How the OHIM will handle Madrid filings

Basic elements of the CTM procedure (the “direct route”)

1. Examination of filing date, formalities, classification, 1. Examination of filing date, formalities, classification, absolute grounds 2. Publication for opposition 3. 3 months opposition period for relative grounds (pre-registration opposition system) 4. Registration 5. Cancellation on any substantive ground before the OHIM, or, upon counterclaim, before infringement court

The obtaining of a CTM through the Madrid route (designation of EC)

Elements to reconcile/ adapt: - Limited examination (on absolute grounds, oppositions) - Different role, concept, and timing of publications - Reversed order (CTM:from filing to registration; Madrid: from international registration to final refusal) - Outer Limit of 18 months for refusal

Elements to maintain: Examination on absolute grounds plus appeal possibilities Opposition procedure Examination of absolute grounds in principle before opposition Fees should be the same (minus 200 € for savings)

Core elements of the Madrid route 1. Republication - Limited in scope (no lists of goods and services) - IR gets the effect of a published CTM application - Informs opponents about second language

2. Searches, seniority examination Done in parallel once republication occurred Do not interfere on the rest of the procedure

3. Absolute grounds examination Same standards and procedures save that provisional refusal is sent to WIPO (ensuing procedure directly with the holder) Timing: to be done within six months If result is O.K., “first statement of grant of protection” If result is not O.K., provisional refusal to WIPO

4. Opposition Timing: within 6-9 months after republication Irrespective of outcome of absolute grounds examination Same grounds (earlier rights), same procedure (cooling-off-period and adversarial part) subject to a few exceptions.

4. Opposition D. All oppositions (if admissible) are notified to WIPO (“provisional refusal based on an opposition”) and at the same time directly to the holder. E. If foreigner, the holder must appoint an OHIM representative, otherwise the opponent “automatically” wins.

4. Opposition F. If a refusal on absolute grounds is pending, the opposition procedure is stayed G. Otherwise, the opposition procedure starts in the normal way. Once the decision on the opposition is final (after Luxembourg, if any), the result is communicated to WIPO: Confirmation or withdrawal of provisional refusal H. If no opposition was filed, and provided that no refusal on absolute grounds was issued, a “second statement of grant of protection” is sent

5. The overall timing If everything is o.k., you’ll get A first statement of grant of protection (AG o.k.) within six months, a second statement of grant of protection, meaning that the mark is finally accepted as a registered CTM, within 11 months, and thus much earlier than the 18 months deadline

5. The overall timing B. If there is a problem on absolute or relative grounds, the procedure is in principle open-ended and may well be finished after 18 months, but all provisional refusals, including on oppositions, must have been notified to WIPO within 18 months.

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