Legal Framework (II) October 2010 Diego Agustín CARRASCO PRADAS Head, Legal Section, Legal and Promotion Division, International Registries of Madrid and Lisbon, Brands and Designs Sector THE MADRID SYSTEM

Role of the International Bureau INTERNATIONAL BUREAU Applicant Formality Examination No Irregularities Records in the int’l Register Publishes in the Gazette County A County B County C Issues a registration certificate Notifies Designated Contracting Parties

Effects of the International Registration Refusals International Registration

Effects of International Registration National application National registration as from the date of the international registration in the absence of refusal

Effects of the International Registration – Article 4 – The International Registration = A National Application until the expiry of the time limit to issue a refusal A National Registration once the time limit to issue a refusal has expired (assuming no refusal or refusal withdrawn)

Designations of Contacting Parties: Agreement International application governed exclusively by the Agreement Use official form MM1 A AP A A FranceAlgeria

Designations of Contacting Parties: Protocol International application governed exclusively by the Protocol Use official form MM2 P P! AP P or Viet Nam AP France Japan P

Designations of Contacting Parties: Mixed International application governed by both the Agreement and the Protocol Use official form MM3 A P! AP A or Viet Nam AP France Algeria A+PA+P

Designated Contracting Parties What is the role of the Office of the Designated Contracting Parties? No specific role But possibility to issue a Refusal

Designated Contracting Parties may notify the IB of Substantive Examination within set time limits (12 or 18 months) Provisional Refusal Grant of Protection* = National Registration OFFICE OF DESIGNATED CONTRACTING PARTY Confirmation of Refusal Withdrawal of Refusal = National Registration * No Office shall be obliged to send statements of grant of protection before January 1, 2011.

Time Limits Notification of provisional refusal: 12 months Mandatory under Agreement Optional under Protocol 18 months Optional under Article 5(2)(b) of the Protocol “ 18 months + ” in case of opposition Article 5(2)(c) of the Protocol

Non-Valid Grounds for Refusal Formal grounds Classification of the goods and services (Rule 12) Multi-class registration (Article 5(1)) Limited goods or services (Article 5(1))

Latest developments: Statements of ground of protection

Interfaces between the Madrid System and the Community Trade Mark

MS & CTM - Similarities Single filing mechanisms for international protection Cost effectiveness over national filings Administrative efficiency over national filings

MS & CTM – Fundamental Differences (1) MS Bundle of national rights Part of national systems CTM Unitary right Overlaid onto national systems Implications

MS & CTM – Fundamental Differences (2) ImplicationsMS No inherent conflict with national systems CTM High number of oppositions

MS & CTM – Other Points of Comparison (1) Geographical scopeMS Goes well beyond EU CTM EU only

MS & CTM – Other Points of Comparison (2) InvalidityMS Once dependency is over, invalidation only via national actions CTM Always vulnerable to destruction of unitary nature by invalidation in one Member State

MS & CTM – Other Points of Comparison (3) Language MS French only – MA French/English/Spanish - MP CTM 5 working languages [English, French, Italian, Spanish, German]

MS & CTM – the Link (1) Designate CTM within MP application Base MP application on CTM

MS & CTM – the Link (2) CTM as designation Usually a good option “Opting back” choices – safety net

MS & CTM – What’s the Answer? (1) Neither system should predominate Complementary

MS & CTM – What’s the Answer? (2) Costs in a given set of circumstances Filing costs – easy to estimate Prosecution costs – harder Oppositions – almost impossible

Thank You