The Trade Marks (International Registration) Order 1996

Protection

12.—(1) Where—

(a) following examination and publication pursuant to articles 9 and 10—

(i) the period of 18 months from the date on which the notification of the request for extension was sent to the United Kingdom has not expired, but the period for giving notice of refusal based on an opposition in accordance with article 10(3) expires without notice of refusal (whether based on opposition or otherwise) having been given,

(ii) the period of 18 months from the date on which the notification of the request for extension was sent to the United Kingdom has expired, and the period for giving notice of opposition in accordance with article 10(2) expires without notice of opposition having been given,

(iii) notice of refusal has been given in respect of some only of the goods or services in respect of which protection in the United Kingdom has been requested and the registrar informs the International Bureau in accordance with article 11(4) that the holder has made no representations within the period specified in article 9(4) or has filed no counter-statement within the period specified in article 10(4) (as the case may be) or that the holder has informed the registrar that he does not intend to make such representations or file such a counter-statement, or

(iv) notice of refusal has been given in respect of all or some of the goods or services in respect of which protection in the United Kingdom has been requested and the registrar notifies the International Bureau in accordance with article 11(5) that a final decision has been made that the refusal is withdrawn, or is withdrawn in respect of some of the goods or services in respect of which protection in the United Kingdom has been requested; or

(b) the period of 18 months from the date on which the notification of the request for extension was sent to the United Kingdom expires without any notice of refusal having been given and without the International Bureau having been informed that oppositions may be filed after the expiry of that period,

the trade mark which is the subject of the request for protection shall thereupon be protected as a protected international trade mark (UK); and in a case where a refusal subsists in respect of some of the goods or services in respect of which protection in the United Kingdom has been requested, protection shall apply only as regards the remaining goods or services.

(2) For the purposes of application by this Order of provisions of the Act, subject to article 21, a trade mark so protected shall be treated as being registered under the Act as of the following date:—

(a) where the request for extension of protection to the United Kingdom is mentioned in the international application, or is made subsequently, but on or before the date of the international registration, the date of that international registration;

(b) where the request for such extension is made subsequently to the international registration, the date on which the request is recorded in the International Register.

(3) When a trade mark becomes protected pursuant to this article, the registrar shall publish particulars of the international registration specifying the date on which, and the goods or services in respect of which, protection is conferred.