Rule 9 Requirements Concerning the International Application

1.

2.

a)

The international application shall be presented on the official form.

b)

The international application shall be signed by the Office of origin and, where the Office of origin so requires, also by the applicant. Where the Office of origin does not require the applicant to sign the international application but allows that the applicant also sign it, the applicant may do so.

3.

4.

a)

The international application shall contain or indicate

(i)

the name of the applicant, given in accordance with the Administrative Instructions,

(ii)

the address, given in accordance with the Administrative Instructions, and the electronic mail address of the applicant,

(iii)

the name and address, given in accordance with the Administrative Instructions, and the electronic mail address of the representative, if any,

(iv)

where the applicant wishes, under the Paris Convention for the Protection of Industrial Property, to take advantage of the priority of an earlier filing, a declaration claiming the priority of that earlier filing, together with an indication of the name of the Office where such filing was made and of the date and, where available, the number of that filing, and, where the earlier filing relates to less than all the goods and services listed in the international application, the indication of those goods and services to which the earlier filing relates,

(v)

a representation of the mark, furnished in accordance with the Administrative Instructions, that shall be in color where color is claimed under item (vii),

(vi)

where the applicant wishes that the mark be considered as a mark in standard characters, a declaration to that effect,

(vii)

where color is claimed as a distinctive feature of the mark in the basic application or basic registration, or where the applicant wishes to claim color as a distinctive feature of the mark and the mark contained in the basic application or basic registration is in color or is applied to be or is protected in color, an indication that color is claimed and an indication by words of the color or combination of colors claimed,

(viibis)

where the mark that is the subject of the basic application or the basic registration consists of a color or a combination of colors as such, an indication to that effect,

(viii)

where the basic application or the basic registration relates to a three-dimensional mark, the indication ‘three-dimensional mark,’

(ix)

where the basic application or the basic registration relates to a sound mark, the indication ‘sound mark,’

(x)

where the basic application or the basic registration relates to a collective mark or a certification mark or a guarantee mark, an indication to that effect,

(xi)

where the basic application or the basic registration contains a description of the mark by words and the Office of origin requires the inclusion of the description, that same description; where the said description is in a language other than the language of the international application, it shall be given in the language of the international application,

(xii)

where the mark consists of or contains matter in characters other than Latin characters or numbers expressed in numerals other than Arabic or Roman numerals, a transliteration of that matter in Latin characters and Arabic numerals; the transliteration into Latin characters shall follow the phonetics of the language of the international application,

(xiii)

the names of the goods and services for which the international registration of the mark is sought, grouped in the appropriate classes of the International Classification of Goods and Services, each group preceded by the number of the class and presented in the order of the classes of that Classification; the goods and services shall be indicated in precise terms, preferably using the words appearing in the Alphabetical List of the said Classification; the international application may contain limitations of the list of goods and services in respect of one or more designated Contracting Parties; the limitation in respect of each Contracting Party may be different,

(xiv)

the amount of the fees being paid and the method of payment, or instructions to debit the required amount of fees to an account opened with the International Bureau, and the identification of the party effecting the payment or giving the instructions, and

(xv)

the designated Contracting Parties.

b)

The international application may also contain,

(i)

where the applicant is a natural person, an indication of the State of which the applicant is a national;

(ii)

where the applicant is a legal entity, indications concerning the legal nature of that legal entity and the State, and, where applicable, the territorial unit within that State, under the law of which the said legal entity has been organized;

(iii)

where the mark consists of or contains a word or words that can be translated, a translation of that word or those words into English, French and Spanish, or in any one or two of those languages;

(iv)

where the applicant claims color as a distinctive feature of the mark, an indication by words, in respect of each color, of the principal parts of the mark which are in that color;

(v)

where the applicant wishes to disclaim protection for any element of the mark, an indication of that fact and of the element or elements for which protection is disclaimed;

(vi)

any description of the mark by words or, if the applicant so wishes, the description of the mark by words contained in the basic application or the basic registration, where it has not been provided under paragraph (4)(a)(xi).

5.

a)

[Deleted]

b)

The international application shall contain the number and date of the basic application or basic registration and shall indicate one or more of the following:

(i)

where the Contracting Party whose Office is the Office of origin is a State, that the applicant is a national of that State;

(ii)

where the Contracting Party whose Office is the Office of origin is an organization, the name of the Member State of that organization of which the applicant is a national;

(iii)

that the applicant has a domicile in the territory of the Contracting Party whose Office is the Office of origin;

(iv)

that the applicant has a real and effective industrial or commercial establishment in the territory of the Contracting Party whose Office is the Office of origin.

c)

Where the address of the applicant given in accordance with paragraph (4)(a)(ii) is not in the territory of the Contracting Party whose Office is the Office of origin and it has been indicated under subparagraph (a)(i) or (ii) or subparagraph (b)(iii) or (iv) that the applicant has a domicile or an establishment in the territory of that Contracting Party, that domicile or the address of that establishment shall be given in the international application.

d)

The international application shall contain a declaration by the Office of origin certifying

(i)

the date on which the Office of origin received the request by the applicant to present the international application to the International Bureau,

(ii)

that the applicant named in the international application is the same as the applicant named in the basic application or the holder named in the basic registration, as the case may be,

(iii)

that any indication referred to in paragraph (4)(a)(viibis) to (xi) and appearing in the international application appears also in the basic application or the basic registration, as the case may be,

(iv)

that the mark that is the subject matter of the international application is the same as in the basic application or the basic registration, as the case may be,

(v)

that, if color is claimed as a distinctive feature of the mark in the basic application or the basic registration, or the mark in the basic application or the basic registration is applied to be or is protected in color, a color claim is included in the international application or that, if color is claimed as a distinctive feature of the mark in the international application without having being claimed in the basic application or basic registration, the mark in the basic application or basic registration is in fact in the color or combination of colors claimed, and

(vi)

that the goods and services indicated in the international application are covered by the list of goods and services appearing in the basic application or basic registration, as the case may be.

e)

Where the international application is based on two or more basic applications or basic registrations, the declaration referred to in subparagraph (d) shall be deemed to apply to all those basic applications or basic registrations.

f)

Where the international application contains the designation of a Contracting Party that has made a notification under Rule 7(2), the international application shall also contain a declaration of intention to use the mark in the territory of that Contracting Party; the declaration shall be considered part of the designation of the Contracting Party requiring it and shall, as required by that Contracting Party,

(i)

be personally signed by the applicant and be made on a separate official form annexed to the international application, or

(ii)

be included in the international application.

g)

Where an international application contains the designation of a Contracting Organization, it may also contain the following indications:

(i)

where the applicant wishes to claim, under the law of that Contracting Organization, the seniority of one or more earlier marks registered in, or for, a Member State of that Organization, a declaration to that effect, stating the Member State or Member States in or for which the earlier mark is registered, the date from which the relevant registration was effective, the number of the relevant registration and the goods and services for which the earlier mark is registered. Such indications shall be on an official form to be annexed to the international application;

(ii)

where, under the law of that Contracting Organization, the applicant is required to indicate a second working language before the Office of that Contracting Organization, in addition to the language of the international application, an indication of that second language.