Madrid A System for Businesses

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28 Οκτ 2013 (πριν από 3 χρόνια και 8 μήνες)

60 εμφανίσεις

Madrid


A System for
Businesses

Madrid Seminar

Washington

23 October 2013

Rodrigo Garcia
-
Conde

Examiner

Main points

Using the system efficiently


International Application


Management of International Registration


Renewal of International Registration


Refusal

The most frequent problems


12 useful examples

WIPO’s E
-
services


MPM, MRS, MEA


Madrid Goods & Services Manager


E
-
Renewal and E
-
Payment


Pilot Project: E
-
Subsequent Designation

Date of the International Registration(
*
)

Reception of
the request by
the OO

Reception of the request by
the IB

*

Reception of
the request by
the OO

Reception of the request by
the IB

*

Reception by the IB of the last
missing mandatory element

Reception of
the request by
the OO

*



2 months

2 months

2 months

3

Using the system efficiently


avoiding
irregularities

There are different kinds of irregularity, and different rules
for remedying them.


Irregularities with respect to the classification of goods
and services (Rule 12)

Irregularities with respect to the indication of goods and
services (Rule 13)

Irregularities with respect to the fees (Rule 11(3))

Other related irregularities (Rule 11(4))



How to avoid Rule 12 and 13 irregularities


Use

p
roper punctuation
so that the products and services in a
class are clearly delimited by a
semi
-
colon

(
;
).

Avoid colons (
:
), commas (
,
) and inverted commas (
“ ”
) whenever
possible.

Use a spell checker to avoid spelling mistakes or clerical errors.

Use American spelling.

Use nouns in the plural where possible.

Use the Madrid Goods & Services Manager (MGS) tool.

How to avoid Rule 11 and other irregularities


Read the instructions carefully on
http://www.wipo.int/madrid/en/forms/


Using the system efficiently

The most frequent problems


12 useful examples


Before registration


After registration


Other issues

WIPO’s E
-
services

1/12 Request for changes
before

International Registration


Examples: added designations, modified list of goods
and services, changes to the mark


In principle this is not possible


There are exceptional cases, however, not directly
with the IB


2/12 Color claim


Difference between word and/or designs in color vs. a
“color mark.”



Difference between item 7(d) and item 8 in MM2.


Black and white: color or not?


Basic fee: 653 or 903 CHF?


3/12 Correction requests

Rule 28 of the Common Regulations


Error by the International Bureau


Error by the Office of Origin


Error by the applicant, to be considered on a case
-
by
-
case basis.


Time limit: 9 months


6/12 Another copy of the IR certificate

New procedure from 1 August 2013


Soon available online in Madrid Portofolio Manager


Request for postal delivery against charge


madrid.records@wipo.int



http://www.wipo.int/edocs/madrdocs/en/2013/madrid_
2013_25.pdf





7/12 Second part fees of Japan, Cuba and
Ghana

Following the grant of protection


Notification within 3
-
month deadline


Notification of payment sent directly to the National
Office, not to the client


Japanese Certificate from


JPO after a few weeks


No certificate from CU and GH


8/12 Communication between us



WIPO to User

o
By mail

o
By email


Option for
e
-
communication

on MM
forms


Electronic

Notification Service



User to WIPO

o
By mail, fax or email, see cover page of MM forms

o
If by email, to intreg.mail@wipo.int

o
Do not send directly to Madrid Team mailboxes

9/12 Refusal in another language that the
user opted for


In English, French or Spanish, chosen by the Office


The International Bureau does not provide translations

10/12 Non
-
renewal after 6
-
month grace
period



Scenario
: The IR is renewed only for certain countries.


Question
: Does the IB send a notification of non
-
renewal to
those countries? If so, when?


Answer
: Yes, we send a notification of non
-
renewal, but
only after the 6
-
month grace period has ended

11/12 Declaration under Article 14 (5)


Subsequent designation is not possible if the date of
international registration is earlier than the date of
entering into force of Protocol with respect to the
Contracting Party concerned.


Estonia, India, Namibia, Philippines and Turkey

12/12 Use of class headings


Class headings are allowed in the International
Application


However, they do
not

bind

Contracting Parties (Art.
4(1)(b))


Also, in some countries, a class heading is
not deemed
to include all the goods and services in that class.


More information:
http://www.wipo.int/edocs/madrdocs/en/2012/madrid_2012_23.pdf


WIPO’s e
-
services


Pilot Project:

E
-
Subsequent Designation

Data entry mistakes USPTO => WIPO 1/2


In New IA’s:

Mark color/description



The examiner
has to amend it as follows:

Colors:
Black, white, and green.

Parts:
deleted

Description:
The mark consists of the word "mobile" in
black, then a green square which contains the word "app"
in white and has three rounded green lines near its upper
right hand corner, then the word "tracking" in black



Data entry mistakes USPTO => WIPO 2/2


Priority details.


The IB will delete all these terms from the screen, because they are
entirely identical to the basic list of the international application
.


Useful Links


http://www.wipo.int/madrid/en

Legal Texts and Guide



http://www.wipo.int/madrid/en/legal_texts/


E
-
WIPO Gazette of International Marks


http://www.wipo.int/madridgazette/en/


Fee Calculator



http://www.wipo.int/madrid/en/fees/calculator.jsp


International Application Simulator


http://www.wipo.int/madrid/en/madrid_simulator/


E
-
Renewal




https://webaccess.wipo.int/trademarks_ren/erenewal_en.jsp


E
-
Payment




https://webaccess.wipo.int/epayment/


ROMARIN (database of international marks)

http://www.wipo.int/romari n


Global Brand Database



http://www.wipo.int/branddb/en/index.jsp


Country Profiles



http://www.wipo.int/madrid/en/members/ipoffices_info.html


Goods & Services Manager


http://www.wipo.int/gsmanager/index.jsp?lang=en


Other Online Tools



http://www.wipo.int/madrid/en/services/


Thank you!

Questions?



rodrigo.garcia
conde@wipo.i
nt