prop · GI0359 · 1995-01-01 00:00:00 — (i) where the basic application has been filed with the Office of a or where the basic registration has been made by such an Office, the person in whose name that application or registration stands is a national of that , or is domiciled, or has a real and effective industrial or commercial , in the said , (ii) where the basic application has been filed with the Office of a or where the basic registration has been made by such an Office, the person in whose name that application or registration stands is a national of a State member of that , or is domiciled, or has a real and effective industrial or commercial , in the territory of the said . (2) The application for international registration (hereinafter referred to as "the international application") shall be filed with the through the intermediary of the Office with which the basic application was filed or by which the basic registration was made (hereinafter referred to as "the Office of origin"), as the case may be. (3) reference in this Protocol to an "Office" or an "Office of a Contracting Party" shall be construed as a reference to the office that is in charge, on behalf of a Contracting Party, of the registration of marks, and any reference in this Protocol to "marks" shall be construed as a reference to trademarks and service marks. (4) For the purposes of this Protocol, "territory of a Contracting Party" means, where the Contracting Party is a State, the territory of that State and, where the Contracting Party is an intergovernmental organization, the territory in which the constituting treaty of that intergovernmental organization applies. Article 3 International Application (1) international application under this Protocol shall be presented on the form prescribed by the Regulations. The Office of origin shall certify that the particulars appearing in the international application correspond to the particulars appearing, at the time of the certification, in the basic application or basic registration, as the case may be. Furthermore, the said Office skall indicate, (i) in the case of a basic application, the date and number of that application, (ii) in the case of a basic registration, the date and number of that registration as well as the date and number of the application from which the basic registration resulted. The Office of origin shall also indicate the date of the international application. (2) The applicant must indicate the goods and services in respect of which protection of the mark is claimed and also, if possible, the corresponding class or according to the classification established by the Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of . If the applicant does not give such indication, the shall classify the goods and services in the appropriate of the said classification. The indication of given by the applicant shall be subject to control by the , which shall exercise the said control in association with the Office of origin. In the event of disagreement between the said Office and the , the opinion of the latter shall prevail. (3) If the applicant claims color as a distinctive feature of his mark, he shall be required (i) to state the fact, and to file with his international application a notice specifying the color or the combination of colors claimed; (ii) to append to his international application copies in color of the said mark, which shall be attached to the notifications given by the ; the number of such copies shall be fixed by the Regulations. (4) shall register immediately the marks filed in accordance with Article 2. The international registration shall bear the date on which the international application was received in the Office of origin, provided that the international application has been received by the within a period of two months from that date. If the international application has not been received within that period, the international registration shall bear the date on which the said international application was received by the . shall notify the international registration without delay to the Offices concerned. registred in the International Register shall be published in a periodical gazette issued by the , on the basis of the particulars contained in the international application. (5) With a view to the publicity to be given to marks registered in the International Register, each Office shall receive from the a number of copies of the said gazette free of charge and a number of copies at a reduced price, under the conditions fixed by the Assembly referred to in Article 10 (hereinafter referred to as "the Assembly"). Such publicity shall be deemed to be sufficient for the purposes of all the Contracting Parties, and no other publicity may be required of the holder of the international registration. Article 3bis Territorial Effect The protection resulting from the international registration shall extend to any Contracting Party only at the request of the person who files the international application or who is the holder of the international registration. However, no such request can be made with respect to the Contracting Party whose Office is the Office of origin. Article 3ter Request for "Territorial Extension" (1) request for extension of the protection resulting from the international registration to any Contracting Party shall be specially mentioned in the international application. (2) A request for territorial extension may also be made subsequently to the international registration. such request shall be presented on the form prescibed by the Regulations. It shall be immediately recorded by the , which shall notify such recordal without delay to the Office or Offices concerned. Such recordal shall be published in the periodical gazette of the . Such territorial extension shall be effective from the date on which it has been recorded in the International Register; it shall cease to be valid on the expiry of the international registration to which it relates. Article 4 Effects of International Registration (1)(a) From the date of the registration or recordal effected in accordance with the provisions of Articles 3 and 3ter, the protection of the mark in each of the Contracting Parties concerned shall be the same as if the mark had been deposited direct with the Office of that Contracting Party. If no refusal has been notified to the in accordance with Article 5(1) and (2) or if a refusal notified in accordance with the said Article has been withdrawn subsequently, the protection of the mark in the Contracting Party concerned shall, as from the said date, be the same as if the mark had been registered by the Office of that Contracting Party. (b) The indication of of goods and services provided for in Article 3 shall not bind the Contracting Parties with regard to the determination of the scope of the protection of the mark. (2) international registration shall enjoy the right of priority provided for by Article 4 of the Convention for the Protection of Industrial Property, without it being necessary to comply with the formalities prescribed in Section D of that Article. Article 4bis Replacement of a National or Regional Registration by an International Registration (1) Where a mark that is the subject of a national or regional registration in the Office of a Contracting Party is also the subject of an international registration and both registrations stand in the name of the same person, the international registration is deemed to replace the national or regional registration, without prejudice to any rights acquired by virtue of the latter, provided that (i) the protection resulting from the international registration extends to the said Contracting Party under Article 3ter (1) or (2), (ii) all the goods and services listed in the national or regional registration are also listed in the international registration in respect of the said Contracting Party, (iii) such extension takes effect after the date of the national or regional registration. (2) The Office referred to in paragraph (1) shall, upon request, be required to take note in its register of the international registration. Refusal and Invalidation of Effects of International Registration in Respect of Certain Contracting Parties (1) Where the applicable legislation so authorizes, any Office of a Contracting Party which has been notified by extension to that Contracting Party, under Article 3ter (1) or (2), of the protection resulting from the international registration shall have the right to declare in a notification of refusal that protection cannot be granted in the said Contracting Party to the mark which is the subject of such extension. such refusal can be based only on the grounds which would apply, under the Convention for the Protection of Industrial Property, in the case of a mark deposited direct with the Office which notifies the refusal. However, protection may not be refused, even partially, by reason only that the applicable legislation would permit registration only in a limited number of or for a limited number of goods or services. (2)(a) wishing to exercise such right shall notify its refusal to the , together with a statement of all grounds, within the period prescribed by the law applicable to that Office and at the latest, subject to subparagraphs (b) and (c), before the expiry of one year from the date on which the notification of the extention referred to in paragraph (1) has been sent to that Office by the . (b) Notwithstanding subparagraph (a), any Contracting Party may declare that, for international registrations made under this Protocol, the time limit of one year referred to in subparagraph (a) is replaced by 18 months. (c) Such declaration may also specify that, when a refusal of protection may result from an opposition to the granting of protection, such refusal may be notified by the Office of the said Contracting Party to the after the expiry of the 18-month time limit. Such an Office may, with respect to any given international registration, notify a refusal of protection after the expiry of the 18-month time limit, but only if (i) it has, before the expiry of the 18-month time limit, informed that oppositions may be filed after the expiry of the 18-month time limit, and (ii) the notification of the refusal based on an opposition is made within a time limit of not more than seven months from the date on which the opposition period begins; if the opposition period expires before this time limit of seven months, the notification must be made within a time limit of one month from the expiry of the opposition period. (d) declaration under subparagraphs (b) or (c) may be made in the instruments referred to in Article 14(2), and the effective date of the declaration shall be the same as the date of entry into force of this Protocol with respect to the State or intergovernmental organization having made the declaration. such declaration may also be made later, in which case the declaration shall have effect three months after its receipt by the Director General of the Organization (hereinafter referred to as "the Director General"), or at any later date indicated in the declaration, in respect of any international registration whose date is the same as or is later than the effective date of the declaration. (e) Upon the expiry of a period of ten years from the entry into force of this Protocol, the Assembly shall examine the operation of the system established by subparagraphs (a) to (d). Thereafter, the provisions of the said subparagraphs may be modified by a unanimous decision of the Assembly. (3) shall, without delay, transmit one of the copies of the notification of refusal to the holder of the international registration. The said holder shall have the same remedies as if the mark had been deposited by him direct with the Office which has notified its refusal. Where the has received information under paragraph (2)(c)(i), it shall, without delay, transmit the said information to the holder of the international registration. (4) The grounds for refusing a mark shall be communicated by the to any interested party who may so request. (5) which has not notified, with respect to a given international registration, any provisional or final refusal to the in accordance with paragraphs (1) and (2) shall, with respect to that international registration, lose the benefit of the right provided for in paragraph (1). (6) 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 of such international registration having, in good time, been afforded the opportunity of defending his rights. Invalidation shall be notified to the . Documentary Evidence of Legitimacy of Use of Certain Elements of the Documentary evidence of the legitimacy of the use of certain elements incorporated in a mark, such as armorial bearings, escutcheons, portraits, honorary distinctions, titles, trade names, names of persons other than the name of the applicant, or other like inscriptions, which might be required by the Offices of the Contracting Parties shall be exempt from any legalization as well as from any certification other than that of the Office of origin. Article 5ter Copies of Entries in International Register; Searches for Anticipations;Extracts from International Register (1) shall issue to any person applying therefor, upon the payment of a fee fixed by the Regulations, a copy of the entries in the International Register concerning a specific mark. (2) may also, upon payment, undertake searches for anticipations among marks that are the subject of international registrations. (3) Extracts from the International Register requested with a view to their production in one of the Contracting Parties shall be exempt from any legalization. Period of Validity of International Registration;Dependence and Independence of International Registration (1) Registration of a mark at the is effected for ten years, with the possibility of renewal under the conditions specified in Article 7. (2) Upon expiry of a period of five years from the date of the international registration, such registration shall become independent of the basic application or the registration resulting therefrom, or of the basic registration, as the case may be, subject to the following provisions. (3) The protection resulting from the international registration, whether or not it has been the subject of a transfer, 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, as the case may be, has been withdrawn, has lapsed, had been renounced or has been the subject of a final decision of rejection, revocation, cancellation or invalidation, in respect of all or some of the goods and services listed in the international registration. The same applies if (i) an appeal against a decision refusing the effects of the basic application, (ii) an action 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 (iii) an opposition to the basic application 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, or the registration resulting therefrom, or the basic registration, as the case may be, provided that such appeal, action or opposition had begun before the expiry of the said period. The same also applies if the basic application is withdrawn, or the registration resulting from the basic application or the basic registration is renounce, after the expiry of the five-year period, provided that, at the time of the withdrawal or renounciation, the said application or registration was the subject of a proceeding referred to in item (i), (ii) or (iii) and that such proceeding had begun before the expiry of the said period. (4) The Office of origin shall, as prescribed in the Regulations, notify and decisions relevant under paragraph (3), and the shall, as prescribed in the Regulations, notify the interested parties and effect any publication accordingly. The Office of origin shall, where applicable, request the to cancel, to the extent applicable, the international registration, and the shall proceed accordingly. Article 7 Renewal of International Registration (1) international registration may be renewed for a period of ten years from the expiry of the preceding period, by the mere payment of the basic fee and, subject to Article 8(7), of the supplementary and complementary fees provided for in Article 8(2). (2) Renewal may not bring about any change in the international registration in its latest form. (3) Six months before the expiry of the term of protection, the shall, by sending an unofficial notice, remind the holder of the international registration and his representative, if any, of the exact date of expiry. (4) Subject to the payment of a surcharge fixed by the Regulations, a period of grace of six months shall be allowed for renewal of the international registration. Fees for International Application and Registration (1) The Office of origin may fix, at its own discretion, and collect, for its own benefit, a fee which it may require from the applicant for international registration or from the holder of the international registration in connection with the filing of the international application or the renewal of the international registration. (2) Registration of a mark at the shall be subject to the advance payment of an international fee which shall, subject to the provisions of paragraph (7)(a), include, (i) a basic fee; (ii) a supplementary fee for each class of the International Classification, beyond three, into which the goods or services to which the mark is applied will fall; (iii) a complementary fee for any request for extension of protection under Article 3ter. (3) However, the supplementary fee specified in paragraph (2)(ii) may, without prejudice to the date of the international registration, be paid within the period fixed by the Regulations if the number of of goods or services has been fixed or disputed by the . If, upon expiry of the said period, the supplementary fee has not been paid or the list of goods or services has not been reduced to the required extent by the applicant, the international application shall be deemed to have been abandoned. (4) The annual product of the various receipts from international registration, with the exception of the receipts derived from the fees mentioned in paragraph (2)(ii) and (iii), shall be divided equally among the Contracting Parties by the , after deduction of the expenses and charges necessitated by the implementation of this Protocol. (5) The amounts derived from the supplementary fees provided for in paragraph (2)(ii) shall be divided, at the expiry of each year, among the interested Contracting Parties in proportion to the number of marks for which protection has been applied for in each of them during that year, this number being multiplied, in the case of Contracting Parties which make an examination, by a coefficient which shall be determined by the Regulations. (6) The amounts derived from the complementary fees provided for in paragraph (2)(iii) shall be diveded according to the same rules as those provided for in paragraph (5). (7)(a) may declare that, in connection with international registration in which it is mentioned under Article 3ter, and in connection with the renewal of any such international registration, it wants to receive, instead of a share in the revenue produced by the supplementary and complementary fees, a fee (hereinafter referred to as "the individual fee") whose amount shall be indicated in the declaration, and can be changed in further declarations, but may not be higher than the equivalent of the amount which the said Contracting Party*s Office would be entitled to receive from an applicant for a ten-year registration, or from the holder of a registration for a ten-year renewal of that registration, of the mark in the register of the said Office, the said amount being diminished by the savings resulting from the international procedure. Where such an individual fee is payable, (i) no supplementary fees referred to in paragraph (2)(ii) shall be payable if only Contracting Parties which have made a declaration under this subparagraph are mentioned under Article 3ter, and (ii) no complementary fee referred to in paragraph (2)(iii) shall be payable in respect of any Contracting Party which has made a declaration under this subparagraph. (b) declaration under subparagraph (a) may be made in the instruments referred to in Article 14(2), and the effective date of the declaration shall be the same as the date of entry into force of this Protocol with respect to the State or intergovernmental organization having made the declaration. such declaration may also be made later, in which case the declaration shall have effect three months after its receipt by the Director General, or at any later date indicated in the declaration, in respect of any international registration whose date is the same as or is later than the effective date of the declaration. Recordal of Change in the Ownership of an International Registration At the request of the person in whose name the international registration stands, or at the request of an interested Office made ex officio or at the request of an interested person, the shall record in the International Register any change in the ownership of that registration, in respect of all or some of the Contracting Parties in whose territories the said registration has effect and in respect of all or some of the goods and services listed in the registration, provided that the new holder is a person who, under Article 2(1), is entitled to file international applications. Recordal of Certain Matters Concerning an shall record in the International Register (i) any change in the name or address of the holder of the international registration, (ii) the appointment of a representative of the holder of the international registration and any other relevant fact concerning such representative, (iii) any limitation, in respect of all or some of the Contracting Parties, of the goods and services listed in the international registration, (iv) any renunciation, cancellation or invalidation of the international registration in respect of all or some of the Contracting Parties, (v) any other relevant fact, identified in the Regulations, concerning the rights in a mark that is the subject of an international registration. Article 9ter Fees for Certain Recordals recordal under Article 9 or under Article 9bis may be subject to the payment of a fee. Common Office of Serveral Contracting States (1) If several Contracting States agree to effect the unification of their domestic legislations on marks, they may notify the Director General (i) that a common Office shall be substituted for the national Office of each of them, and (ii) that the whole of their respective territories shall be deemed to be a single State for the purposes of the application of all or part of the provisions preceding this Article as well as the provisions of Articles 9quinquies and 9sexies. (2) Such notification shall not take effect until three months after the date of the communication thereof by the Director General to the other Contracting Parties.