How the OHIM will handle Madrid filings

1
How the OHIM will handle Madrid filings
2

Basic elements of the CTM procedure (the
direct route)
3
1. Examination of filing date, formalities,
classification, absolute grounds 2.
Publication for opposition 3. 3 months
opposition period for relative grounds
(pre-registration opposition system) 4.
Registration 5. Cancellation on any
substantive ground before the OHIM, or, upon
counterclaim, before infringement court
4


The obtaining of a CTM through the Madrid route
(designation of EC)
5

• Elements to reconcile/ adapt
• - Limited examination
• (on absolute grounds, oppositions)
• - Different role, concept, and timing of
  publications
• - Reversed order (CTMfrom filing to
  registration Madrid from international
  registration to final refusal)
• - Outer Limit of 18 months for refusal

6

• Elements to maintain
• Examination on absolute grounds plus appeal
  possibilities
• Opposition procedure
• Examination of absolute grounds in principle
  before opposition
• Fees should be the same (minus 200 for savings)

7

• Core elements of the Madrid route
• 1. Republication
• - Limited in scope (no lists of goods and
  services)
• - IR gets the effect of a published CTM
  application
• - Informs opponents about second language

8

• 2. Searches, seniority examination
• Done in parallel once republication occurred
• Do not interfere on the rest of the procedure

9

• 3. Absolute grounds examination
• Same standards and procedures save that
  provisional refusal is sent to WIPO(ensuing
  procedure directly with the holder)
• Timing to be done within six months
• If result is O.K., first statement of grant of
  protection
• If result is not O.K., provisional refusal to WIPO

10

• 4. Opposition
• Timing within 6-9 months after republication
• Irrespective of outcome of absolute grounds
  examination
• Same grounds (earlier rights), same procedure
  (cooling-off-period and adversarial part) subject
  to a few exceptions.

11

• 4. Opposition
• D. All oppositions (if admissible) are notified
  to WIPO (provisional refusal based on an
  opposition) and at the same time directly to the
  holder.
• E. If foreigner, the holder must appoint an OHIM
  representative, otherwise the opponent
  automatically wins.

12

• 4. Opposition
• F. If a refusal on absolute grounds is pending,
  the opposition procedure is stayed
• G. Otherwise, the opposition procedure starts in
  the normal way. Once the decision on the
  opposition is final (after Luxembourg, if any),
  the result is communicated to WIPO Confirmation
  or withdrawal of provisional refusal
• H. If no opposition was filed, and provided that
  no refusal on absolute grounds was issued, a
  second statement of grant of protection is sent

13

• 5. The overall timing
• If everything is o.k., youll get
• A first statement of grant of protection (AG
  o.k.)
• within six months,
• a second statement of grant of protection,
  meaning that the mark is finally accepted as a
  registered CTM,
• within 11 months,
• and thus much earlier than the 18 months
  deadline

14

• 5. The overall timing
• B. If there is a problem on absolute or relative
  grounds,
• the procedure is in principle open-ended and may
  well be finished after 18 months, but
• all provisional refusals, including on
  oppositions, must have been notified to WIPO
  within 18 months.

15
THANK YOU!!!