Office of Public Sector Information
Article 4
1.—(1) An applicant for the registration of a trade mark, or the proprietor of a registered trade mark, may, subject to the provisions of this paragraph, apply by way of the Patent Office as office of origin for the international registration of the trade mark.
(2) For the purposes of this paragraph an applicant shall be—
(a) a British citizen, a British overseas territories citizen, a British overseas citizen, a British subject or a British protected person;
(b) an individual domiciled in the United Kingdom;
(c) a body incorporated under the law of a part of the United Kingdom; or
(d) a person who has a real and effective industrial or commercial establishment in the United Kingdom.
(3) Where the registrar has reasonable doubts about whether an applicant is eligible, the registrar—
(a) must inform the applicant of the reason for those doubts; and
(b) may require that applicant to file evidence in support of his eligibility.
(4) Where—
(a) the registrar has no doubts or is satisfied as to the applicant’s eligibility; and
(b) the particulars appearing in the application for an international registration correspond with the particulars at that time in the basic application or, as the case may be, the basic registration,
the registrar must submit the application to the International Bureau.
(5) In this Schedule—
(a) “basic application” means an application for registration of a trade mark in the United Kingdom in respect of which application is made for international registration;
(b) “basic registration” means a trade mark registered in the United Kingdom in respect of which application is made for international registration.
2.—(1) This paragraph applies where the registrar submits an application to the International Bureau in accordance with paragraph 1 and the basic application or basic registration is terminated.
(2) Where, before the end of the relevant period, a basic application or basic registration is terminated, the registrar shall request that the International Bureau cancel the International Registration.
(3) A basic application is terminated where it is—
(a) not accepted;
(b) refused; or
(c) withdrawn (including deemed as such).
(4) A basic registration is terminated where the rights in the registered trade mark cease to have effect.
(5) Where a basic application or basic registration is terminated in respect of some only of the goods or services for which the trade mark is registered (or is sought to be registered), the request must relate only to those goods and services.
(6) The relevant period is the period of 5 years beginning with the date of the international registration.
(7) But if during that period the registrar becomes aware of proceedings which may result in the termination of the basic application or basic registration, the registrar must notify the International Bureau accordingly, stating that no final decision has been made.
(8) On completion of the proceedings referred to in paragraph (7) the registrar must promptly notify the International Bureau of their outcome.
3.—(1) This paragraph applies where the registrar submits an application to the International Bureau in accordance with paragraph 1 and—
(a) the basic application is divided into two or more applications; or
(b) two or more basic applications or basic registrations are merged into a single application or registration.
(2) Where, before the end of the relevant period, a basic application is divided or two or more basic applications or basic registrations are merged, the registrar shall notify the International Bureau and shall indicate—
(a) the number of the international registration or, where the mark has not been registered, the number of the basic application;
(b) the name of the applicant or the holder of the relevant trade mark; and
(c) the number of each application resulting from the division or the number of the application or registration resulting from the merger.
(3) The relevant period is the period of 5 years beginning with the date of the international registration.
Article 5
1.—(1) A transformation application is an application to register a trade mark under the Act where—
(a) the mark was the subject of an international registration and the international registration was the subject of a request for extension; and
(b) the international registration was cancelled at the request of the Office of origin under Article 6(4) of the Madrid Protocol.
(2) But an application shall only be treated as a transformation application where the goods and services cited in it are identical to some or all of the goods and services included in the international registration.
(3) Any application made under the Act which is a transformation application shall state that it is made by way of transformation.
(4) Such an application may only be made before the end of the period of three months beginning with the date on which the international registration was cancelled.
(5) A transformation application may only be made by the person who was the holder of the international registration immediately before it was cancelled.
(6) Where on or before the date the transformation application was made, the trade mark is protected as an international trade mark (UK), the mark shall be registered under the Act; and it shall have the date of filing of the cancelled international trade mark (UK).
(7) Where on that date the trade mark is not so protected, the transformation application shall be treated as an application to register under the Act and it shall have the date of filing of the request for extension relating to that mark.
(8) 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.
2.—(1) This paragraph applies where at the time protection is conferred on an international trade mark (UK) there is a concurrent registered trade mark.
(2) A registration is concurrent where—
(a) the proprietor of the registered trade mark is the holder of the protected international trade mark (UK);
(b) the registered trade mark is the same as the protected international trade mark (UK);
(c) the goods and services in relation to which protection is conferred by the international trade mark (UK) include all those for which the registered trade mark is registered.
(3) The protected international trade mark (UK) shall be treated as being registered under the Act as of the date of registration of the registered trade mark.
(4) The priorities claimed in respect of the registered trade mark may also be claimed in respect of the international trade mark (UK).
(5) The provisions of this paragraph shall continue to apply after the registered trade mark lapses or is surrendered, but shall cease to apply if or to the extent that it is revoked or declared invalid.
(6) On the application of the holder of the protected international trade mark (UK) the registrar shall note the international registration in the register against the registered trade mark.
(7) For the purposes of paragraph (6), the holder of the international trade mark (UK) shall make an application to the registrar using Form TM28.
The Trade Marks (International Registration) Order 2008