Part II Community trade marks and international matters

The Madrid Protocol: international registration

53 The Madrid Protocol.

In this Act—

  • “the Madrid Protocol” means the Protocol relating to the Madrid Agreement concerning the International Registration of Marks, adopted at Madrid on 27th June 1989;

  • “the International Bureau” has the meaning given by Article 2(1) of that Protocol; and

  • “international trade mark (UK)” means a trade mark which is entitled to protection in the United Kingdom under that Protocol.

54 Power to make provision giving effect to Madrid Protocol.

1

The Secretary of State may by order make such provision as he thinks fit for giving effect in the United Kingdom to the provisions of the Madrid Protocol.

2

Provision may, in particular, be made with respect to—

a

the making of applications for international registrations by way of the Patent Office as office of origin;

b

the procedures to be followed where the basic United Kingdom application or registration fails or ceases to be in force;

c

the procedures to be followed where the Patent Office receives from the International Bureau a request for extension of protection to the United Kingdom;

d

the effects of a successful request for extension of protection to the United Kingdom;

e

the transformation of an application for an international registration, or an international registration, into a national application for registration;

f

the communication of information to the International Bureau;

g

the payment of fees and amounts prescribed in respect of applications for international registrations, extensions of protection and renewals.

3

Without prejudice to the generality of subsection (1), provision may be made by regulations under this section applying in relation to an international trade mark (UK) the provisions of—

a

section 21 (remedy for groundless threats of infringement proceedings);

b

sections 89 to 91 (importation of infringing goods, material or articles); and

c

sections 92, 93, 95 and 96 (offences).

4

An order under this section shall be made by statutory instrument which shall be subject to annulment in pursuance of a resolution of either House of Parliament.