60.4.13 Final decision on provisional refusal based on examination

4.13.1  Relevant Legislation

Madrid Protocol

Article 5 Refusal and Invalidation of Effects of International Registration in Respect of Certain Contracting Parties

Article 6 Period of Validity of International Registration; Dependence and Independence of International Registration

Madrid Protocol Regulations

​​​​​​​Rule 15 Date of the International Registration

Rule 16 Time Limit for Notifying Provisional Refusal Based on an Opposition

Rule 17 Provisional Refusal

Rule 18 Irregular Notification of Provisional Refusal

Rule 18bis Interim Status of a Mark in a Designated Contracting Party

Rule 18ter Final Disposition on Status of a Mark in a Designated Contracting Party

Trade Mark Regulations

Reg 17A.24 Final decision on examination

Reg 17A.25 Notice on final decision on examination

Trade Marks Office Manual of Practice and Procedure

Part 18 Finalisation of Application for Registration

4.13.2  General Description

Whenever a designated country issues a provisional refusal, whether based on examination or opposition, a final decision must be notified to the IB at the end of the relevant processes in that designated country.

There is no provision for lapsing in the Madrid Protocol.  International registrations do not lapse but they can be refused. Part 17A of the Regulations provides that the holder has 15 months from the date of provisional refusal in which to overcome the grounds of refusal.  When an IRDA has reached the end of the 15 month period or the end of that period as extended, the Registrar must notify the IB of the final decision regarding the provisional refusal based on examination.  

The Final Decision could be:

• confirmation of a total provisional refusal

• statement of grant of protection following a provisional refusal

• for all goods and/or services for which protection has been requested OR

• for some of the goods and/or services for which protection has been requested

4.13.2.1 No response from holder

If a holder has not replied to a partial refusal within the 15 months period allowed for overcoming the refusal, IP Australia will notify the IB of the final decision.  In this situation the final decision will be notification of protection of the IRDA for the goods and/or services which did not attract the refusal.

4.13.2.2 Acceptance

Final decision is also notified to the IB when the grounds of refusal are overcome and protection is extended to an IRDA before the end of the 15 month period.