The Trade Marks (International Registration) Order 2008

Article 6

SCHEDULE 5 Miscellaneous and General Provisions

Correction of international registration

1.—(1) Where the International Bureau notifies the registrar that it has corrected an international registration and the correction either—

(a) substantially affects the identity of the trade mark; or

(b) alters the goods or services covered by the international registration,

the registrar may treat the notification as a new request for extension.

(2) Where paragraph (1)(a) applies, any earlier request for protection shall be deemed to have been withdrawn and any resulting protection granted to the international trade mark (UK) shall be treated as having been declared invalid.

(3) Where paragraph (1)(b) applies and—

(a) the correction extends the goods and services covered by the request for extension, the new request for extension shall apply only to the additional goods and services; or

(b) the correction restricts the goods and services covered by the international registration, to the extent it relates to goods and service outside the restriction, an earlier request for protection shall be treated as having been withdrawn, and any resulting protection granted to the international trade mark (UK) shall be treated as having been declared invalid.

Assignment

2.—(1) A protected international trade mark (UK) may only be assigned to an eligible person.

(2) An eligible person is—

(a) a national of any country which is a party to the Madrid Protocol;

(b) an individual domiciled in such a country;

(c) a body incorporated under the law of such a country; and

(d) a person who has a real and effective industrial or commercial establishment in such a country.

Judicial notice

3.—(1) 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 periodical gazette published by the International Bureau in accordance with rule 32 of the Common Regulations.

(2) Any document mentioned in paragraph (1)(b) or (c) shall be admissible as evidence of any instrument or other act of the International Bureau so communicated.

(3) Where in relation to the international registration a right of priority was claimed on the basis of a Convention application, the transformation application shall have the same right of priority.

Revocation

4.  Where the protection of a protected international trade mark (UK) is revoked or declared invalid to any extent, the registrar shall notify the International Bureau, and—

(a) in the case of a revocation, the rights of the proprietor shall be deemed to have ceased to exist to that extent as from—

(i) the date of the application for revocation, or

(ii) if the registrar or court is satisfied that the grounds for revocation existed at an earlier date, that date;

(b) in the case of a declaration of invalidity, the trade mark shall to that extent be deemed never to have been a protected international trade mark (UK).

Requests for Information

5.  A request for information relating to a protected international trade mark (UK) must be made on Form TM31M.

Communication of information to the International Bureau

6.  Notwithstanding any other enactment or rule of law, the registrar may communicate to the International Bureau any information which the United Kingdom is required to communicate by virtue of this Order or pursuant to the Madrid Protocol or Common Regulations.

Transmission of fees to the International Bureau

7.  The registrar may accept for transmission to the International Bureau fees payable to the International Bureau in respect of an application for international registration originating in the United Kingdom or a renewal of such an international registration, subject to such terms and conditions as the registrar may specify, either generally by published notice, or in any particular case by written notice to the applicant desiring to make payment by such means.