingly. Such notification must indicate the number of the international registration, the filing date and number, the registration date and number and the priority date (if any) of the national or regional registration which has been replaced and, where the replacement concerns only some of the goods and services listed in the international registration, those goods and services. In addition, the notification should include information relating to any other rights acquired by virtue of the national or regional registration, in a form agreed between the International Bureau and the Office concerned. The International Bureau records the indications so notified in the International Register, as of the date of receipt of a notification complying with the applicable requirements, and informs the holder accordingly. It also publishes them in the Gazette.

Facts Concerning Seniority Claims

Rule 21bis(1)	88.01 Where a claim of seniority has been recorded in the International Register in respect of a designation of the European Community (see paragraphs B.II.17.08 to 17.10), such claim is examined by OHIM, which may either accept or refuse it, in accordance with its applicable legislation. Where OHIM refuses the validity of such claim, and to the extent that the corresponding decision is final, that fact must be notified to the International Bureau. On the other hand, where the seniority claim is accepted by OHIM, there is not any necessity for the International Bureau to be notified, since the recording of the seniority claim in the International Register and its publication in the Gazette would not require any modification.
Rule 21bis(2)	88.02 The Community Trade Mark Regulation allows for a seniority claim to be made subsequently to a Community trademark registration. Where the European Community is designated in an international registration, any such "late" seniority claim must be presented directly with OHIM. Moreover, if such seniority claim is refused by OHIM following its examination, there is no corresponding notification by OHIM to the International Bureau (since there is nothing to be recorded in the International Register). It is therefore only where a late seniority claim has been accepted by OHIM that the relevant information must be notified to the International Bureau. The matters which must be notified are as follows: (i) the number of the international registration concerned, (ii) the Member State or Member States in or for which the earlier mark is registered, together with the date from which the registration of that earlier mark was effective, and the number of the relevant registration.
Rule 21bis(3)	88.03 Under the Community Trade Mark system, a seniority claim which has been accepted by OHIM may subsequently cease to have effect (following, in particular, a withdrawal or a cancellation). Therefore, where the corresponding seniority claim has already been recorded in the International Register, any further final decision affecting such claim, including withdrawal and cancellation, must be notified by OHIM to the International Bureau.
Rules 21bis(4) and 32(1)(a)(xi)	88.04 All information notified to the International Bureau under the above paragraphs is recorded in the International Register and published in the Gazette.

³ WIPO publication No. 835.

⁴ WIPO publication No. 259.

⁵ Where there is no indication that a license is exclusive or sole, it may be considered that the license is non-exclusive (interpretative statement endorsed by the Assembly of the Madrid Union when adopting Rule 20bis).

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