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Procedural Summary

Working Language:
French and English, as prescribed by offices of the applicant’s origin.

Term of Registration:
Ten years from International Registration date (if a request is received by the International Bureau of the World Intellectual Property Organization ("WIPO") within two months of filing with a national office, the registration date is considered to be the date the request was filed with office of origin; if not, the registration date is considered to be the date the request was received by WIPO). Renewal for additional ten year periods is due within one year prior to expiration. Belated renewal with surcharge can be paid within six months of expiration (renewal application and fees are paid either directly by the owner, or through an intermediary of agent or office of country of the owner, to WIPO according to the domestic regulations of the national office of the owner).

Opposition/Cancellation:
Within five years of International Registration date, a party may file to cancel the base national application based on the laws of the base country. A cancellation resulting from an action commenced within the five-year period will result in the cancellation of the International Registration and all territorial extensions. (See "Conversion" under "Procedure" below). Territorial extensions of an International Registration may also be opposed/cancelled under the laws of the country concerned and the terms of any such opposition/cancellation action are governed by laws of the affected country.

Assignment:
The conditions of assignment are governed by the national laws of the countries concerned. A mark may not be assigned to party which is ineligible to apply for International Registration. A request for recordal must be filed by the trademark holder or through the office of the country of the owner. If the assignee is not from country of the assignor, the country of the assignee becomes the "country of owner" and if the International Registration has not passed out of the initial five year dependency period, WIPO must seek permission from the national office of the assignee in order to record the assignment (national registration in the assignee's country, however, is not necessary).

Documents:
Power of Attorney

Classification:
International.

Service Marks:
International classes 35-45 (if allowed in country of origin and if allowed in countries of territorial extensions).

Specification:
Must be the same as the country of origin registration/application. Applicants may combine two or more countries of origin registration/application (unless not permitted by country of origin).

Basis ("Country of Origin"):
A country of origin is (not discretionary, in this order) the contracting country where: (1) an applicant has real and effective industrial and commercial establishment; (2) an applicant has domicile (headquarters); or (3) an applicant is a national.

Procedure:
Country of origin phase: An applicant files a request for International Registration (designating contracting countries in which territorial extension is sought) with its country of origin office which forwards the request to WIPO. If any changes are made to the national registration within five years of the date of the International Registration (or due to action taken before expiration of the five year period), the office of origin must notify WIPO. Subsequent request for additional (or renouncement of) territorial extension must be filed with the office of the country of the owner, which sends them to WIPO.

WIPO phase: WIPO examines the application for formalities. If the application is rejected, WIPO notifies the applicant and the office of origin and gives a non-extendible period of three months from the date of rejection (depending on grounds) to reply. If the application is accepted, the mark is registered in the International Register and published in Les Marques Internationales. WIPO then notifies the offices of the countries that the applicant designated for territorial extension. Subsequent changes in International Registration are processed as above.

Territorial extension phase: The trademark office of each country that has been tapped for territorial extension has a non-extendible term of 12-18 months from the date of International Registration (or entry of request for extension) to send WIPO a provisional objection to extension in that country. WIPO then sends that objection on to the International Registration holder. Further prosecution is conducted under the local laws and rules of practice through an agent in the country that issued the objection. Invalidations must be communicated to WIPO, which publishes decisions in Les Marques Internationles.

Conversion: If an International Registration is cancelled during the five year dependency period, the International Registration holder may, within three months of International Registration cancellation, file national applications to replace the cancelled national extensions and claim the priority date of the International Registration extension.

Licensing:
The conditions under which a mark may be licensed are governed by the national laws of the countries concerned. There is no recordal of licenses under the Protocol with WIPO. Recordal of licenses, if permitted, is made through the national registers of the countries concerned.

Note:
"Country of origin" is the legal concept that governs the five-year dependency period of International Registrations. "Country of owner" is the administrative concept that governs which national office serves as intermediary to WIPO.