REGULATIONS UNDER THE MADRID AGREEMENT 6

Chapter 5 Refusals, Invalidations and Recording of Certain Judicial or Administrative Decisions

 Rule 16 Form and Contents of Notifications of Refusal and Final Decisions Following Refusal

• (1) Refusals of protection, whether provisional or final, referred to in Article 5, and final decisions following such refusals shall be notified to the International Bureau, by registered mail, separately for each international registration, in three identical, dated and signed copies.
  
• (2) Notifications of refusal of protection shall indicate:
  (i) the national Office refusing protection;
  (ii) the number of the international registration concerned and that of the basic national registration;
  (iii) the name and address of the owner of the international registration concerned;
  (iv) the grounds for refusal;
  (v) if the refusal does not affect all the goods and services, those in respect of which protection is refused;
  (vi) the earlier national or international mark or marks opposing the international registration concerned, the goods and services for which those marks are registered (such indication may be given in the original language used in the national register), the filing and registration dates and serial numbers of the conflicting marks and the names and addresses of their owners; a reproduction of the conflicting national marks shall be attached to each copy of the notification if they contain a figurative element or a special form of writing, or if they claim a color or combination of colors;
  (vii) the essential provisions of the national law applicable on the subject;
  (viii) the time limit for appeal and the authority to which such appeal shall lie, with the indication, where applicable, that the appeal has to be filed through the intermediary of a local agent;
  (ix) the date on which refusal was pronounced.
  
• (3) Notifications of final decisions following refusal shall indicate the number of the international registration concerned, as well as the name and address of the person in whose name such registration stands.
  

 Rule 17 Time Limit for Notification, Recording and Transmittal of Refusal

• (1) Notifications of refusal of protection shall be sent to the International Bureau within the time limit provided for by the national law, but not later than by the expiration of a time limit of one year following the date on which the mark or the request for territorial extension has been recorded in the International Register; the date of dispatch shall be determined by the postmark. If the postmark is illegible or missing, the International Bureau shall treat such notification as if it had been sent 20 days before the date on which the International Bureau received it; however, if the date of dispatch thus determined is earlier than the date on which the refusal was pronounced, the International Bureau shall treat such notification as if it had been sent on the latter date.
  
• (2) The notification of refusal shall not be treated as such by the International Bureau:
  (i) if, according to the postmark, it has been sent to the International Bureau after the expiration of the time limit of one year referred to in paragraph (1);
  (ii) if, where the postmark is illegible or missing, it reaches the International Bureau more than 20 days after the expiration of the time limit of one year referred to in paragraph (1);
  (iii) if it does not identify the national Office which pronounced the refusal;
  (iv) if it does not bear the signature of the said Office;
  (v) if it does not indicate the number of the international registration concerned, unless other indications contained in the notification permit the said registration to be identified;
  (vi) if it indicates no grounds for refusal.
  
• (3) In the cases referred to in paragraph (2), the International Bureau shall:
  (i) transmit a copy of the notification of refusal to the national Office of the country of origin, to the owner and to the national Office of the country of the owner where that country is not the same as the country of origin;
  (ii) inform the national Office which sent the notification of refusal, the national Office of the country of origin, the owner and the national Office of the country of the owner where that country is not the same as the country of origin that the notification of refusal shall not be treated as such by the International Bureau, and indicate the reasons therefor.
  
• (4) In cases other than those referred to in paragraph (2), the International Bureau shall record the refusal in the International Register without delay and shall transmit a copy of the notification to the national Office of the country of origin, to the owner and to the national Office of the country of the owner where that country is not the same as the country of origin. However, if the notification does not comply with Rule 16(1) and (2) in respect of requirements not specified in paragraph (2) of this Rule, the national Office which pronounced the refusal shall be obliged to rectify the notification without delay at the request of the International Bureau, at the request of the national Office of the country of the owner or at the request of the owner.
  

 Rule 18 Form and Contents of Notifications of Invalidation

• (1) Where an international registration is invalidated by the competent authorities of a country concerned and the invalidation is no longer subject to appeal, the national Office of that country shall, as soon as it is informed, notify the said invalidation to the International Bureau; each notification of invalidation shall be sent to the said Bureau, by registered mail, in three identical, dated and signed copies.
  
• (2) The notification shall indicate:
  (i) the authority pronouncing the invalidation;
  (ii) the number of the international registration concerned and, where applicable, the number of the basic national registration;
  (iii) the name and address of the person in whose name the international registration stands;
  (iv) if the invalidation does not affect all the goods and services, those in respect of which invalidation has been pronounced;
  (v) the earlier national or international marks conflicting with the international registration concerned, their filing or registration dates and serial numbers and the names and addresses of their owners;
  (vi) the essential provisions of the national law applicable on the subject;
  (vii) the date on which the invalidation was pronounced.
  
• (3) The national Office of the country that has notified the invalidation shall supply the International Bureau, at its request, with a copy of the invalidation decision, provided that the national legislation of that country so authorizes.
  
• (4) The invalidation shall be recorded in the International Register on the date on which the International Bureau is notified of it, with an indication of the date on which it was pronounced.
  
• (5) The International Bureau shall transmit a copy of the notification of invalidation to the national Office of the country of the owner and to the owner. The International Bureau shall transmit a copy of the invalidation decision to the said Office, at its request, provided that the said Bureau is authorized to receive it under paragraph (3).
  

 Rule 19 Recording of Certain Judicial or Administrative Decisions

Any judicial or administrative decision that is no longer subject to appeal and has the effect of restricting the owner's right of disposal of an international registration in a country concerned may be recorded in the International Register at the request of the national Office of the said country. The request shall be accompanied by a copy of the judicial or administrative decision the recording of which is requested, and by a summary of the judicial or administrative decision written by the said Office.

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