The Trade Marks (International Registration) Order 1996

INTERNATIONAL APPLICATIONS ORIGINATING IN THE UNITED KINGDOM

Application for international registration

22.—(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 article, apply through the registrar for the international registration of the trade mark.

(2) An application for international registration may be made only where the applicant for such registration is—

(a) a British citizen, a British dependent territories citizen, a British overseas citizen, a British subject or a British protected person;

(b) a body or a corporation sole incorporated or constituted under the law of any part of the United Kingdom;

(c) a person domiciled in the United Kingdom; or

(d) a person who has a real and effective industrial or commercial establishment in the United Kingdom.

(3) The particulars appearing in the application shall correspond with the particulars appearing at that time in the basic application or basic registration as the case may be.

(4) The applicant for international registration shall provide at the request of the registrar such evidence as may be necessary to satisfy him that the applicant is eligible to make the application in accordance with paragraph (2) above.

(5) If an international application complies with the requirements set out in this article, the registrar shall submit the international application to the International Bureau.

(6) In this Order—

(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.

Notification to International Bureau

23.—(1) Where the registrar has submitted an application for international registration, he shall notify the International Bureau of the occurrence of any of the events specified in paragraph (2) below and shall request the International Bureau to cancel the international registration as regards those goods or services covered by the international application in respect of which the basic application or basic registration has ceased to subsist by reason of that event.

(2) The following events are specified for the purposes of paragraph (1) above:

(a) before the expiry of five years from the date of the international registration, the registrar refuses to accept the basic application as regards some or all of the goods or services covered by the international registration or, after accepting the application, refuses to register the trade mark as regards some or all of those goods or services, having regard to matters coming to his notice since he accepted the application, and in either case that decision becomes a final decision, whether before or after the expiry of that period of five years;

(b) opposition proceedings begun before the expiry of five years from the date of the international registration result in a final decision not to register the trade mark as regards some or all of the goods or services covered by the international registration;

(c) the basic application is withdrawn, or is restricted as regards goods or services covered by the international registration, as a result of a request by the applicant made before the expiry of five years from the date of the international registration, or made subsequently when the basic application was at the time of the request subject to an appeal against refusal of registration or to opposition proceedings begun in either case before the expiry of that five year period;

(d) the registration resulting from the basic application or the basic registration expires without renewal and is removed from the register before the expiry of five years from the date of the international registration and no request for its restoration is made within the time specified in rule 30 or such a request is made and a final decision is made to refuse the request;

(e) a final decision is made to revoke or declare invalid the registration resulting from the basic application or the basic registration, as a result of proceedings begun before the expiry of five years from the date of the international registration;

(f) the registration resulting from the basic application, or the basic registration, is surrendered as a result of a request by the proprietor made before the expiry of five years from the date of the international registration, or made subsequently where at the time of the request—

(i) the basic application was subject to an appeal against refusal of registration or to opposition proceedings; or

(ii) the registration resulting from the basic application, or the basic registration, was subject to proceedings for revocation or invalidation;

and such appeal or proceedings were begun before the expiry of five years from the date of the international registration.

(3) For the purposes of this article:—

(a) a final decision shall be regarded as made where—

(i) any right of appeal against the decision expires or is exhausted, or

(ii) proceedings relating to an application or registration are discontinued or abandoned;

(b) reference to an application being withdrawn includes its being deemed to be withdrawn, or abandoned, or deemed never to have been made.