The Trade Marks (International Registration) Order 1996

Explanatory Note

(This note is not part of the Order)

This Order gives effect in the United Kingdom to the Protocol relating to the Madrid Agreement concerning the International Registration of Marks adopted at Madrid on 27th June 1989 (“the Madrid Protocol”) which the United Kingdom ratified on 6th April 1995. The arrangements made under the Madrid Protocol become effective on the 1st April 1996 and the Order comes into force on that date.

The Madrid Protocol provides that the proprietor of, or the applicant for, a national registration of a trade mark may apply through the national trade marks office for a registration of that trade mark in the International Register of the International Bureau of the World Intellectual Property Organisation (“WIPO”). Protection for an international registration may be requested in any other contracting state to the Madrid Protocol by the holder of the international registration. Where protection is requested in respect of an international registration originating in another contracting state, the state in respect of which protection is requested is entitled to refuse protection where the international registration cannot be granted on the grounds which would apply under the International Convention for the Protection of Industrial Property (Cmnd. 4431). Provided that no refusal has been notified to the International Bureau, contracting states are required to accord the same protection to the international registration of the trade mark as if the trade mark had been registered with the trade mark office of that contracting state.

The procedure for registration of a trade mark at the International Bureau is governed by the Common Regulations adopted under the Madrid Protocol and which come into force on 1st April 1996. Trade marks registered in the International Register are to be published in a periodical gazette issued by the International Bureau.

The Order makes provision where protection is sought in the United Kingdom for an international registration originating in another contracting state. It also makes provision for applications for international registration which originate in the United Kingdom.

An international registration originating in another contracting state in respect of which protection is sought in the United Kingdom is entitled to become protected where it satisfies the requirements of an application for registration under the Trade Marks Act 1994 including any imposed by the Trade Marks Rules 1994 (article 3). The provisions of the Trade Marks Act 1994 apply with modifications where protection is conferred in respect of an international registration in the United Kingdom as a protected international trade mark (UK).

In particular, provision has been made for—

(a) the rights conferred by and limitations of a protected international trade mark (UK); international trade mark (UK) as an object of property; notification of transactions and licensing of a protected international trade mark (UK) (articles 3—8);

(b) the procedure where the Patent Office is notified of a request for protection, including examination, publication, opposition proceedings, notices of refusal and conferring of protection (articles 9—12);

(c) revocation of protection, invalidity and proceedings related thereto; effect of acquiescence (articles 13—14);

(d) prevention of importation of infringing goods, offences and forfeiture, falsely representing a trade mark as a protected international trade mark (UK) (articles 16—18);

(e) transformation of an international registration into a national application for registration where the international registration is cancelled and related procedure (articles 19—20);

(f) effects of international registration where a trade mark is also registered under the Trade Marks Act 1994 (article 21);

The Order also provides that applicants for a registered trade mark or a proprietor of a registered trade mark may apply through the Patent Office for an international registration. Where an application for international registration complies with the requirements specified in article 22 of the Order, the registrar is required to submit the application to the International Bureau. The Order also provides that following the occurrence of certain events which result in an application for a trade mark or a registered trade mark to cease to subsist, the registrar shall notify the International Bureau of that event and request the International Bureau to cancel the international registration in respect of that trade mark or application (article 23).

The Order makes provision for a supplementary register to be established for the purposes of recording certain transactions in relation to international trade marks (UK) for which no provision is made in the International Register (article 24).

The Order also contains miscellaneous and general provisions in relation to various matters including the disclosure of information, communication of information to the International Bureau, exclusion of liability of the Patent Office, evidential matters, transmission of fees payable to the International Bureau and the application of the Trade Marks Rules 1994 (S.I. 1994/2583) (articles 25—32).

Provision has been made in a separate instrument for the payment of fees in respect of any matters arising under this Order.

The Madrid Protocol is published as Cm 1601 Miscellaneous Series No. 14 (1991). Copies of the Common Regulations are available from: WIPO P.O. Box 18 CH-1211 Geneva 20 Switzerland.

The addresses for the filing of documents at the Patent Office are prescribed in the Patent Office (Address) Rules 1991 (S.I. 1991/675), namely—

(i) Cardiff Road, Newport, Gwent NP9 1RH; and

(ii) 25 Southampton Buildings, London WC2A 1AY.