S.I. No. 346/2001 - Trade Marks (Madrid Protocol) Regulations, 2001

ARRANGEMENT OF REGULATIONS

1.	Citation and commencement.
2.	Interpretation.
3.	Application of Act of 1996.
4.	Application of Rules of 1996.
5.	Entitlement to protection.
6.	Effects of international trade mark.
7.	Examination of an international registration designating the State.
8.	Publication, opposition proceedings and observations.
9.	Notice of refusal to grant protection to an international registration designating the State.
10.	Amendment of an international registration designating the State.
11.	Claiming of priority in respect of an international registration designating the State.
12.	Granting protection to an international registration designating the State.
13.	Division and merger of international trade marks.
14.	Duration of registration of an international trade mark.
15.	Renewal of protection for an international trade mark.
16.	Alteration of an international trade mark.
17.	Surrender of an international trade mark.
18.	Revocation and invalidity of an international trade mark.
19.	Transformation applications.
20.	Procedure upon filing of transformation application.
21.	Effects of international registration where trade mark is also registered under Act of 1996.
22.	Application for international registration.
23.	Notification to International Bureau.
24.	Evidence of certain matters relating to an international registration.
25.	Communication of information to International Bureau.
26.	Fees.
27.	Recording of corrections.
28.	Adaptation of entries to new classification.
29.	Supply of certified and uncertified copies.

SCHEDULE

PART I FORM NO. 1M

Transformation Application under Regulation 19

PART 2 FORM NO. 2M

Application to Controller under Regulation 21(2)

I, Tom Kitt, Minister of State at the Department of Enterprise, Trade and Employment, in exercise of the powers conferred on me by sections 59 , 66 , 69 and 81 of the Trade Marks Act, 1996 (No. 6 of 1996) (as adapted by the Enterprise and Employment (Alteration of Name of Department and Title of Minister) Order, 1997 (S.I. 305 of 1997), and the Enterprise, Trade and Employment (Delegation of Ministerial Functions)(No. 2) Order, 1997 ( S.I. No. 330 of 1997 )), and a resolution approving a draft of these regulations having been passed by both Houses of the Oireachtas in accordance with section 3(3)(a) of the said Act, hereby make the following regulations:

Citation and commencement.

• (2) These Regulations shall come into operation on the 19^th day of October 2001.

Interpretation.

“Act of 1996” means the Trade Marks Act 1996 (No. 6 of 1996);

“basic application” means an application for registration of a trade mark in the State in respect of which application is made for international registration;

“basic registration” means a trade mark registered in the State in respect of which application is made for international registration;

“Common Regulations” means the regulations adopted under Article 10 of the Madrid Protocol;

“Gazette” means the periodical gazette referred to in Rule 32 of the Common Regulations;

“holder” means a person in whose name an international registration is recorded in the International Register;

“International application” means an application to the International Bureau for registration of a trade mark in the International Register;

“International Bureau” means the International Bureau of the World Intellectual Property Organisation;

“International Register” means the register of trade marks maintained by the International Bureau for the purposes of the Madrid Protocol;

“international registration” means the registration of a trade mark in the International Register;

“international registration designating the State” means an international registration in relation to which a request has been made (either in the relevant international application or subsequently) for extension of protection to the State under Article 3ter (1) or (2) of the Madrid Protocol;

“international trade mark” means a trade mark which is entitled to protection in the State under the Madrid Protocol;

“Journal” means the Patents Office Journal;

“Madrid Agreement” means the Madrid Agreement Concerning the International Registration of Marks of April 14, 1891, as revised at Stockholm on July 14, 1967, and amended on September 28, 1979;

“Madrid Protocol” means the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, adopted at Madrid on June 27, 1989;

“Office of origin” means the Office with which a basic application was filed or a basic registration was made and through which an application for international registration is filed with the International Bureau and, in the case of the State, “Office of origin” means the Patents Office;

“register” means the Register of Trade Marks kept under the Act of 1996;

“Rules of 1996” means the Trade Marks Rules, 1996 ( S.I. No. 199 of 1996 );

“transformation application” has the meaning assigned to it by Regulation 19.

• (2) A word or expression that is used in these Regulations and is also used in the Madrid Protocol or the Common Regulations has, unless the contrary intention appears, the same meaning in these Regulations as it has in the Madrid Protocol or the Common Regulations.

• (3) In these Regulations, unless the contrary intention appears -

• (a) a reference to a Regulation or Schedule is a reference to a Regulation of or a Schedule to these Regulations,

• (b) a reference to a paragraph or subparagraph is a reference to a paragraph of the provision in which the reference occurs,

• (c) a reference to an Article is to an Article of the Madrid Protocol, and

• (d) a reference to a section is to a section of the Act of 1996.

Application of Act of 1996.

Application of Rules of 1996.

Entitlement to protection.

• (a) if the particulars of the international registration designating the State were comprised in an application for registration of a trade mark under the Act of 1996, the application would satisfy the requirements for registration,

• (b) the application proceeds to publication,

• (c) following publication—

• (i) no notice of opposition has been received within the period specified in Regulation 8, or

• (ii) all opposition proceedings have been withdrawn or decided in favour of the holder,

and

• (d) the Controller, having due regard to any matter coming to his or her notice since accepting the application, is satisfied it was not accepted in error.

• (2) Notwithstanding paragraph (1), an international registration designating the State shall be entitled to protection in the State where, within the period of 18 months from the date of the notification to the Controller of the international registration designating the State, none of the following notices has been sent to the International Bureau -

• (a) notice of refusal under Regulation 7(2),

• (b) notice of refusal based on an opposition under Regulation 8, or

• (c) notice of the possibility that a refusal based on an opposition may be filed after the expiry of that period of 18 months under Regulation 9(4).

Effects of international trade mark.

Examination of an international registration designating the State.

• (2)
• (a) Subject to Regulation 9, if it appears to the Controller that the requirements referred to in paragraph (1) are not satisfied, the Controller shall give a notice of refusal to the International Bureau.

• (b) If the requirements referred to in paragraph (1) are not satisfied only in relation to some of the goods or services in respect of which protection in the State has been requested, the notice of refusal shall state this.

Publication, opposition proceedings and observations.

• (2) A person may, within 3 months of the date of publication of a notice under paragraph (1), give notice to the Controller of opposition to the conferring of protection in accordance with section 43 and Rule 18 of the Rules of 1996.

• (3) The Controller shall, subject to Regulation 9(7), upon notice of opposition being given under paragraph (2), and in any event within 4 months of the date of publication of a notice under paragraph (1), give notice of refusal to the International Bureau in accordance with Rule 17 of the Common Regulations.

• (4) Within 3 months of the date on which notice of refusal based on opposition is given to the International Bureau under paragraph (3), the holder may file a counter-statement and, where the holder does so, he or she shall provide an address for service in the State.

• (5) For the purpose of this regulation, references to “the applicant” in Rules 19 to 23 and Rule 26 of the Rules of 1996 shall be construed as references to “the holder”.

• (6) The Controller shall not accept observations under section 43(3) where the period specified in Regulation 9(1) has expired or where a notification has been issued to the International Bureau under Regulation 12(3).

Notice of refusal to grant protection to an international registration designating the State.

• (2) A notice of refusal under Regulation 7(2) shall specify the period within which the holder may make representations to the Controller and shall set out the matters required by Article 5 of the Madrid Protocol and Rule 17 of the Common Regulations.

• (3)
• (a) Where a holder makes representations to the Controller under paragraph (2), he or she shall give to the Controller an address for service and paragraphs (1) and (2) of Rule 10 of the Rules of 1996 shall apply.

• (b) Where an address for service has not been given as required by subparagraph (a), and the holder does not provide an address for service within the period specified in Rule 10(3) of the Rules of 1996, the international registration designating the State shall be treated as abandoned.

• (4) The Controller shall, before the expiry of the period specified in paragraph (1), give notice to the International Bureau of the number and name of the holder of an international registration in respect of which there is a possibility that a refusal based on an opposition may be filed after the expiry of that period.

• (5)
• (a) Where notice is given under paragraph (4), and the dates on which the opposition period begins and ends are known, those dates shall be indicated in the notification.

• (b) Where notice is given under paragraph (4), and the dates on which the opposition period begins and ends are not known, the International Bureau shall be informed of those dates as soon as practicable after they become known.

• (6) The Controller shall notify the International Bureau before the expiry of the period of 18 months specified in paragraph (1)—

• (a) if the period specified in Regulation 8(2) for filing oppositions expires within the period of 30 days before the expiry of that period of 18 months, and

• (b) that there is the possibility that oppositions may be filed during that period of 30 days.

• (7) The Controller shall notify the International Bureau of any refusal based on an opposition filed during the period of 30 days referred to in paragraph (6) within one month from the date of filing of the opposition.

• (8) Where notice of refusal has been given under Regulation 7(2) or notice of refusal based on an opposition has been given under Regulation 8(3), the Controller shall, upon a final decision being made in relation to the refusal, notify the International Bureau of that decision.

Amendment of an international registration designating the State.

• (2) Where the International Bureau notifies the Controller of an amendment in accordance with the said Rule 25, the provisions of the Act of 1996 and the Rules of 1996 shall, with the necessary modifications, apply to the notification where the notification concerns the goods or services for which protection is sought.

• (3) The Controller shall keep a record of the details of any of the matters referred to in Rule 25(1)(a)(i) to (v) of the Common Regulations which are notified by the International Bureau and the record is hereby prescribed as a matter to be entered in the register.

Claiming of priority in respect of an international registration designating the State.

Granting protection to an international registration designating the State.

• (a) none of the notices specified in Regulation 5(2)(a), (b) or (c) has been given to the International Bureau, or

• (b) notice of refusal has been given but the final decision notified to the International Bureau under Regulation 9 is such that protection is to be conferred (whether for some or all the goods and services to which the notification of the international registration designating the State relates),

the international registration designating the State shall become protected in the State and, where the final decision referred to in Regulation 9(8) is to the effect that protection is not to be conferred in respect of some of the goods or services for which protection has been requested, protection shall apply only in relation to the remaining goods or services.

• (2) Subject to Regulation 21, for the purposes of application by these Regulations of the Act of 1996, a trade mark protected under paragraph (1) shall be treated as being registered under the Act of 1996 from the date provided for in Article 3(4) or Article 3^ter, as appropriate.

• (3) When a trade mark becomes protected under this Regulation, the Controller shall notify the International Bureau and publish the international registration in the Journal.

• (4) The Controller shall keep a record of international trade marks which shall include the following:

• (a) the date referred to in paragraph (2),

• (b) the date of publication in the Journal of the granting of protection,

• (c) the priority date, if applicable,

• (d) the name and address of the holder,

• (e) any disclaimers or limitations,

• (f) the goods and services in respect of which protection is claimed,

• (g) whether the international trade mark is a collective or certification mark,

• (h) any consent under section 10(6) by the proprietor of an earlier trade mark or other right to which that section relates,

• (i) the international registration number, and

• (j) any other information which is required to be recorded in the register in respect of a trade mark registered under the Act of 1996,

and the record is hereby prescribed as a matter to be entered in the register.

Division and merger of international trade marks.

• (2) Where, during a period of 5 years from the date of international registration, a basic application is divided the Controller shall notify the International Bureau and shall indicate—

• (a) the number of the international registration or, if the international registration has not yet been effected, the number of the basic application,

• (b) the name of the holder or applicant of the basic application, and

• (c) the number of each application resulting from the division of the application.

• (3)
• (a) The Controller shall not accept an application under section 46 and Rule 29 of the Rules of 1996 to merge international registrations designating the State or international trade marks.

• (b) Where the Controller receives a request for a merger of international registrations under Rule 27(3) of the Common Regulations the Controller shall forward such a request to the International Bureau.

Duration of registration of an international trade mark.

• (b) The period of protection may be extended in accordance with Article 7 of the Madrid Protocol and Rules 30 and 31 of the Common Regulations.

Renewal of protection for an international trade mark.

• (2) The Controller shall keep a record of the details of any renewals of protection for international trademarks received from the International Bureau under Rule 31 (3) of the Common Regulations and the record is hereby prescribed as a matter to be entered in the register.

Alteration of an international trade mark.

Surrender of an international trade mark.

Revocation and invalidity of an international trade mark.

• (2)
• (a) The reference in section 51(1) to the date of publication of the registration shall be construed as a reference to the date of publication under Regulation 12(3).

• (b) The reference in section 51(2) to the form in which a trade mark was registered shall be construed as a reference to the form in which an international trade mark is protected in the State.

• (c) The references in section 51(5) and section 52(5) to goods or services for which the trade mark is registered shall be construed as references to goods or services in respect of which the international trade mark is protected in the State.

• (d) The references in section 51 to the registration of a trade mark being revoked and the references in section 52 to the registration of a trade mark being declared invalid shall be construed as references to the protection in the State of an international trade mark being revoked or declared invalid, as the case may be.

• (3) Where the protection of an international trade mark is revoked to any extent the rights of the holder shall be deemed to have ceased to exist—

• (a) from the date of the application for revocation, or

• (b) if the Controller or the Court is satisfied that the grounds for revocation existed at an earlier date, that date.

• (4) Where the protection of an international trade mark is declared invalid to any extent, the protection shall to that extent be deemed never to have existed, provided that this shall not affect transactions past and closed.

Transformation applications.

• (a) an international registration designating the State is cancelled at the request of the Office of origin under Article 6(4) in respect of some or all of the goods or services listed in the registration,

• (b) an application (in these Regulations referred to as a “transformation application”) is made to the Controller, within 3 months of the date on which the international registration was cancelled, for registration in the State of a trade mark identical to that comprised in the international registration in respect of some or all of the goods or services in respect of which the international registration was cancelled, and

• (c) the transformation application is made by the person who was the holder of the international registration immediately before its cancellation.

• (2)
• (a) A transformation application shall, subject to this Regulation and Regulation 20, be treated as an application under the Act of 1996 for registration of the trade mark concerned.

• (b) A transformation application shall be made on Form No. 1M as set out in Part 1 of the Schedule and shall state that the application is made by way of transformation.

• (c) A transformation application shall not be subject to a fee.

• (3) A transformation application shall be treated as if it had been filed on the date of the international registration in accordance with Article 3(4) or, where protection in the State was requested after the date of the international registration, on the date such request was recorded by the International Bureau under Article 3ter(2).

• (4) If the international registration included a claim to priority, including priority in the State, the same claim to priority may be included in the transformation application.

Procedure upon filing of transformation application.

• (2) Where the trade mark referred to in paragraph (1) has not become entitled to protection in the State under Regulation 12 at the transformation date, the following shall apply:

• (a) if, at the transformation date, a notice has been published under Regulation 8(1) in respect of the trade mark concerned, the publication of the notice shall be treated as being the publication of the transformation application under section 43(1);

• (b) if, at the transformation date, notice of opposition to the conferring of protection has been given to the Controller under Regulation 8(2), such notice of opposition shall be treated as if it had been received by the Controller under section 43(2);

• (c) if, at the transformation date, a notice has not been published under Regulation 8(1) but the Controller has given a notice of refusal under Regulation 7(2), the notice of refusal shall be treated as if it had been given under section 42(2).

Effects of international registration where trade mark is also registered under the Act of 1996.

• (a) all the goods and services in respect of which the trade mark is registered are the same as those in respect of which the international registration is protected, and

• (b) such protection takes effect after the date of registration of the registered trade mark.

• (2) On the application of the holder of an international trade mark on Form No. 2M as set out in Part 2 of the Schedule, the Controller shall record the international registration number and the record is hereby prescribed as a matter to be entered in the register.

Application for international registration.

• (2) An application for international registration referred to in paragraph (1) may be made only where the applicant for such registration is -

• (a) an Irish citizen,

• (b) a body or a corporation sole incorporated or constituted under the law of the State,

• (c) a person domiciled in the State, or

• (d) a person who has a real and effective industrial or commercial establishment in the State.

• (3) The Controller shall certify that the particulars appearing in an international application correspond with those appearing in the basic application or basic registration.

• (4) Where colours are claimed in an international application, a note in the register, or in the basic application, to the effect that a mark may be used in a particular colour or colours shall be regarded as equivalent to a claim for that colour or those colours for the purpose of an international application.

• (5) The Controller may request from the applicant for international registration such evidence, within a period specified by the Controller, as may be necessary to satisfy the Controller that the applicant is eligible, in accordance with paragraph (2), to make the application.

• (6) Where an international application complies with the requirements set out in this Regulation, the Controller shall submit the international application to the International Bureau within 2 months of the date the application was received by the Controller.

• (7) An international application to which paragraph (1) relates shall be made in the English language.

Notification to International Bureau.

• (2) For the purposes of paragraph (1), the following events are specified:

• (a) where, before the expiry of 5 years from the date of the international registration, the Controller refuses to accept the basic application as regards some or all of the goods or services covered by the international registration or, after accepting the application, refuses to register the trade mark as regards some or all of those goods or services, having regard to matters coming to the Controller's notice since the Controller accepted the application and where, in either case, that decision to refuse becomes a final decision, whether before or after the expiry of that period of 5 years;

• (b) opposition proceedings in respect of the basic application which commenced before the expiry of 5 years from the date of the international registration result in a final decision not to register the trade mark as regards some or all of the goods or services covered by the international registration;

• (c) the basic application is withdrawn or is restricted as regards goods or services covered by the international registration, as a result of a request by the applicant made before the expiry of 5 years from the date of the international registration, or made subsequently in response to a refusal to accept the application notified to the applicant before the expiry of that period of 5 years or in response to opposition proceedings which commenced before the expiry of that period of 5 years;

• (d) the registration resulting from the basic application or basic registration is removed from the register before the expiry of 5 years from the date of the international registration and a request for its restoration is not made within the period specified in Rule 40 of the Rules of 1996 or, if such a request is made within that period, a final decision is made to refuse that request;

• (e) a final decision is made to revoke or declare invalid the registration resulting from the basic application or basic registration as a result of proceedings which commenced before the expiry of 5 years from the date of the international registration;

• (f) the registration resulting from the basic application or basic registration is surrendered as a result of a request by the proprietor made before the expiry of 5 years from the date of the international registration, or made subsequently in the course of revocation or invalidation proceedings which had commenced before the expiry of 5 years from the date of the international registration.

Evidence of certain matters relating to an international registration.

• (2) Judicial notice shall be taken of the following:

• (a) the Madrid Protocol and the Common Regulations;

• (b) copies issued by the International Bureau of entries in the International Register;

• (c) copies of the Gazette.

• (3) A document—

• (a) purporting to be a copy of or extract from an entry in an instrument or any other act of the International Bureau, or

• (b) which is referred to in paragraph (2)(b) or (c),

shall, without further proof, be received in evidence in any legal proceedings and shall, until the contrary is shown, be deemed to be a true copy of or extract from such entry or such document and be evidence of the terms of such instrument or act or document.

• (4) For the purpose of this Regulation “legal proceedings” includes proceedings before the Controller.

Communication of information to International Bureau.

Fees.

• (2)
• (a) The amount of any individual fee referred to in Article 8(7)(a) shall be communicated to the International Bureau in a declaration made under Article 8(7)(b).

• (b) The amount of the individual fee shall -

• (i) in the case of an international registration designating the State, be equal to the fees payable for a corresponding application and registration under the Act of 1996, and

• (ii) in the case of a renewal, be equal to a corresponding renewal under the Act of 1996.

Recording of corrections.

• (2) Where the Controller refuses to recognise the effects of a correction referred to in paragraph (1) the Controller shall, within the period of 18 months from the date of the notification of the correction, give to the International Bureau notice of refusal to recognise the effects of that correction.

• (3) Where a notice of refusal is given under paragraph (2) the procedure set out in regulation 9(1), (2) and (3) shall apply, with the necessary modifications, if any, to the correction concerned.

• (4) Where -

• (a) the Controller does not refuse to recognise the effects of a correction in accordance with paragraph (2),

• (b) the correction relates to the representation of the mark or to the goods or services, and

• (c) the international trade mark concerned was published in accordance with Regulation 8(1) or 12(3),

the Controller shall publish details of the correction in the Journal.

Adaptation of entries to new classification.

Supply of certified and uncertified copies.

SCHEDULE

Regulation 19

PART 1 Form No. 1M

TRANSFORMATION APPLICATION UNDER REGULATION 19 OF TRADE MARKS (MADRID PROTOCOL) REGULATIONS, 2001.

Reference No. of Applicant

or Authorised Agent............

The Applicant(s) hereby request(s) the registration of the trade mark,

the representation of which is shown below, on the basis of the following information:

1. Applicant(s)

Name:

Nationality and Address:

2. Representation of mark (not to exceed 8cm × 8cm):

3. Type of Mark (please indicate as appropriate if the present application relates to any of the following)

□ a collective mark

□ a certification mark

□ a three-dimensional mark (If this is relevant any additional perspectives must be shown on separate sheets).

4. State the international registration date and the international registration number.

Date:

Registration Number:

5 Goods/Services

The goods/services in respect of which registration of the mark represented at 2 is requested are:

Number of Class:

Goods/Services Description

6. Use of Mark (indicate as appropriate)

It is hereby declared, in relation to the goods/services indicated at 5,

□ that the mark to which this application relates is being used by the Applicant(s) or with the consent of the Applicant(s)

□ that the Applicant(s) indicated at 1 has/have a bona fide intention that the mark to which this application relates should be used in relation to the goods/services indicated at 5

7. Claim to priority (give the information below where a right to priority is claimed)

The right to priority claimed in the international registration designating the State, as identified at 4 above, is hereby claimed and the details are as follows.

Country/Territory	Date of Filing

8. Colour (complete where appropriate)

The mark, in use, is/will be in the colour(s).................................

(please specify) and the Applicant wishes that upon registration the

Register shall contain an indication to that effect.

9. Disclaimer or Limitation (indicate and complete as appropriate)

□ Right to the exclusive use of the following element(s) of the mark is disclaimed:

□ The rights conferred by registration of the mark shall be subject to the following limitations:

10. Registered Trade Mark Agent Authorised

The following has been appointed to act on behalf of the Applicant(s) in all proceedings connected with this application for registration and any proceedings arising subsequent to registration.

Name of Agent	Address

11. Address for Service (indicate and complete as appropriate)

□ same as at 10

□ state hereunder the address where no Agent authorised to act

12. Signature (the application may be signed by or on behalf of the Applicant(s) or by the Agent named at 10).

Date:

To: The Controller of Patents, Designs &

Trade Marks, Patents Office, Government

Buildings, Hebron Road, Kilkenny.

PART 2

Regulation 21(2)

Form No. 2M

APPLICATION TO CONTROLLER UNDER REGULATION 21(2) OF TRADE MARKS (MADRID PROTOCOL) REGULATIONS, 2001.

Reference No. of Applicant or

Authorised Agent....................

Application is hereby submitted to the Controller to note in the Register of Trade Marks, in relation to the registered trade mark indicated below, the particulars of the international registration indicated below.

1. Applicant(s)

Name:

Nationality and Address:

2. Registered Trade Mark Agent Authorised

The following has been appointed to act on behalf of the Applicant(s) in all proceedings connected with this application for registration and any proceedings arising subsequent to registration.

Name of Agent	Address

3. National Registration No.

4. International Registration No.

5. Signature (the application may be signed by or on behalf of the Applicant(s) or by the Agent named at 2).

Date:

To: The Controller of Patents, Designs & Trade Marks,

Patents Office, Government Buildings, Hebron

Road, Kilkenny.

	GIVEN under my hand, 24^th day of July, 2001.
	Tom Kitt
	Minister of State at the Department of Enterprise, Trade and Employment.

EXPLANATORY NOTE

(This note is not part of these Regulations and does not purport to be a legal interpretation.)

The Madrid Protocol is an international agreement under the aegis of the World Intellectual Property Organisation (WIPO). Its effect is to allow people and companies to submit a single application for a trade mark, through their own national Offices, designating any or all countries that are party to the agreement.

These Regulations set out the procedures to be followed in connection with trade marks and trade mark applications under the Madrid Protocol.