8. Amendment or cessation of protection by Registrar of Protected International Trade Marks (PITMs)

Date Published

Regulations 17A.42A to 17A.42F implement, in relation to amendment or cessation of protection of PITMs, as similar a process to revocation of domestic registrations, as is possible. In particular, the circumstances which the Registrar must take into account when considering whether to cease protection are the same. However, due to the particular constraints, and specifically the strict timeframes of the Madrid Protocol, there are some differences in the process, which is dependant upon the invalidation provisions of Article 19 of the Protocol.

The regulations do not provide for cessation of protection to be followed by possible opposition or revocation of acceptance and re-examination. Instead, there is a process whereby the Registrar has authority to notify any parties potentially directly affected by the proposal to cease protection, so that they may participate in an exchange of evidence and submissions, followed by a hearing, together with the holder of the international registration (and any owner of a claimed interest). At the end of the process described above, the Registrar may decide to either partially or fully invalidate the international trade mark, or not to invalidate it at all, and/or perhaps apply conditions or limitations. After the appeal period had passed without appeal, the International Bureau will be notified accordingly. In the case of appeal, the International Bureau is notified at the conclusion of further court proceedings.

This abridged process is intended to establish as fully as possible the rights of all parties, as would likely unfold more slowly during a process for revocation of a domestic registration, eg where, after revocation of registration and then acceptance, and a new citation having been raised, an owner would be entitled to file evidence of prior or honest concurrent use of their trade mark, which may allow them to be re-accepted in the face of an identical mark for identical goods. This acceptance would then be followed by the owner of that prior trade mark application or registration being entitled to make their case against registration via opposition.