TRANSFORMATION OF AN INTERNATIONAL REGISTRATION INTO A NA TIONAL APPLICATION
Transformation applications19.
(1)
The provisions of this article apply where—
(a)
an international registration designating the United Kingdom is cancelled at the request of the Office of origin under Article 6(4) of the Madrid Protocol in respect of all or some of the goods or services listed in the registration;
(b)
an application (a “transformation application”) is made to the registrar, within three months of the date on which the international registration was cancelled, for registration in the United Kingdom 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 application is made by the person who was the holder of the international registration immediately before its cancellation.
(2)
A transformation application shall be made on Form TM3 and shall state that it is made by way of transformation.
(3)
A trade mark registered pursuant to a transformation application shall be treated as if it were registered as of the date of the international registration according to Article 3(4) of the Madrid Protocol or, where the request for extension to the United Kingdom was made subsequently to the international registration, on the date of recordal of that request according to Article 3ter of the Madrid Protocol, and that date shall be deemed for the purposes of the Act to be the date of registration.
Procedure on transformation application20.
(1)
Where the international trade mark (UK) has become protected pursuant to article 12 on or before the actual date on which the transformation application is made (“the transformation date”) the trade mark shall be registered under the Act.
(2)
Where the international registration designating the United Kingdom has not become protected under article 12 at the transformation date and a notice has been published pursuant to article 10(1) in respect of the trade mark, the registrar shall treat the publication of such notice as being the publication of the transformation application under section 38(1) and shall publish a notice that it is being so treated. Any opposition shall be treated as opposition under section 38(2).
(3)
Where a notice has not yet been published pursuant to article 10(1) at the transformation date and the registrar has issued a notice of refusal pursuant to article 9(3), the registrar shall for the purposes of the transformation application treat the notice of refusal as if it had been issued under section 37(3).
The registrar shall in that event inform the applicant of the nature of the response required of him in respect of his transformation application and shall further specify the period within which the applicant must respond to the registrar.