S.I. 346 of 2001  
Trade Marks (Madrid Protocol) Regulations, 2001  
ARRANGEMENT OF REGULATIONS 
1. Citation and commencement. 
2. Interpretation. 3. Application of Act of 1996. 4. Application of Rules of 1996. 5. Entitlement to protection. 6. Effects of international trade mark. 7. Examination of an international registration designating the State. 
8. Publication, opposition proceedings and observations. 9. Notice of refusal to grant protection to an  international regist ration designating the 
State. 
10. Amendment of an international re gistration designating the State. 
11. Claiming of priority in respect of an in ternational registration designating the State. 
12. Granting protection to an internationa l registration designating the State. 
13. Division and merger of in ternational trade marks. 
14. Duration of registration of an international trade mark. 
15. Renewal of protection for an  internationa l trade mark. 
16. Alteration of an international trade mark. 
17. Surrender of an international trade mark. 18. Revocation and invalidity of an international trade mark. 19. Transformation applications. 20. Procedure upon filing of transformation application. 21. Effects of international regi stration where trade mark is al so registered under Act of 
1996. 
22. Application for inte rnational registration. 
23. Notification to In ternational Bureau. 
24. Evidence of certain matters relati ng to an international registration. 
25. Communication of information to International Bureau. 26. Fees. 27. Recording of corrections. 28. Adaptation of entries to new classification. 29. Supply of certified and uncertified copies. 
SCHEDULE 
PART I FORM NO. 1M 
Transformation Application under Regulation 19 
PART 2 
FORM NO. 2M 
Application to Controll er under Regulation 21(2) 
I, Tom Kitt, Minister of State at the Department of Enterprise, Trade and Employment, in 
exercise of the powers conferred on me by sections 59, 66, 69 and 81 of the Trade Marks 
Act, 1996 (No. 6 of 1996) (as adapted by the En terprise and Employme nt (Alteration of 
Name of Department and Title of Minist er) Order, 1997 (S.I. 305 of 1997), and the 
Enterprise, Trade and Employment (Delegati on of Ministerial Func tions)(No. 2) Order, 
1997 ( S.I. No. 330 of 1997 )), and a resoluti on approving a draft of these regulations 
having been passed by both Houses of the Oire achtas in accordance with section 3(3)(a) 
of the said Act, hereby make  the following regulations: 
Citation and commencement.  
1.       (1)      These Regulations may be cited as the Trade Marks (Madrid Protocol) 
Regulations, 2001. 
(2)      These Regulations sh all come into operation on the 19th day of October 
2001. 
Interpretation. 
2.       (1)      In these Regulations , except where the context otherwise requires— 
“Act of 1996” means the Trade Marks Act 1996 ( No. 6 of 1996 ); 
“basic application” means an application for registration of a trade mark in the State in 
respect of which application is made for international registration; 
“basic registration” means a trade mark regi stered in the State in respect of which 
application is made for international registration; “Common Regulations” means the regulations  adopted under Article  10 of the Madrid 
Protocol; “Gazette” means the periodical gazette re ferred to in Rule 32 of the Common 
Regulations; “holder” means a person in whose name an in ternational registration is recorded in the 
International Register; “International application” means an app lication to the International Bureau for 
registration of a trade mark in the International Register; 
“International Bureau” means the Internationa l Bureau of the World Intellectual Property 
Organisation; “International Register” means the register of trade marks maintained by the International 
Bureau for the purposes of the Madrid Protocol; “international registration” means the regist ration of a trade mark in the International 
Register; “international registration designating the State” means an international registration in 
relation to which a request has been made (eith er in the relevant international application 
or subsequently) for extension of protection to  the State under Article 3ter (1) or (2) of 
the Madrid Protocol; “international trade mark” means a trade mark which is entitled to protection in the State 
under the Madrid Protocol; “Journal” means the Patents Office Journal; “Madrid Agreement” means the Madrid Agreement Concerning the International 
Registration of Marks of April 14, 1891, as  revised at Stockholm on July 14, 1967, and 
amended on September 28, 1979; “Madrid Protocol” means the Protocol Relati ng to the Madrid Agreement Concerning the 
International Registration of Marks,  adopted at Madrid on June 27, 1989; 
“Office of origin” means the Office with whic h a basic application was filed or a basic 
registration was made and thr ough which an application for in ternational registration is 
filed with the International Bureau and, in th e case of the State, “Office of origin” means 
the Patents Office; “register” means the Register of Tr ade Marks kept under the Act of 1996; 
“Rules of 1996” means the Trade Marks Rules, 1996 ( S.I. No. 199 of 1996 ); 
“transformation application” has the meaning assigned to it by Regulation 19. 
(2)      A word or expression that is used in these Regulations and is also used in the 
Madrid Protocol or the Comm on Regulations has, unless the contrary intention appears, 
the same meaning in these Regulations as it has in the Madrid Prot ocol or the Common 
Regulations. 
(3)      In these Regulations, unl ess the contrary in tention appears - (a)      a reference to a Regulation or  Schedule is a refere nce to a Regulation 
of or a Schedule to these Regulations, 
(b)      a reference to a paragra ph or subparagraph is a reference to a 
paragraph of the provision in which the reference occurs, 
(c)      a reference to an Article is to an Article of the Madrid Protocol, and 
(d)      a reference to a secti on is to a section of the Act of 1996. 
Application of Act of 1996.  
3.       Except as otherwise provided in th ese Regulations or wher e its application would 
be inconsistent with these Regulations, the Act of 1996 shall appl y, with the necessary 
modifications, in relation to an internationa l registration designati ng the State, including 
an international trade mark, as  the Act of 1996 applies in re lation to a registered trade 
mark or application. 
Application of Rules of 1996.  
4.       Except as otherwise provided in thes e Regulations or where their application would 
be inconsistent with these Regulations, the Rules of 1996 shall apply, with the necessary 
modifications, in relation to an internationa l registration designati ng the State, including 
an international trade mark, as those Rules appl y in relation to a registered trade mark or 
application. Entitlement to protection. 
5.       (1)      Subject to Regulations 7 to 12, an intern ational registration designating the 
State shall be entitled to pr otection in the State where— 
(a)      if the particulars of the inte rnational registration designating the State 
were comprised in an application fo r registration of a trade mark under 
the Act of 1996, the application would satisfy the requirements for 
registration, 
(b)      the application proceeds to publication, 
(c)      following publication— 
(i)       no notice of opposition ha s been received within the period 
specified in Regulation 8, or 
(ii)      all opposition proceedings have been withdrawn or decided in 
favour of the holder, and 
(d)      the Controller, having due regard to any matter coming to his or her 
notice since accepting the applicatio n, is satisfied it was not accepted 
in error. 
(2)      Notwithstanding paragraph (1), an  international regist ration designating the 
State shall be entitled to protection in the State where, within the period of 18 months 
from the date of the notification to the C ontroller of the international registration 
designating the State, none of the following not ices has been sent to the International 
Bureau - 
(a)      notice of refusal under Regulation 7(2), 
(b)      notice of refusal based on an opposition under Regulation 8, or 
(c)      notice of the possibility that a refusal based on an opposition may be 
filed after the expiry of that period of 18 months under Regulation 
9(4). 
Effects of international trade mark.  
6.       The holder of an international trad e mark has, subject to these Regulations, the 
same rights and remedies as are conferred on, and shall be subject to the same conditions 
as apply to, the proprietor of a trad e mark registered under the Act of 1996. 
Examination of an international registration designating the State.  
7.       (1)      Following receipt from the International Bureau of an international 
registration designating the Stat e, the Controller shall exam ine whether it satisfies the 
requirements of the Act of 1996 and the Rules of  1996 (other than paragraphs (1), (2) and 
(3) of Rule 12). 
(2)      (a)      Subject to Regulati on 9, if it appears to th e Controller that the 
requirements referred to in para graph (1) are not satisfied, the 
Controller shall give a notice of refusal to the International Bureau. 
(b)      If the requirements referred to in paragraph (1) are not satisfied only 
in relation to some of the goods or services in respect of which protection in the State has been re quested, the notice of refusal shall 
state this. 
Publication, opposition proceedings and observations.  
8.       (1)      Where, following ex amination under Regulation 7 and receipt, where 
applicable, of representations from the holder made in accordance with Regulation 9(2), it appears to the Controller that the require ments for protection specified in Regulation 
5(1) are satisfied in relation to some or al l of the goods or services comprised in the 
international registration, th e Controller shall publish a not ice in the Journal specifying 
particulars of the international registration a nd specifying the goods or services in respect 
of which protection is to be conferred. 
(2)      A person may, within 3 months of the date of publi cation of a notice under 
paragraph (1), give notice to the Controller of opposition to the conf erring of protection 
in accordance with section 43 and Rule 18 of the Rules of 1996. 
(3)      The Controller shall, subjec t to Regulation 9(7), upon notice of opposition 
being given under paragraph (2), and in any event within 4 months of the date of 
publication of a notice under pa ragraph (1), give notice of refusal to the International 
Bureau in accordance with Rule 17 of the Common Regulations. 
(4)      Within 3 months of the date on which notice of refusal based on opposition 
is given to the International Bureau under paragraph (3), the holder may file a counter-
statement and, where the holder does so, he or she shall provide an address for service in 
the State. 
(5)      For the purpose of this regulation, references to “the applicant” in Rules 19 
to 23 and Rule 26 of the Rules of 1996 shall be  construed as referen ces to “the holder”. 
(6)      The Controller shall not accept  observations under section 43(3) where the 
period specified in Regulation 9(1) has expired or where a notification has been issued to 
the International Bureau  under Regulation 12(3). 
Notice of refusal to grant protection to an  international registration designating the 
State.  
9.       (1)      A notice of refusal under Regulation 7(2) shall not be given to the 
International Bureau after the expiry of the period of 18 m onths from the date on which a 
notification of an international registrati on designating the State was sent to the 
Controller. 
(2)      A notice of refusal under Regula tion 7(2) shall specify  the period within 
which the holder may make representations to the Controller and shall set out the matters 
required by Article 5 of the Madrid Protocol  and Rule 17 of the Common Regulations. 
(3)      (a)      Where a holder makes representations to the Controller under 
paragraph (2), he or she shall give  to the Controller an address for 
service and paragraphs (1) and (2 ) of Rule 10 of the Rules of 1996 
shall apply. 
(b)      Where an address for service has not been given as required by 
subparagraph (a), and the holder do es not provide an address for service within the period  specified in Rule 10( 3) of the Rules of 1996, 
the international registration designa ting the State shall be treated as 
abandoned. 
(4)      The Controller shall, before th e expiry of the period specified in paragraph 
(1), give notice to the International Bureau of the number and name of the holder of an 
international registration in respect of which th ere is a possibility that a refusal based on 
an opposition may be filed afte r the expiry of that period. 
(5)      (a)      Where notice is given under paragraph (4), and the dates on which the 
opposition period begins and ends are known, those dates shall be 
indicated in the notification. 
(b)      Where notice is given under pa ragraph (4), and the dates on which the 
opposition period begins and ends are not known, the International 
Bureau shall be informed of those dates as soon as practicable after 
they become known. 
(6)      The Controller shall notify the International Bureau before the expiry of the 
period of 18 months specified in paragraph (1)— 
(a)      if the period specified in Regulation 8(2) for filing oppositions expires 
within the period of 30 days before  the expiry of that period of 18 
months, and 
(b)      that there is the possibility  that oppositions may be filed during that 
period of 30 days. 
(7)      The Controller shall notify the International Bureau of any refusal based on 
an opposition filed during the pe riod of 30 days referred to in  paragraph (6) within one 
month from the date of filing of the opposition. 
(8)      Where notice of refusal has been  given under Regulation 7(2) or notice of 
refusal based on an opposition has been given un der Regulation 8(3), the Controller shall, 
upon a final decision being made in relation to the refusal, notify the International Bureau 
of that decision. 
Amendment of an international re gistration designating the State.  
10.     (1)      An application for an amen dment of an internationa l registration designating 
the State shall be made to the Interna tional Bureau under Rule 25 of the Common 
Regulations. 
(2)      Where the International Bureau notifies the Controller of an amendment in 
accordance with the said Rule 25, the provisions of the Act of 1996 and the Rules of 1996 shall, with the necessary modifications, appl y to the notification where the notification 
concerns the goods or services for which protection is sought. 
(3)      The Controller shall keep a r ecord of the details of  any of the matters 
referred to in Rule 25(1)(a)(i) to (v) of  the Common Regulations  which are notified by 
the International Bureau and the record is he reby prescribed as a matter to be entered in 
the register. 
Claiming of priority in respect of an in ternational registration designating the State.  
11.     Where, in accordance with section 40 or  41, priority is clai med in a notification 
from the International Bureau of an intern ational registration desi gnating the State, the 
Controller shall not require a certificate from the Office of  origin under Rule 13 of the 
Rules of 1996. Granting protection to an international registration designating the State.  
12.     (1)      Where pursuant to these Regulations— 
(a)      none of the notices specified in  Regulation 5(2)(a), (b) or (c) has been 
given to the International Bureau, or 
(b)      notice of refusal has been gi ven but the final decision notified to the 
International Bureau under Regulation 9 is such that protection is to be 
conferred (whether for some or all the goods and services to which the 
notification of the international registration designating the State 
relates), 
the international registration designating the State shall become protected in the State 
and, where the final decision referred to in Regul ation 9(8) is to the effect that protection 
is not to be conferred in resp ect of some of the goods or services for which protection has 
been requested, protection shall apply only in relation to the remaining goods or services. 
(2)      Subject to Regulation 21, fo r the purposes of application by these 
Regulations of the Act of 1996, a trade mark  protected under paragraph (1) shall be 
treated as being registered under the Act of  1996 from the date provided for in Article 
3(4) or Article 3
ter, as appropriate. 
(3)      When a trade mark becomes prot ected under this Regul ation, the Controller 
shall notify the International Bureau and publish the intern ational registration in the 
Journal. 
(4)      The Controller shall keep a reco rd of international trade marks which shall 
include the following: 
(a)      the date referred to in paragraph (2), (b)      the date of publication in the Journal of the granting of protection, 
(c)      the priority date, if applicable, 
(d)      the name and address of the holder, 
(e)      any disclaimers or limitations, 
(f)       the goods and services in  respect of which pr otection is claimed, 
(g)      whether the international trade mark is a collective or certification 
mark, 
(h) any consent under secti on 10(6) by the proprietor of  an earlier trade mark 
or other right to which that section relates, 
(i)  the international registration number, and (j)  any other information which is require d to be recorded in the register in 
respect of a trade mark regi stered under the Act of 1996, 
and the record is hereby prescribed as a matter to be entered in the register. 
Division and merger of international trade marks.  
13.     (1)      The Controller shall not accept an application under section 46 and Rule 28 
of the Rules of 1996 for the division of an in ternational registration designating the State 
or for the division of an international trade mark. 
(2)      Where, during a period of 5 years from the date of international registration, 
a basic application is divided the Controller shall notify the International Bureau and 
shall indicate— 
(a)      the number of the international registration or, if the international 
registration has not yet been e ffected, the number of the basic 
application, 
(b)      the name of the holder or applicant of the basic application, and 
(c)      the number of each application resulting from the division of the 
application. 
(3)     (a)      The Controller shall not accept an application under section 46 and 
Rule 29 of the Rules of 1996 to merge international registrations designating the State or in ternational trade marks. (b)      Where the Controller receives a request for a merger of international 
registrations under Rule 27(3) of the Common Regulations the 
Controller shall forward such a re quest to the International Bureau. 
Duration of registration of an international trade mark.  
14.               (a)      The period of protection of an international trade mark shall be 10 
years from the date of the intern ational registration under Article 3. 
(b)      The period of protection may be extended in accordance with Article 
7 of the Madrid Protocol a nd Rules 30 and 31 of the Common 
Regulations. 
Renewal of protection for an international trade mark.  
15.     (1)      Section 48 and Rules 37, 38, 39 and 40 of the Rules of 1996 shall not apply 
to the renewal of protection fo r an international trade mark. 
(2)      The Controller shall keep a r ecord of the details of any renewals of 
protection for international trad emarks received from the In ternational Bure au under Rule 
31 (3) of the Common Regulations and the record  is hereby prescribed as a matter to be 
entered in the register. 
Alteration of an international trade mark.  
16.     The Controller shall not accept an a pplication under section 49 for leave to alter an 
international trade mark. Surrender of an international trade mark.  
17.     The Controller shall not accept a notif ication of surrender, under section 50, of an 
international trade mark. Revocation and invalidity of an  international trade mark.  
18.     (1)      An application may be made to the Controller under sections 51 and 52, 
subject to the modifications specified in para graph (2), for revocati on, or a declaration of 
invalidity, of the protection of  an international trade mark. 
(2)      (a)      The reference in se ction 51(1) to the date of publication of the 
registration shall be construed as a re ference to the date of publication 
under Regulation 12(3). 
(b)      The reference in section 51(2 ) to the form in which a trade mark was 
registered shall be construed as a reference to the form in which an 
international trade mark is protected in the State. (c)      The references in section 51(5) and section 52(5) to goods or services 
for which the trade mark is registered shall be construed as references 
to goods or services in respect of wh ich the international trade mark is 
protected in the State. 
(d)      The references in section 51 to the registration of a trade mark being 
revoked and the references in sectio n 52 to the registration of a trade 
mark being declared invalid shall be  construed as references to the 
protection in the State of  an international trade mark being revoked or 
declared invalid, as the case may be. 
(3)      Where the protection of an intern ational trade mark is revoked to any extent 
the rights of the holder shall be d eemed to have ceased to exist— 
(a)      from the date of the application for revocation, or 
(b)      if the Controller or the Court is satisfied th at the grounds for 
revocation existed at an earlier date, that date. 
(4)      Where the protection of an intern ational trade mark is declared invalid to 
any extent, the protection shall to that extent  be deemed never to have existed, provided 
that this shall not affect tr ansactions past and closed. 
Transformation applications.  
19.     (1)      This Regulation applies where - 
(a)      an international registration designating the State is cancelled at the 
request of the Office of origin under Article 6(4) in respect of some or 
all of the goods or services  listed in the registration, 
(b)      an application (in these Regul ations referred to as a “transformation 
application”) is made to the Controll er, within 3 months of the date on 
which the international registration was cancelled, for registration in 
the State of a trade mark identical to  that comprised in the international 
registration in respect of some or all of the goods or services in respect of which the international re gistration was cancelled, and 
(c)      the transformation applica tion is made by the person who was the 
holder of the international regist ration immediately before its 
cancellation. 
(2)     (a)      A transformation applic ation shall, subject to  this Regulation and 
Regulation 20, be treated as an a pplication under the Act of 1996 for 
registration of the trade mark concerned. (b)      A transformation application sh all be made on Form No. 1M as set out 
in Part 1 of the Schedule and shall st ate that the applic ation is made by 
way of transformation. 
(c)      A transformation applica tion shall not be s ubject to a fee. 
(3)      A transformation application shall be treated as if it had been filed on the 
date of the international regi stration in accordance with Article 3(4) or, where protection 
in the State was requested afte r the date of the internationa l registration, on the date such 
request was recorded by the Internat ional Bureau under Article 3ter(2). 
(4)      If the international registra tion included a claim to  priority, including 
priority in the State, the same claim to pr iority may be included in the transformation 
application. 
Procedure upon filing of transformation application.  
20.     (1)      Where a transformation app lication complies with th e requirements of these 
Regulations, and the corresponding internati onal trade mark has become entitled to 
protection under Regulation 12 on or before  the date on which the transformation 
application is made (to be known and in this Regulation referred to as  the “transformation 
date”), the trade mark shall be registered in  the register and a cer tificate of registration 
shall issue in accordance with section 45(4). 
(2)      Where the trade mark referred to in paragraph (1) has not become entitled to 
protection in the State under Regulation 12 at the transforma tion date, the following shall 
apply: 
(a)      if, at the transformati on date, a notice has been published under 
Regulation 8(1) in respect of the tr ade mark concerned, the publication 
of the notice shall be treated as being the publication of the 
transformation application under section 43(1); 
(b)      if, at the transformation date , notice of opposition to  the conferring of 
protection has been given to the Controller under Regulation 8(2), 
such notice of opposition shall be treat ed as if it had been received by 
the Controller under section 43(2); 
(c)      if, at the transformation date, a notice has not been published under 
Regulation 8(1) but the Controller has given a notice of refusal under 
Regulation 7(2), the notice of refusal shall be treated as if it had been 
given under section 42(2). 
Effects of international registration where trade mark is also registered under the 
Act of 1996.  21.     (1)      Where a trade mark is a registered trade mark and is also a protected 
international trade mark and both registrations  are in the name of the same holder, the 
international registration desi gnating the State is deemed to  replace the registered trade 
mark, without prejudice to a ny rights acquired by virtue of the trade mark being a 
registered trade mark, provided that- 
(a)      all the goods and services in  respect of which the trade mark is 
registered are the same as those in  respect of which the international 
registration is protected, and 
(b)      such protection takes effect  after the date of registration of the 
registered trade mark. 
(2)      On the application of the holder of an international tr ade mark on Form No. 
2M as set out in Part 2 of the Schedule, the Controller shall reco rd the international 
registration number and the record is hereby pr escribed as a matter to be entered in the 
register. 
Application for international registration.  
22.     (1)      The proprietor of a basic registration or the applican t in a basic application, 
who wishes to apply for an international registration shall submit the international 
application to the Controlle r and such an application shall be made on the Form 
prescribed by Rule 9 of the Common Regulations. 
(2)      An application for international registration referred to in paragraph (1) may 
be made only where the applicant for such registration is - 
(a)      an Irish citizen, 
(b)      a body or a corporation sole incorporated or constituted under the law 
of the State, 
(c)      a person domiciled in the State, or 
(d)      a person who has a real a nd effective industrial or commercial 
establishment in the State. 
(3)      The Controller shall certify that the particulars appearing in an international 
application correspond with those appearing in the basic application or basic registration. 
(4)      Where colours are claimed in an international application, a note in the 
register, or in the basic applic ation, to the effect that a mark  may be used in a particular 
colour or colours shall be re garded as equivalent to a cl aim for that colour or those 
colours for the purpose of an international application. (5)      The Controller may request from  the applicant for international registration 
such evidence, within a period specified by the Controller, as may be necessary to satisfy 
the Controller that the applican t is eligible, in accordance with paragraph (2), to make the 
application. 
(6)      Where an international applicati on complies with the requirements set out in 
this Regulation, the Controll er shall submit the internat ional application to the 
International Bureau within 2 months of th e date the application was received by the 
Controller. 
(7)      An international application to which paragraph (1) relates shall be made in 
the English language. 
Notification to International Bureau.  
23.     (1)      Where the Controller ha s submitted an internati onal application to the 
International Bureau under Regulation 22, the Controller shall notify the International 
Bureau of the occurrence of any of the events  specified in paragra ph (2) and shall request 
the International Bureau to cance l the international registration to the extent that the event 
concerned applies to the goods or services  covered by the international application. 
(2)      For the purposes of paragraph (1), the following events are specified: 
(a)      where, before the expiry of 5 years from the date of the international 
registration, the Controller refuses to accept the basic application as 
regards some or all of the goods  or services covered by the 
international registration or, after ac cepting the application, refuses to 
register the trade mark as regard s some or all of those goods or 
services, having regard to matters coming to the Controller's notice 
since the Controller accepted the app lication and where, in either case, 
that decision to refuse becomes a final decision, whether before or 
after the expiry of that period of 5 years; 
(b)      opposition proceedings in respect of the basic application which 
commenced before the expiry of 5 years from the date of the international registration result in a final decision not to register the 
trade mark as regards some or all of the goods or services covered by 
the international registration; 
(c)      the basic applic ation is withdrawn or is re stricted as regards goods or 
services covered by the internati onal registration, as  a result of a 
request by the applicant made before  the expiry of 5 years from the 
date of the internationa l registration, or made subsequently in response 
to a refusal to accept the application notified to the applicant before the 
expiry of that period of 5 years or in response to opposition proceedings which commenced before the expiry of that period of 5 
years; 
(d)      the registration resulting from the basic application or basic 
registration is removed from the regi ster before the expiry of 5 years 
from the date of the internationa l registration and a request for its 
restoration is not made within the period specified in Rule 40 of the 
Rules of 1996 or, if such a request is  made within th at period, a final 
decision is made to refuse that request; 
(e)      a final decision is made to revoke or declare inva lid the registration 
resulting from the basic application or  basic registration as a result of 
proceedings which commenced before the expiry of 5 years from the date of the international registration; 
(f)       the registration resulting from the basic application or basic 
registration is surrendered as a re sult of a request by the proprietor 
made before the expiry of 5 years from the date of the international 
registration, or made subsequently in the course of revocation or 
invalidation proceedings which had co mmenced before the expiry of 5 
years from the date of the international registration. 
Evidence of certain matters relating to  an international registration. 
24.     (1)      In all legal proceedings  relating to an intern ational trade mark, the 
registration of a person as the holder of an international trade mark shall be prima facie  
evidence of the validity of the original inte rnational registration and of any subsequent 
assignment or other transmission of it. 
(2)      Judicial notice sh all be taken of the following: 
(a)      the Madrid Protoc ol and the Common Regulations; 
(b)      copies issued by the Inte rnational Bureau of entries in the 
International Register; 
(c)      copies of the Gazette. 
(3)      A document— 
(a)      purporting to be a copy of or ex tract from an entry in an instrument or 
any other act of the In ternational Bureau, or 
(b)      which is referred to in paragraph (2)(b) or (c), shall, without further proof, be received in evidence in any legal pr oceedings and shall, 
until the contrary is shown, be deemed to be a true copy of or extract from such entry or 
such document and be evidence of the terms of such instrument or act or document. 
(4)      For the purpose of this Regulation “legal proceedings” includes proceedings 
before the Controller. 
Communication of informatio n to International Bureau.  
25.     Notwithstanding section 70(3) or any othe r enactment or rule of law, the Controller 
may communicate to the International Bureau any information which the State is required 
to communicate pursuant to these Regulat ion, the Madrid Prot ocol or the Common 
Regulations. Fees.  
26.     (1)      Fees payable under the Madrid Protocol and the Common Regulations in 
respect of international applications and inte rnational trade marks protected in the State 
shall be paid directly to the International Bureau. 
(2)      (a)      The amount of any indivi dual fee referred to in Article 8(7)(a) shall be 
communicated to the International Bu reau in a declaration made under 
Article 8(7)(b). 
(b)      The amount of the individual fee shall - 
(i)       in the case of an intern ational registration de signating the State, 
be equal to the fees payable for a corresponding application and 
registration under the Act of 1996, and 
(ii)      in the case of a renewa l, be equal to a corresponding renewal 
under the Act of 1996. 
Recording of corrections.  
27.     (1)      The Controller shall re cord details of any corrections notified by the 
International Bureau under Rule 28 of the Co mmon Regulations and the record is hereby 
prescribed as a matter to be entered in the register. 
(2)      Where the Controller refuses to r ecognise the effects of a correction referred 
to in paragraph (1) the Controll er shall, within the period of  18 months from the date of 
the notification of the correcti on, give to the International Bureau notice of refusal to 
recognise the effects of that correction. (3)      Where a notice of refusal is gi ven under paragraph (2) the procedure set out 
in regulation 9(1), (2) and (3) shall apply, w ith the necessary modifications, if any, to the 
correction concerned. 
(4)      Where - 
(a)      the Controller does not refuse  to recognise the effects of a correction 
in accordance with paragraph (2), 
(b)      the correction relates to the re presentation of the ma rk or to the goods 
or services, and 
(c)      the international trade ma rk concerned was published in accordance 
with Regulation 8(1) or 12(3), 
the Controller shall publish details of the correction in the Journal. 
Adaptation of entries to new classification.  
28.     The Controller shall not exercise his or her powers under section 68 to implement 
any amended or sustituted classification of goods  or services in rela tion to international 
trade marks. 
Supply of certified and uncertified copies. 
29.     The Controller shall not be required  under Rule 48 of the Rules of 1996 to supply 
certified or uncertified copies or extracts relating to an international trade mark. 
SCHEDULE 
Regulation 19 
PART 1 
Form No. 1M  
TRANSFORMATION APPLICATION UNDER REGULATION 1 9 OF TRADE 
MARKS (MADRID PROTOCOL) REGULATIONS, 2001.  
Reference No. of Applicant 
or Authorised Agent............  
The Applicant(s) hereby request(s) th e registration of the trade mark, 
the representation of which is shown below, on the basis of the following information: 
1.       Applicant(s)  Name: 
Nationality and Address: 
2.       Representation of mark  (not to exceed 8cm × 8cm): 
3.       Type of Mark  (please indicate as appropriate if  the present application relates to 
any of the following) 
□      a collective mark 
□      a certification mark 
□      a three-dimensional mark (If this is  relevant any addition al perspectives must 
be shown on separate sheets). 
4.       State the internatio nal registration date and the in ternational registration number. 
Date:  
Registration Number:  
5      Goods/Services  
The goods/services in respect of which regist ration of the mark represented at 2 is 
requested are: 
Number of Class:  
Goods/Services Description  
6.       Use of Mark  (indicate as appropriate) 
It is hereby declared, in relation to the goods/services indicated at 5, 
□      that the mark to which this application relates is being used by the 
Applicant(s) or with the c onsent of the Applicant(s) 
□      that the Applicant( s) indicated at 1 ha s/have a bona fide intention that the 
mark to which this application relate s should be used in relation to the 
goods/services indicated at 5 
7.       Claim to priority  (give the information below where a right to priority is claimed) 
The right to priority claimed in the inte rnational registration designating the State, 
as identified at 4 above, is hereby cl aimed and the details are as follows. Country/Territory  Date of Filing  
8.       Colour  (complete where appropriate) 
The mark, in use, is/will be in the colour(s)................................. 
(please specify) and the Applicant wishes that upon registration the 
Register shall contain an indication to that effect. 
9.       Disclaimer or Limitation  (indicate and complete as appropriate) 
□      Right to the exclusive use of the following element(s) of the mark is 
disclaimed: 
□      The rights conferred by registra tion of the mark shall be subject to the 
following limitations: 
10.  Registered Trade Mark Agent Authorised  
The following has been appointed to act on behalf of the Applicant(s) in all 
proceedings connected with this applica tion for registration and any proceedings 
arising subsequent to registration. 
Name of Agent  Address  
11.     Address for Service  (indicate and complete as appropriate) 
□            same as at 10 
□            state hereunder the address where no Agent authorised to act 
12.     Signature  (the application may be signed by or on behalf of the Applicant(s) or by 
the Agent named at 10). 
Date:  
To:     The Controller of Patents, Designs & 
Trade Marks, Patents Office, Government 
Buildings, Hebron Road, Kilkenny. 
PART 2 
Regulation 21(2) Form No. 2M  
APPLICATION TO CONTROLLER UNDE R REGULATION 21(2) OF TRADE 
MARKS (MADRID PROTOCOL) REGULATIONS, 2001.  
Reference No. of Applicant or  
Authorised Agent....................  
Application is hereby submitted to the Controller  to note in the Register of Trade Marks, 
in relation to the registered trade mark indica ted below, the particulars of the international 
registration indicated below. 
1.       Applicant(s)  
Name: 
Nationality and Address: 
2.       Registered Trade Mark Agent Authorised  
The following has been appointed to act on behalf of the Applicant(s) in all 
proceedings connected with this applica tion for registration and any proceedings 
arising subsequent to registration. 
Name of Agent  Address  
3.       National Registration No.  
4.       International Registration No.  
5.       Signature  (the application may be signed by or on behalf of the Applicant(s) or by 
the Agent named at 2). 
Date:  
To:     The Controller of Patents, Designs & Trade Marks, 
Patents Office, Government Buildings, Hebron 
Road, Kilkenny. 
 GIVEN under my hand, 24th day of July, 2001. 
 Tom Kitt  
 Minister of State at th e Department of Enterpri se, Trade and Employment. 
EXPLANATORY NOTE  (This note is not part of these Regulati ons and does not purport to be a legal 
interpretation.) 
The Madrid Protocol is an internationa l agreement under the aegis of the World 
Intellectual Property Organisati on (WIPO). Its effect is to allow people and companies to 
submit a single application for a trade mark, through their own national Offices, 
designating any or all countries th at are party to the agreement. 
These Regulations set out the procedures to be followed in connection with trade marks 
and trade mark applications under the Madrid Protocol. 
Published by the Stationery Office, Dublin 4