The following amendments to the Common Regulations under the Madrid Agreement and Protocol will take effect on 1 February 2019:
- New Rule: 27bis (Division of an International Registration)
- Deletion of Rule 27 (3)
- New Rule: 27ter (Merger of an International Registration)
- New Rule: 40 (6)
- New item 7.7 (Schedule of Fees)
New Rule 27bis will provide holders of IRs with the possibility to request division of an IR in respect of a designated Contracting Party (CP). The request for the division of the IR must be filed with the designated CP, using the prescribed form, MM22.
The office concerned examines the request for division of the IR to ensure it meets the requirements of its national or regional law before presenting it to the International Bureau (IB). The IB examines the request for any irregularity and whether it meets the requirements of Rule 27bis. If it meets such requirements, the IB will record the division of the IR either (a) when the IB received the request; or (b) when an irregularity was remedied.
A request for division under this rule is subject to the payment of a fee (177 Swiss francs), which is the New Item 7.7 (Schedule of Fees).
Rule 27 (3) will be deleted, and all provisions dealing with merger of IRs will be consolidated in New Rule 27ter.
Paragraph (1) of new Rule 27ter deals with merger of IRs resulting from the recording of a partial change in ownership. A request under 27ter (1) must be presented by the holder either directly to the IB or through the office of the CP of the holder. This is done using the prescribed form, MM23. The payment of a fee is not required.
Paragraph (2) of new Rule 27ter deals with the merger of IRs resulting from the recording of a division. A divisional IR may be merged only with the IR from which it was divided. A request under this paragraph must be presented by the holder through the office that presented the request for division, using the prescribed form, MM24. A request under 27ter (2) cannot be directly presented to the IB. Similarly, the payment of a fee is not required.
New Rule 40 (6) deals with the incompatibility of the foregoing rules with national laws of the CP, and the declarations that a CP may make to notify the IB of such incompatibility.
Anthony D Bengzon is a partner of Bengzon Negre Untalan in the Philippines and a member of the MARQUES International Trade Mark Law and Practice Team