Effects of international registrations designating the Union
1. An international registration designating the Union shall, from the date of its registration pursuant to Article 3(4) of the Madrid Protocol or from the date of the subsequent designation of the Union pursuant to Article 3 ter (2) of the Madrid Protocol, have the same effect as an application for an EU trade mark.
2. If no refusal has been notified in accordance with Article 5(1) and (2) of the Madrid Protocol or if any such refusal has been withdrawn, the international registration of a mark designating the Union shall, from the date referred to in paragraph 1, have the same effect as the registration of a mark as an EU trade mark.
3. For the purposes of applying Article 11 of this Regulation, publication of the particulars of the international registration designating the Union pursuant to Article 190(1) shall take the place of publication of an EU trade mark application, and publication pursuant to Article 190(2) shall take the place of publication of the registration of an EU trade mark.
Publication
1. The Office shall publish the date of registration of a mark designating the Union pursuant to Article 3(4) of the Madrid Protocol or the date of the subsequent designation of the Union pursuant to Article 3 ter (2) of the Madrid Protocol, the language of filing of the international application and the second language indicated by the applicant, the number of the international registration and the date of publication of such registration in the Gazette published by the International Bureau, a reproduction of the mark and the numbers of the classes of the goods or services in respect of which protection is claimed.
2. If no refusal of protection of an international registration designating the Union has been notified in accordance with Article 5(1) and (2) of the Madrid Protocol or if any such refusal has been withdrawn, the Office shall publish this fact, together with the number of the international registration and, where applicable, the date of publication of such registration in the Gazette published by the International Bureau.
Seniority claimed in an international application
1. The applicant for an international registration designating the Union may claim, in the international application, the seniority of an earlier trade mark registered in a Member State, including a trade mark registered in the Benelux countries, or registered under international arrangements having effect in a Member State, as provided for in Article 39.
2. The documentation, as specified in the implementing act adopted pursuant to Article 39(6), in support of the seniority claim shall be submitted within three months of the date on which the International Bureau notifies the international registration to the Office. In this regard, Article 39(7) shall apply.
3. Where the holder of the international registration is obliged to be represented before the Office pursuant to Article 119(2), the communication as referred to in paragraph 2 of this Article shall contain the appointment of a representative within the meaning of Article 120(1).
4. Where the Office finds that the seniority claim under paragraph 1 of this Article does not comply with Article 39, or does not comply with the other requirements laid down in this Article, it shall invite the applicant to remedy the deficiencies. If the requirements referred to in the first sentence are not satisfied within the time limit specified by the Office, the right of seniority in respect of that international registration shall be lost. If the deficiencies concern only some of the goods and services, the right of seniority shall be lost only in so far as those goods and services are concerned.
5. The Office shall inform the International Bureau of any declaration of a loss of the right of seniority pursuant to paragraph 4. It shall also inform the International Bureau of any withdrawal or restriction of the seniority claim.
6. Article 39(5) shall apply, unless the right of seniority is declared lost pursuant to paragraph 4 of this Article.
Seniority claimed before the Office
1. The holder of an international registration designating the Union may, as from the date of publication of the effects of such registration pursuant to Article 190(2), claim at the Office the seniority of an earlier trade mark registered in a Member State, including a trade mark registered in the Benelux countries, or registered under international arrangements having effect in a Member State, as provided for in Article 40.
2. When the seniority is claimed before the date referred to in paragraph 1, the seniority claim shall be deemed to have been received by the Office on that date.
3. A seniority claim under paragraph 1 of this Article shall fulfil the requirements referred to in Article 40 and shall contain information to enable its examination against those requirements.
4. If the requirements governing the claiming of seniority referred to in paragraph 3 and specified in the implementing act adopted pursuant to paragraph 6 are not fulfilled, the Office shall invite the holder of the international registration to remedy the deficiencies. If the deficiencies are not remedied within a period to be specified by the Office, the Office shall reject the claim.
5. Where the Office has accepted the seniority claim, or where a seniority claim has been withdrawn or cancelled by the Office, the Office shall inform the International Bureau accordingly.
6. The Commission shall adopt implementing acts specifying the details to be contained in a seniority claim under paragraph 1 of this Article and the details of the information to be notified pursuant to paragraph 5 of this Article. Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 207(2).
Designation of goods and services and examination as to absolute grounds for refusal
1. International registrations designating the Union shall be subject to examination as to their conformity with Article 33(2), (3) and (4) and to absolute grounds for refusal in the same way as applications for EU trade marks.
2. Where an international registration designating the Union is found to be ineligible for protection pursuant to Article 33(4) or Article 42(1) of this Regulation for all or any part of the goods and services for which it has been registered by the International Bureau, the Office shall issue an ex officio provisional notification of refusal to the International Bureau, in accordance with Article 5(1) and (2) of the Madrid Protocol.
3. Where the holder of an international registration is obliged to be represented before the Office pursuant to Article 119(2), the notification referred to in paragraph 2 of this Article shall contain an invitation to appoint a representative within the meaning of Article 120(1).
4. The notification of provisional refusal shall state the reasons on which it is based, and shall specify a time period by which the holder of the international registration may submit his observations and, if appropriate, shall appoint a representative. The time period shall start on the day on which the Office issues the provisional refusal.
5. Where the Office finds that the international application designating the Union does not contain the indication of a second language pursuant to Article 206 of this Regulation, the Office shall issue an ex officio provisional notification of refusal to the International Bureau pursuant to Article 5(1) and (2) of the Madrid Protocol.
6. Where the holder of an international registration fails to overcome the ground for refusing protection within the time limit or, if appropriate, to appoint a representative or to indicate a second language, the Office shall refuse the protection in whole or for part of the goods and services for which the international registration is registered. The refusal of protection shall take the place of a refusal of an EU trade mark application. The decision shall be subject to appeal in accordance with Articles 66 to 72.
7. Where, as of the start of the opposition period referred to in Article 196(2), the Office has not issued an ex officio provisional notification of refusal pursuant to paragraph 2 of this Article, it shall send a statement to the International Bureau, indicating that the examination of absolute grounds of refusal pursuant to Article 42 has been completed but that the international registration is still subject to oppositions or observations of third parties. This interim statement shall be without prejudice to the right of the Office to re-open the examination of absolute grounds on its own initiative any time before the final statement of grant of protection has been issued.
8. The Commission shall adopt implementing acts specifying the details to be contained in the notification of ex officio provisional refusal of protection to be sent to the International Bureau and in the final communications to be sent to the International Bureau on the final grant or refusal of protection. Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 207(2).
Collective and certification marks
1. Where an international registration is based on a basic application or basic registration relating to a collective mark, certification mark or guarantee mark, the international registration designating the Union shall be dealt with as an EU collective mark or as an EU certification mark, whichever is applicable.
2. The holder of the international registration shall submit the regulations governing the use of the mark, as provided for in Articles 75 and 84, directly to the Office within two months of the date on which the International Bureau notifies the international registration to the Office.
3. The Commission is empowered to adopt delegated acts in accordance with Article 208 specifying the details of the procedure concerning international registrations based on a basic application or basic registration relating to a collective mark, certification mark or guarantee mark.
Search
1. Once the Office has received a notification of an international registration designating the Union, it shall draw up a Union search report as provided for in Article 43(1) provided that a request for a search report, pursuant to Article 43(1), is made to the Office within one month of the date of notification.
2. As soon as the Office has received a notification of an international registration designating the Union, the Office shall transmit a copy thereof to the central industrial property office of each Member State which has informed the Office of its decision to operate a search in its own register of trade marks as provided for in Article 43(2) provided that a request for a search report, pursuant to Article 43(2), is made to the Office within one month of the date of notification and the search fee is paid within the same period.
3. Article 43(3) to (6) shall apply mutatis mutandis .
4. The Office shall inform the proprietors of any earlier EU trade marks or EU trade mark applications cited in the Union search report of the publication of the international registration designating the Union as provided for in Article 190(1). This shall apply whether or not the holder of the international registration has requested to receive the EU search report, unless the proprietor of an earlier registration or application requests not to receive the notification.
Opposition
1. International registration designating the Union shall be subject to opposition in the same way as published EU trade mark applications.
2. Notice of opposition shall be filed within a period of three months which shall begin one month following the date of the publication pursuant to Article 190(1). The opposition shall not be considered as duly entered until the opposition fee has been paid.
3. Refusal of protection shall take the place of refusal of an EU trade mark application.
4. The Commission is empowered to adopt delegated acts in accordance with Article 208 specifying the procedure for the filing and examination of an opposition, including the necessary communications to be made to the International Bureau.
Replacement of an EU trade mark by an international registration
The Office shall, upon request, enter a notice in the Register that an EU trade mark is deemed to have been replaced by an international registration in accordance with Article 4 bis of the Madrid Protocol.
Invalidation of the effects of an international registration
1. The effects of an international registration designating the Union may be declared invalid.
2. The application for invalidation of the effects of an international registration designating the Union shall take the place of an application for a declaration of revocation as provided for in Article 58 or for a declaration of invalidity as provided for in Article 59 or Article 60.
3. Where pursuant to Article 64 or Article 128 of this Regulation and this Article, the effects of an international registration designating the Union have been declared invalid by means of a final decision, the Office shall notify the International Bureau in accordance with Article 5(6) of the Madrid Protocol.
4. The Commission shall adopt implementing acts specifying the details to be contained in the notification to be made to the International Bureau pursuant to paragraph 3 of this Article. Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 207(2).
Legal effect of registration of transfers
The recordal of a change in the ownership of an international registration on the International Register shall have the same effect as the entry of a transfer in the Register pursuant to Article 20.
Legal effect of registration of licences and other rights
The recordal of a licence or a restriction of the holder's right of disposal in respect of an international registration in the International Register shall have the same effect as the registration of a right in rem , a levy of execution, insolvency proceedings or a licence in the Register pursuant to Articles 22, 23, 24 and 25 respectively.
Examination of requests for registration of transfers, licences or restrictions of a holder's right of disposal
The Office shall transmit requests to register a change in ownership, a licence or a restriction of the holder's right of disposal, the amendment or cancellation of a licence or the removal of a restriction of the holder's right of disposal which have been filed with it to the International Bureau, if accompanied by appropriate proof of the transfer, licence, or the restriction of the right of disposal, or by proof that the licence no longer exists or that it has been amended, or that the restriction of the right of disposal has been removed.
Conversion of a designation of the Union through an international registration into a national trade mark application or into a designation of Member States
1. Where a designation of the Union through an international registration has been refused or ceases to have effect, the holder of the international registration may request the conversion of the designation of the Union:
(a)
into a national trade mark application pursuant to Articles 139, 140 and 141;
(b)
into a designation of a Member State party to the Madrid Protocol, provided that on the date when conversion was requested it was possible to have designated that Member State directly under the Madrid Protocol. Articles 139, 140 and 141 of this Regulation shall apply.
2. The national trade mark application or the designation of a Member State party to the Madrid Protocol resulting from the conversion of the designation of the Union through an international registration shall enjoy, in respect of the Member State concerned, the date of the international registration pursuant to Article 3(4) of the Madrid Protocol or the date of the extension to the Union pursuant to Article 3 ter (2) of the Madrid Protocol, if the latter was made subsequent to the international registration, or the date of priority of that registration and, where appropriate, the seniority of a trade mark of that State claimed under Article 191 of this Regulation.
3. The request for conversion shall be published.
4. The request for conversion of an international registration designating the Union into a national trade mark application shall include the information and indications referred to in Article 140(1).
5. Where conversion is requested pursuant to this Article and Article 139(5) of this Regulation following a failure to renew the international registration, the request referred to in paragraph 4 of this Article shall contain an indication to that effect and the date on which the protection expired. The period of three months provided for in Article 139(5) of this Regulation shall begin to run on the day following the last day on which the renewal may still be effected pursuant to Article 7(4) of the Madrid Protocol.
6. Article 140(3) and (5) shall apply to the request for conversion referred to in paragraph 4 of this Article mutatis mutandis .
7. The request for conversion of an international registration designating the Union into a designation of a Member State party to the Madrid Protocol shall include the indications and elements referred to in paragraphs 4 and 5.
8. Article 140(3) shall apply to the request for conversion referred to in paragraph 7 of this Article mutatis mutandis . The Office shall also reject the request for conversion where the conditions to designate the Member State which is a party to the Madrid Protocol or to the Madrid Agreement were fulfilled neither on the date of the designation of the Union nor on the date on which the application for conversion was received or, pursuant to the last sentence of Article 140(1), is deemed to have been received by the Office.
9. Where the request for conversion referred to in paragraph 7 complies with the requirements of this Regulation and rules adopted pursuant to it, the Office shall transmit the request without delay to the International Bureau. The Office shall inform the holder of the international registration of the date of transmission.
10. The Commission shall adopt implementing acts specifying:
(a)
the details to be contained in the requests for conversion referred to in paragraphs 4 and 7;
(b)
the details to be contained in the publication of the requests for conversion pursuant to paragraph 3.
Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 207(2).
Use of a mark subject of an international registration
For the purposes of applying Article 18(1), Article 47(2), Article 58(1)(a) and Article 64(2), the date of publication pursuant to Article 190(2) shall take the place of the date of registration for the purpose of establishing the date as from which the mark which is the subject of an international registration designating the Union shall be put to genuine use in the Union.
Transformation
1. Subject to paragraph 2, the provisions applicable to EU trade mark applications shall apply mutatis mutandis to applications for transformation of an international registration into an EU trade mark application pursuant to Article 9 quinquies of the Madrid Protocol.
2. When the application for transformation relates to an international registration designating the Union the particulars of which have been published pursuant to Article 190(2), Articles 42 to 47 shall not apply.
3. In order to be considered a transformation of an international registration which has been cancelled at the request of the office of origin by the International Bureau pursuant to Article 9 quinquies of the Madrid Protocol, an EU trade mark application shall contain an indication to that effect. That indication shall be made when filing the application.
4. Where, in the course of the examination in accordance with Article 41(1)(b), the Office finds that the application was not filed within three months of the date on which the international registration was cancelled by the International Bureau, or the goods and services for which the EU trade mark is to be registered are not contained in the list of goods and services for which the international registration was registered in respect of the Union, the Office shall invite the applicant to remedy the deficiencies.
5. If the deficiencies referred to in paragraph 4 are not remedied within the time period specified by the Office, the right to the date of the international registration or the territorial extension and, if any, of the priority of the international registration shall be lost.
6. The Commission shall adopt implementing acts specifying the details to be contained in an application for transformation pursuant to paragraph 3 of this Article. Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 207(2).
Communication with the International Bureau
Communication with the International Bureau shall be in a manner and format agreed on between the International Bureau and the Office, and preferably be by electronic means. Any reference to forms shall be construed as including forms made available in electronic format.
Use of languages
For the purpose of applying this Regulation, and rules adopted pursuant to it, to international registrations designating the Union, the language of filing of the international application shall be the language of the proceedings within the meaning of Article 146(4), and the second language indicated in the international application shall be the second language within the meaning of Article 146(3).
Source: EUR-Lex (Publications Office of the EU), © European Union, reuse permitted under Commission Decision 2011/833/EU.
