Office of Public Sector Information
Article 6
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(2) Where paragraph (1)(a) applies, any earlier request for protection shall be deemed to have been withdrawn and any resulting protection granted to the international trade mark (UK) shall be treated as having been declared invalid.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relates to goods and service outside the restriction, an earlier request for protection shall be treated as having been withdrawn, and any resulting protection granted to the international trade mark (UK) shall be treated as having been declared invalid.
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.
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.
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).
5. A request for information relating to a protected international trade mark (UK) must be made on Form TM31M.
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.
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.
Article 7
| Matter in respect of which fee payable | Amount |
|---|---|
| Notice of opposition to the conferring of protection on an international registration (trade marks rule 17) | £200 |
| Request for the revocation of a protected international trade mark (UK) (on grounds other than non-use) (trade marks rule 39) | £200 |
| Request for the revocation of a protected international trade mark (UK) (on grounds of non-use) (trade marks rule 38) | £200 |
| Request for the invalidation of a protected international trade mark (UK) (trade marks rule 41) | £200 |
| Submission fee for an international application (Schedule 3, paragraph 1) | £40 |
| Handling fee for the transmission by the Patent Office of fees payable to the International Bureau for renewal of an international registration (Schedule 5, paragraph 7) | £20 |
| Request to the Registrar for a statement of reasons for his decision (trade mark rule 69(2)) | £20 |
| Request for an extension of time (trade marks rule 77(2)) | £50 |
| Request for information in relation to an international mark (UK) | £50 |
| Filing of regulations governing the use of a certification or collective mark (trade mark rules 29) | £200 |
| Request to amend regulations governing the use of a certification or collective mark (trade mark rules 30) | £100 |
| Notice of opposition to the amendment of regulations relating to a certification or collective mark (trademark rules 30(4)) | £200 |
The Trade Marks (International Registration) Order 2008