1st May 2020 - Jax Floro

Starting 1 February 2019, the Common Regulations under the Madrid Agreement and Protocol relating to the division and merger of international registrations have been amended.

Under the new rules, a holder of trade mark registration may now request for a division or even a merger of their international registrations.

Division

Division happens when an Office of a designated Contracting Party rejects an international registration for only some of the varieties of goods and services or goods and services of a particular class that is under an international registration.

The amendments allow the holder to turn the refused or accepted classes or goods and services into a new international registration that will be assigned the same number as the original registration accompanied by a capital letter.

Thus, the acceptable registration can proceed right ahead to protection without delay. This enables the holder to deal with the refused registration at a later date.

Merger

Mergers, on the other hand, can only result from two scenarios:

1) the recording of a partial change in ownership; and
2) the recording of division.

It should be noted that mergers of international registrations can only happen because there was a partial change in ownership or a division. It cannot happen to divisions that originated from separate or different international registrations.

Division or Merger: An Option

Generally, a division or a merger of international registrations can be an option. However, not all Contracting Parties can entertain requests for division or merger in situations where the domestic legislation does not provide for a division or a merger or the new rules are not compatible with the domestic law.

Requesting for a Division or a Merger

All requests for merger or division shall be filed using a specific form for each the purpose — for division, for merger resulting from the recording of division, and merger resulting from the recording of a partial change of ownership.

Only the merger resulting from the recording of a partial change of ownership may be filed either at the Office of the Contracting Party of the holder or directly to the WIPO. The other two are to be presented only to the Office of the Contracting Party.

The request for division of international registration requires a fee to be paid; whereas for the mergers, no fee is required to be paid.

The new rule now makes easier the settlement of trade mark conflicts that resulted from the specification of goods and services of an application that shows no actual confusion in the market happened. To avoid Trademark conflict in Sydney, you can take advice from Trademark Lawyer in Sydney 

Take away points:

• The Common Regulations under the Madrid Agreement and Protocol relating to division and merger of international trade mark registrations are amended.
• Under the new rule, international trade mark registration holders can take advantage of the amendment where some of their classes of goods and services or the goods and services of a class was refused by the Office of Contracting Party and request for a division.
• The international registration holders can also avail of mergers where there is a recording of a partial change of ownership or a recording of a division.

 

Jaclyn-Mae Floro, BCompSc

Contact W3IP Law on 1300 776 614 or 0451 951 528 for more information about any of our services or get in touch at law@w3iplaw.com.
Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.