Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement:Rule 18 Irregular Notifications of Provisional Refusal

Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement

Rule 18 Irregular Notifications of Provisional Refusal

Geldend

Documentgegevens:

Geldend vanaf 01-11-2023

Bronpublicatie:: 14-07-2023, Trb. 2023, 136 (uitgifte: 08-12-2023, kamerstukken/regelingnummer: -)
Inwerkingtreding: 01-11-2023
Bronpublicatie inwerkingtreding:: 14-07-2023, Trb. 2023, 136 (uitgifte: 08-12-2023, kamerstukken/regelingnummer: -)
Vakgebied(en): Intellectuele-eigendomsrecht / Modellen- en merkenrecht

1.

[General]

a)

A notification of provisional refusal communicated by the Office of a designated Contracting Party shall not be regarded as such by the International Bureau

(i): if it does not contain any international registration number, unless other indications contained in the notification permit the international registration to which the provisional refusal relates to be identified,
(ii): if it does not indicate any grounds for refusal, or
(iii): if it is sent too late to the International Bureau, that is, if it is sent after the expiry of the time limit applicable under Article 5(2)(a) or, subject to Article 9sexies(1)(b) of the Protocol, under Article 5(2)(b) or (c)(ii) of the Protocol, from the date on which the International Bureau sent the notification of the international registration or of the designation made subsequently.

b)

Where subparagraph (a) applies, the International Bureau shall nevertheless transmit a copy of the notification to the holder, shall inform, at the same time, the holder and the Office that sent the notification that the notification of provisional refusal is not regarded as such by the International Bureau, and shall indicate the reasons therefor.

c)

If the notification

(i): is not signed on behalf of the Office which communicated it, or does not otherwise comply with the requirements of Rule 2 or with the requirement applicable under Rule 6(2),
(ii): ddoes not contain, where applicable, the details of the mark with which the mark that is the subject of the international registration appears to be in conflict (Rule 17(2)(v) and (3)),
(iii): does not comply with the requirements of Rule 17(2)(vi), or
(iv): [Deleted]
(v): [Deleted]
(vi): does not contain, where applicable, the name and address of the opponent and the indication of the goods and services on which the opposition is based (Rule 17(3)),

the International Bureau shall, nonetheless record the provisional refusal in the International Register.

The International Bureau shall invite the Office that communicated the provisional refusal to send a rectified notification within two months from the invitation and shall transmit to the holder copies of the irregular notification and of the invitation sent to the Office concerned.

d)

Where the notification does not comply with the requirements of Rule 17(2)(vii) to (x), the provisional refusal shall not be regarded as such and shall not be recorded in the International Register. The International Bureau shall inform the Office that communicated the provisional refusal of this fact, indicate the reasons therefor and transmit to the holder a copy of the defective notification. However, if the Office sends a rectified notification within two months from the date on which the International Bureau informed this Office of the defective notification, the rectified notification shall be regarded, for the purposes of Article 5 of the Protocol, as having been sent on the date on which the defective notification had been sent to the International Bureau and shall be recorded in the International Register.

e)

Any rectified notification shall, where the applicable law so permits, indicate a new time limit and provide information, in accordance with Rule 17(2)(vii) to (x), for filing a request for review of, or appeal against, the ex officio provisional refusal or the provisional refusal based on an opposition and, as the case may be, for filing a response to the opposition.

f)

The International Bureau shall transmit a copy of any rectified notification to the holder.

2.

[Notification of Provisional Refusal Made Under Article 5(2)(c) of the Protocol]

a): [Deleted]
b): Paragraph (1)(a) shall apply to determine whether the time limit before the expiry of which the Office of the Contracting Party concerned must give the International Bureau the information referred to in Article 5(2)(c)(i) of the Protocol has been complied with. If such information is given after the expiry of that time limit, it shall be regarded as not having been given and the International Bureau shall inform the Office concerned accordingly.
c): Where the notification of provisional refusal based on an opposition is made under Article 5(2)(c)(ii) of the Protocol without the requirements of Article 5(2)(c)(i) of the Protocol having been complied with, it shall not be regarded as a notification of provisional refusal. In such a case, the International Bureau shall nevertheless transmit a copy of the notification to the holder, shall inform, at the same time, the holder and the Office that sent the notification that the notification of provisional refusal is not regarded as such by the International Bureau, and shall indicate the reasons therefor.