Trade Marks (Madrid Protocol) Regulations, 2001

• Jurisdiction: Ireland
• Citation: IR SI 346/2001
• Year: 2001

ARRANGEMENT OF REGULATIONS
1. Citation and commencement. 2. Interpretation. 3. Application of Act of 1996. 4. Application of Rules of 1996. 5. Entitlement to protection. 6. Effects of international trade mark. 7. Examination of an international registration designating the State. 8. Publication, opposition proceedings and observations. 9. Notice of refusal to grant protection to an international registration designating the State. 10. Amendment of an international registration designating the State. 11. Claiming of priority in respect of an international registration designating the State. 12. Granting protection to an international registration designating the State. 13. Division and merger of international trade marks. 14. Duration of registration of an international trade mark. 15. Renewal of protection for an international trade mark. 16. Alteration of an international trade mark. 17. Surrender of an international trade mark. 18. Revocation and invalidity of an international trade mark. 19. Transformation applications. 20. Procedure upon filing of transformation application. 21. Effects of international registration where trade mark is also registered under Act of 1996. 22. Application for international registration. 23. Notification to International Bureau. 24. Evidence of certain matters relating to an international registration. 25. Communication of information to International Bureau. 26. Fees. 27. Recording of corrections. 28. Adaptation of entries to new classification. 29. Supply of certified and uncertified copies.
SCHEDULE
PART I
FORM NO. 1M
Transformation Application under Regulation 19
PART 2
FORM NO. 2M
Application to Controller under Regulation 21(2)
I, Tom Kitt, Minister of State at the Department of Enterprise, Trade and Employment, in exercise of the powers conferred on me by sections 59 , 66 , 69 and 81 of the Trade Marks Act, 1996 (No. 6 of 1996) (as adapted by the Enterprise and Employment (Alteration of Name of Department and Title of Minister) Order, 1997 (S.I. 305 of 1997), and the Enterprise, Trade and Employment (Delegation of Ministerial Functions)(No. 2) Order, 1997 ( S.I. No. 330 of 1997 )), and a resolution approving a draft of these regulations having been passed by both Houses of the Oireachtas in accordance with section 3(3)(a) of the said Act, hereby make the following regulations:
	Citation and commencement.	1. (1) These Regulations may be cited as the Trade Marks (Madrid Protocol) Regulations, 2001.
(2) These Regulations shall come into operation on the 19th day of October 2001.
	Interpretation.	2. (1) In these Regulations, except where the context otherwise requires—
“Act of 1996” means the Trade Marks Act 1996 (No. 6 of 1996);
“basic application” means an application for registration of a trade mark in the State in respect of which application is made for international registration;
“basic registration” means a trade mark registered in the State in respect of which application is made for international registration;
“Common Regulations” means the regulations adopted under Article 10 of the Madrid Protocol;
“Gazette” means the periodical gazette referred to in Rule 32 of the Common Regulations;
“holder” means a person in whose name an international registration is recorded in the International Register;
“International application” means an application to the International Bureau for registration of a trade mark in the International Register;
“International Bureau” means the International Bureau of the World Intellectual Property Organisation;
“International Register” means the register of trade marks maintained by the International Bureau for the purposes of the Madrid Protocol;
“international registration” means the registration of a trade mark in the International Register;
“international registration designating the State” means an international registration in relation to which a request has been made (either in the relevant international application or subsequently) for extension of protection to the State under Article 3ter (1) or (2) of the Madrid Protocol;
“international trade mark” means a trade mark which is entitled to protection in the State under the Madrid Protocol;
“Journal” means the Patents Office Journal;
“Madrid Agreement” means the Madrid Agreement Concerning the International Registration of Marks of April 14, 1891, as revised at Stockholm on July 14, 1967, and amended on September 28, 1979;
“Madrid Protocol” means the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, adopted at Madrid on June 27, 1989;
“Office of origin” means the Office with which a basic application was filed or a basic registration was made and through which an application for international registration is filed with the International Bureau and, in the case of the State, “Office of origin” means the Patents Office;
“register” means the Register of Trade Marks kept under the Act of 1996;
“Rules of 1996” means the Trade Marks Rules, 1996 ( S.I. No. 199 of 1996 );
“transformation application” has the meaning assigned to it by Regulation 19.
(2) A word or expression that is used in these Regulations and is also used in the Madrid Protocol or the Common Regulations has, unless the contrary intention appears, the same meaning in these Regulations as it has in the Madrid Protocol or the Common Regulations.
(3) In these Regulations, unless the contrary intention appears -
(a) a reference to a Regulation or Schedule is a reference to a Regulation of or a Schedule to these Regulations,
(b) a reference to a paragraph or subparagraph is a reference to a paragraph of the provision in which the reference occurs,
(c) a reference to an Article is to an Article of the Madrid Protocol, and
(d) a reference to a section is to a section of the Act of 1996.
	Application of Act of 1996.	3. Except as otherwise provided in these Regulations or where its application would be inconsistent with these Regulations, the Act of 1996 shall apply, with the necessary modifications, in relation to an international registration designating the State, including an international trade mark, as the Act of 1996 applies in relation to a registered trade mark or application.
	Application of Rules of 1996.	4. Except as otherwise provided in these Regulations or where their application would be inconsistent with these Regulations, the Rules of 1996 shall apply, with the necessary modifications, in relation to an international registration designating the State, including an international trade mark, as those Rules apply in relation to a registered trade mark or application.
	Entitlement to protection.	5. (1) Subject to Regulations 7 to 12, an international registration designating the State shall be entitled to protection in the State where—
(a) if the particulars of the international registration designating the State were comprised in an application for registration of a trade mark under the Act of 1996, the application would satisfy the requirements for registration,
(b) the application proceeds to publication,
(c) following publication—
(i) no notice of opposition has been received within the period specified in Regulation 8, or
(ii) all opposition proceedings have been withdrawn or decided in favour of the holder,
and
(d) the Controller, having due regard to any matter coming to his or her notice since accepting the application, is satisfied it was not accepted in error.
(2) Notwithstanding paragraph (1), an international registration designating the State shall be entitled to protection in the State where, within the period of 18 months from the date of the notification to the Controller of the international registration designating the State, none of the following notices has been sent to the International Bureau -
(a) notice of refusal under Regulation 7(2),
(b) notice of refusal based on an opposition under Regulation 8, or
(c) notice of the possibility that a refusal based on an opposition may be filed after the expiry of that period of 18 months under Regulation 9(4).
	Effects of international trade mark.	6. The holder of an international trade mark has, subject to these Regulations, the same rights and remedies as are conferred on, and shall be subject to the same conditions as apply to, the proprietor of a trade mark registered under the Act of 1996.
	Examination of an international registration designating the State.	7. (1) Following receipt from the International Bureau of an international registration designating the State, the Controller shall examine whether it satisfies the requirements of the Act of 1996 and the Rules of 1996 (other than paragraphs (1), (2) and (3) of Rule 12).
(2) (a) Subject to Regulation 9, if it appears to the Controller that the requirements referred to in paragraph (1) are not satisfied, the Controller shall give a notice of refusal to the International Bureau.
(b) If the requirements referred to in paragraph (1) are not satisfied only in relation to some of the goods or services in respect of which protection in the State has been requested, the notice of refusal shall state this.
	Publication, opposition proceedings and observations.	8. (1) Where, following examination under Regulation 7 and receipt, where applicable, of representations from the holder made in accordance with Regulation 9(2), it appears to the Controller that the requirements for protection specified in Regulation 5(1) are satisfied in relation to some or all of the goods or services comprised in the international registration, the Controller shall publish a notice...