The Trade Marks (International Registration) (Amendment) Order 2002

Explanatory Note

(This note is not part of the Order)

This Order amends the Trade Marks (International Registration) Order 1996 (S.I. 1996/714) (“the Principal Order”) as amended by the Trade Marks (International Registration) (Amendment) Order 2000 (S.I.2000/138) as a consequence of the amendment of the Common Regulations adopted under article 10 of the Madrid Protocol having effect from 1st April 2002.

The amendments of substance made by this Order are as follows:

(a) article 4 amends article 4 of the Principal Order as a consequence of new provisions enabling applicants for international registration of trade marks under the Madrid Protocol to disclaim rights to exclusive use of specified elements of a mark;

(b) article 5 amends article 6 of the Principal Order as regards the grant of a licence under an international trade mark designating the UK to reflect new provisions for the recording of such licences in the international register of trade marks maintained by the International Bureau of the World Intellectual Property Organisation for the purposes of the Madrid Protocol;

(c) article 8 substitutes a new article 11 of the Principal Order as a consequence of new requirements for notification by Contracting Parties to the Madrid Protocol of provisional refusals to protect an international trade mark designating the UK (and consequential amendments are made to articles 9, 10 and 12 of the Principal Order);

(d) article 10 inserts a new article 12A into the Principal Order as a consequence of new provisions regarding the correction of the international register of trade marks.

Articles 12 and 13 make transitional provisions.

The Madrid Protocol is published as Cm 3505 Treaty Series No 3(1997). Copies of the Common Regulations are available from: WIPO P.O. Box 18 CH—1211 Geneva 20 Switzerland.

A regulatory impact assessment is available, copies of which have been placed in the libraries of both Houses of Parliament. Copies of the assessment are also available from the Intellectual Property Policy Directorate of the Patent Office, Room 3B38, Concept House, Cardiff Road, Newport NP10 8QQ.