Module 4 Topic 2 Workbook IP Law

Workbook: Module 4 Office of a Designated Contracting Party
Topic 2: Communications Addressed to WIPO

Madrid Training Project
WORKBOOK
Module 4
Office of a Designated Contracting Party
Introduction
Welcome to Topic 2 of Module 4 the Madrid System eLearning Training Course. This
workbook is provided as a companion to the online learning modules and contains
questions and scenarios to test your understanding of the information.
In this module we will be looking at the various responsibilities and tasks of a

national or regional Intellectual Property Office in its role of the Office of a designated
Contracting Party.
Hi! My name is Lumi. I’ll be here with you

as your guide, directing you to valuable
insights along your learning journey.
1
Table of Contents
Introduction...................................................................................................................1
Module Outline..............................................................................................................4
Learning Outcomes......................................................................................................5
Scenarios Complexity Ratings......................................................................................5
Section 1: Communications to WIPO from the Office of a Designated Contracting
Party..............................................................................................................................6
Communications to WIPO from the Office of a Designated Contracting Party........6
Communicating Decisions to WIPO..........................................................................6
First Office Action (Rules 17 and 18ter(1))...............................................................7
Statement of Grant of Protection Where No Notification of Provisional Refusal
has Been Communicated (Rule 18ter(1)).............................................................7
Provisional Refusal (Rule 17)................................................................................8
Requirements for a Notification of Provisional Refusal.........................................8
Content of the Notification of Provisional Refusal.................................................8
Additional Requirements for a Provisional Refusal Based on an Opposition.......9
Additional voluntary information to holders on the status of a mark (Rule 18bis). .10
Final decision on the status of a mark (Rule 18ter(2) and (3))...............................10
Statement of Total or Partial Grant of Protection Following a Provisional Refusal
(Rule 18ter(2)).....................................................................................................11
Confirmation of Total Provisional Refusal (Rule 18ter(3))..................................11
Further decision (Rule 18ter(4))..............................................................................11
Invalidation in a designated Contracting Party (Rule 19).......................................12
Refusal following a correction issued by WIPO (Rule 28(3)).................................13
Communicating Decisions to WIPO........................................................................14
Summary.................................................................................................................14
Knowledge Check...................................................................................................14
Section 2: Irregular Notifications of Provisional Refusal............................................16
Irregular Notifications of Provisional Refusal..........................................................16
Irregular Provisional Refusal which is not considered as such by WIPO and
therefore cannot be recorded in the International Register nor rectified by the
Office concerned.................................................................................................16
2
Irregular Provisional Refusal which is not recorded in the International Register

until it is rectified by the Office concerned..........................................................17
Irregular Provisional Refusal which is not recorded in the International Register
until rectified by the Office concerned: Time limits to respond and consequences
of not responding.................................................................................................17
Irregular Provisional Refusal which is recorded in the International Register
before being rectified by the Office concerned...................................................17
Summary.................................................................................................................18
Knowledge Check...................................................................................................18
Scenarios....................................................................................................................20
Questions and Answers..............................................................................................33
Scenario Answers.......................................................................................................36
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Module Outline
Module 4 of the Madrid Training Project is intended to provide examiners and
administration staff in IP Offices with an overview of the role of a designated
Contracting Party as part of the Madrid System for the International Registration of
Marks.
The module is comprised of three topics and is self-paced, but it is estimated it

should take no more than three hours to complete.
Topic 2 contains two sections and includes knowledge check questions and
scenarios at various points to ensure you have understood the preceding material.
The subjects covered in Topic 2 are:
1. Communications to WIPO from the Office of a designated Contracting Party,

including:
o The types of decisions an Office must communicate to WIPO,
o The information that must be included in a notification of each decision,
and
o The different ways an Office can communicate decisions to WIPO.
2. Irregular notifications of provisional refusals, including:

o The types of irregular notifications of provisional refusal,
o What kind of irregular notifications can or cannot be rectified, and
o The time limits to remedy an irregularity and the outcomes for not
responding on time.
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Learning Outcomes
This training is intended to provide an overview of the role of the Office the
designated Contracting Party as part of the Madrid System.
At the end of Topic 2 you should be able to:
 Differentiate the types of decisions that can be communicated to WIPO by

the Office of a designated Contracting Party concerning the scope of
protection of international registrations,
 Identify the content required for notification of each decision together with
the relevant WIPO Model Form to be used in each case,
 Explain the consequences of irregular notifications and list the cases
when they can and cannot be remedied, and
 Indicate the ways the Office of a designated Contracting Party can
communicate the decisions to WIPO.
Scenarios Complexity Ratings
Simple:
The scenario can be answered by the learner reviewing the
information contained in the workbook.
Intermediate:
The scenario needs the learner to consider multiple items or
multiple types of information
Complex:
The scenario needs the learner to consider multiple items and
multiple concepts
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Section 1: Communications to WIPO from the Office of

a Designated Contracting Party
Communications to WIPO from the Office of a Designated Contracting
Party
In this section, you will explore different types of communications that the Office of a
designated Contracting Party may send to WIPO in relation to international
registrations and subsequent designations.
The formal requirements to the communications from the Office are governed by the
Rules provided in the Common Regulations under the Madrid Protocol.
You may wish to review the Rules as you go along. You can find the Common
Regulations under the Madrid Protocol on the WIPO website:
http://www.wipo.int/madrid/en/legal_texts/.
Communicating Decisions to WIPO
The Office of a designated Contracting Party is responsible for communicating to

WIPO the various decisions made in respect of an international registration or a
subsequent designation. Some of the communicated decisions are made directly by
the Office itself, whereas others can be taken by other local competent authorities
(for example, the court decisions) in that Contracting Party.
The range of communications to WIPO includes:
 First Office action (Rules 17 and 18ter(1)),

 Additional voluntary information to holders on the status of a mark (Rule
18bis),
 Final decision on the status of a mark (Rule 18ter(2) and (3)),
 Further decision (Rule 18ter(4)),
 Invalidation in a designated Contracting Party (Rule 19), and
 Refusal following a correction issued by WIPO (Rule 28(3)).
There are no official forms for Offices to use to communicate decisions concerning
the protection of a mark in a designated territory to WIPO.
Many Offices communicate self-generated forms that meet the applicable
requirements under the Common Regulations. For Offices which do not have such
forms, WIPO has made available a set of standardized forms for this purpose called
Model Forms.
WIPO can provide further guidance to interested Offices with a view to adjusting
such forms to their individual requirements. You can view the Model Forms on
WIPO’s website:
http://www.wipo.int/madrid/en/contracting_parties/model_forms.html
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Let’s continue on to find out more about each of

these communications.
First Office Action (Rules 17 and 18ter(1))
A first Office action can be:

 Statement of Grant of Protection Where No Notification of Provisional
Refusal has Been Communicated (Rule 18ter(1)), and
 Provisional Refusal (Rule 17).
Statement of Grant of Protection Where No Notification of Provisional Refusal has

Been Communicated (Rule 18ter(1))
An Office is required to send a statement of grant of protection to WIPO when:

 All procedures before the Office (ex officio examination and opposition)
have been completed before the expiry of the applicable refusal period,
and
 There is no ground for the Office to refuse protection for any of the goods
and services listed in the international registration or the subsequent
designation.
The statement of grant of protection has to be sent to WIPO before the expiry of the
refusal period and as soon as possible after the positive decision on the mark has
been taken.
This statement is granting full protection for the mark as it is, with the list of goods
and/or services applicable for the designated Contracting Party concerned. If the
Office finds that it can only grant protection to the mark upon given conditions (such
as disclaimer), the Office would need to notify WIPO of such conditional acceptance
in a provisional refusal.
WIPO has made available to the Offices Model Form 4 for communicating a
statement of grant of protection under Rule 18ter(1). You can find the Model 4 form
on the WIPO website:
http://www.wipo.int/export/sites/www/madrid/en/contracting_parties/pdf/model_form_
4.pdf
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Provisional Refusal (Rule 17)
Provisional refusal may be based on ex officio grounds, on opposition from third

parties or both. WIPO has made available to Offices Model Forms 3A and 3B for
communicating total or partial provisional refusals.
You can find the Model 3A and 3B forms on the WIPO website:
Model Form 3A
3_a.pdf
Model Form 3B
3_b.pdf
Let’s look at provisional refusals under Rule 17 more closely.
Requirements for a Notification of Provisional Refusal
A notification of provisional refusal, whether total or partial, must:

 Relate to one international registration only,
 Be dated and signed by the Office concerned.
Content of the Notification of Provisional Refusal
The content of the notification of provisional refusal is provided by Rule 17(2) of the
Common Regulations. A notification of provisional refusal must contain or indicate:
 The Office Making the Notification and the Number of the International
Registration
o The Office making the notification must be clearly identified.
o The number of the international registration should preferably be
accompanied with sufficient details to allow the identity of the international
registration to be confirmed, such as the verbal elements of the mark or
the basic application or basic registration number.
 The Basis for the Provisional Refusal
The notification of provisional refusal must also contain or indicate all the
grounds on which the provisional refusal is based, together with reference to the
corresponding essential provisions of the law.
The Office should provide sufficient information on the grounds of refusal, so that
the holder can determine whether they would take on the costs related to
contesting the refusal by requesting review or appeal, as well as appointing local
attorney/agent.
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 Information about an Earlier Mark
If a provisional refusal is based on prior rights, the notification must contain all
relevant data concerning the earlier mark, including:
o The filing or registration date and number,
o The priority date (if any),
o The name and address of the owner,
o The list of all or of the relevant goods and services covered by the earlier
mark (which may be in the language of the said application or
registration), and
o A reproduction of the earlier mark (which may, if the mark contains no
figurative elements, be simply typed).
 Scope of the Goods and Services Affected by the Provisional Refusal
The provisional refusal must either:

o Indicate that the grounds on which the provisional refusal is based affect
all the goods and services (total provisional refusal), or
o List the goods and services which are affected, or not affected, by the
provisional refusal (partial provisional refusal).
 Time Limits for Review or Appeal
The provisional refusal must also include the time limit for the holder to contest
the decision, by filing a request for review of or appeal against the provisional
refusal (whether ex officio or based on an opposition).
The notification shall contain or indicate:

o The time limit given for the holder, which should be reasonable to allow
the holder to determine whether to contest the refusal, and if so, to meet
domestic requirements, such as obtaining local attorney/agent,
o The date of expiration of the time limit or information on the calculation of
the time limit, for example, three months from the date of the notification
by WIPO to the holder,
o The authority with which such request has to be filed, and
o The indication whether there is a requirement to appoint a local
representative to file the request for review or appeal (whose address
must be within the territory of the Contracting Party of the Office notifying
the refusal).
Additional Requirements for a Provisional Refusal Based on an Opposition
Where the provisional refusal is based on an opposition, or on an opposition and

other grounds, the notification must, in addition, contain:
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 An indication of the fact that the provisional refusal is based on an

opposition (or an opposition and other grounds),
 The name and address of the opponent, and
 Where opposition is based on an earlier conflicting right (application or
registration), the list of goods and services on which the opposition is
based. The said list may be in the language of the earlier right (even if that
language is neither English nor French nor Spanish).
Additional voluntary information to holders on the status of a mark (Rule

18bis)
Interim Status
An Office that has completed its ex officio examination may send a statement to this
effect to WIPO, noting that the protection of the mark is still subject to opposition or
observations by third parties.
There is no obligation for an Office that has completed its examination to send a
statement to this effect to WIPO, and such statement has no legal effect; it is merely
voluntary information to the holder on where the international registration is in the
processes before the Office.
However, while the issue of the statements on interim status are optional, they are
considered to be very useful for holders and third parties alike because they are also
made available in the Madrid Monitor.
WIPO has made available to Offices Model Form 8 for informing about the interim
status of a mark.
You can find the Model 8 form on the WIPO website:

8.pdf
Final decision on the status of a mark (Rule 18ter(2) and (3))
After the Office has issued a provisional refusal, the Office must follow up with their
final decision. There is no time limit for the Office to issue such decision; the Office
will issue this once they have completed their procedures. A final decision on the
status of a mark can be either:
 Statement of Total or Partial Grant of Protection following a Provisional
Refusal (Rule 18ter(2)), or
 Confirmation of Total Provisional Refusal (Rule 18ter(3)).
WIPO has made available to Offices Model Forms 5 and 6 for communicating the
final decision on the status of a mark.
You can find Model forms 5 and 6 on the WIPO website:
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Model Form 5:
5.pdf
Model form 6:
6.pdf
Statement of Total or Partial Grant of Protection Following a Provisional Refusal

(Rule 18ter(2))
An Office must send a statement of grant of protection following a provisional refusal

when:
 All procedures before the Office have been completed, and
 Protection is granted for all or some goods and services concerned.
The notification must clearly indicate that the provisional refusal is withdrawn and
that protection of the mark is granted in that Contracting Party for either all or some
of the goods and services concerned.
Confirmation of Total Provisional Refusal (Rule 18ter(3))
An Office, which has issued a notification of total provisional refusal, must send a
confirmation of total provisional refusal to WIPO when:
 All procedures before the Office have been completed, and
 The Office has decided to confirm the total refusal of protection of the
mark for all the goods and services.
Further decision (Rule 18ter(4))
Sometimes further proceedings taken by the Office or another authority (for example,
an outside tribunal) can affect the protection of a mark, even after all examination
procedures before an Office have been completed.
This can be, for example, a decision by the Court after an appeal by the holder (or
the opponent in case of opposition) of the decision taken by the Office, or it can be
unrelated to the decision by the Office, for example, a third party has requested
cancellation of the international registration due to non-use.
When the Office becomes aware of such further decision (either positive or
negative), it must send a further statement to WIPO indicating:
 The status of the mark, and
 Where applicable, the list of the goods and services for which the mark is
protected.
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WIPO has made available to Offices Model Form 7 for communicating further
decisions affecting the protection of a mark.
You can find Model Form 7 on the WIPO website:

7.pdf
Invalidation in a designated Contracting Party (Rule 19)
Invalidation is a term used to refer to any decision by a competent authority (whether

administrative or judicial) of a designated Contracting Party to revoke or cancel the
effects (protection) of an international registration with regard to all or some of the
goods and services covered by the designation of that Contracting Party.
The procedures and substantive law governing invalidation are the same as for
marks applied for and registered directly with the Office of the designated
Contracting Party concerned.
For example, invalidation may occur:

 As a result of non-compliance of the holder with the rules concerning the
use of the mark,
 Because the mark has become generic or misleading, or
 Following a proceeding brought by a third party or a counterclaim in
infringement proceeding having established that the protection had to be
refused when the international mark was originally examined in the
designated Contracting Party.
WIPO has made available to Offices Model Form 10 for notifying the invalidation of
the effects of an international registration in a designated territory.
You can find Model Form 10 on the WIPO website:

10.pdf
Invalidation of an international registration cannot be finalized without the holder

having an opportunity to defend their rights.
Invalidation proceedings take place directly between the holder of the international
registration, the party who has brought the action for invalidation and the competent
authority concerned (Office or court).
It may be necessary for the holder to appoint a local representative.
The proceedings are governed entirely by the law and practice of the Contracting
Party concerned. WIPO is not involved in any way in these proceedings.
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The invalidation must be communicated to WIPO only after it is no longer subject for
any appeal. The Office of a designated Contracting Party has to remember that once
the invalidation has been recorded in the International Register, it can no longer be
withdrawn or modified.
Where the effects of an international registration are invalidated in a Contracting

Party, the Office must notify WIPO of the relevant facts, namely:
 The authority (for example, the Office or a particular court) which
pronounced the invalidation,
 The fact that the invalidation is no longer subject to appeal,
 The number of the international registration,
 The name of the holder,
 If the invalidation does not concern all of the goods and services, an
indication of those goods and services in respect of which the invalidation
has been pronounced or those in respect of which it has not been
pronounced, and
 The date on which the invalidation was pronounced and, where possible,
its effective date.
The invalidation is recorded on the date of receipt of a notification complying with the
applicable requirements by WIPO.
Refusal following a correction issued by WIPO (Rule 28(3))
You will recall that WIPO can, acting ex officio or at the request of the holder or of an
Office, modify the International Register to correct an error.
Following the notification by WIPO of the correction to the designated Contracting

Parties concerned, an Office may declare in a notification of provisional refusal to
WIPO that it considers that protection cannot, or can no longer, be granted to the
international registration as corrected. It may happen, for example, when some
additional grounds for refusal appeared for the corrected international registration
which did not apply to the international registration as originally notified to the Office
concerned.
Time limits for issuing a refusal remain the same as for international registrations or
subsequent designations initially notified by WIPO. They are calculated from the date
when the notification of the correction was sent by WIPO to the Office concerned
(notification date).
Rules 16 to 18ter also apply to refusals following a correction notice issued by

WIPO.
Communicating Decisions to WIPO
13
The Office of a designated Contracting Party may communicate decisions to WIPO

by mail or using any of WIPO’s preferred electronic communication methods, in a
manner agreed to between the Office and WIPO, such as Contact Madrid or the
Madrid Office Portal (MOP).
WIPO encourages Offices to communicate the

decisions by electronic means.
More information about the communication with

WIPO is provided in Module 5 of the Madrid System
eLearning Training Course.
Summary
You now know:

 The various decisions the Office of a designated Contracting Party is
responsible for communicating to WIPO,
 The Rules of the Common Regulations that govern the notification of the
decisions to WIPO,
 The information that must be included in a notification of each decision,
and
 The different ways an Office can communicate decisions to WIPO.
Before we continue, let’s check your knowledge. The correct

answers to the questions can be found at the end of this
workbook.
Knowledge Check
Question:
Where no notification of provisional refusal has been communicated to WIPO a
Statement of Grant of Protection under Rule 18ter(1) is sent by Offices of designated
Contracting Parties.
Is an Office required to send this notification? If so, when is it appropriate for the
Office to send the notification of a Statement of Grant of Protection under Rule
18ter(1)?
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Answer:
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
Question:
Where WIPO has notified the Office on a designated Contracting Party of a
correction of an international registration, an Office may declare in a notification of
provisional refusal to WIPO that it considers that protection cannot, or can no longer,
be granted to the international registration as corrected under Rule 28(3).
What are the time limits for an Office to notify WIPO of a refusal under Rule 28(3)?
Answer:
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
Question:
An Office may voluntary notify WIPO of the interim status of a mark under Rule
18bis. In what circumstance may an Office send such a notification?
Answer:
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
Section 2: Irregular Notifications of Provisional Refusal
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Irregular Notifications of Provisional Refusal
There are three kinds of irregular notifications of provisional refusals:

 Irregular provisional refusal, which is not considered as such by WIPO
and therefore cannot be recorded in the International Register nor rectified
by the Office concerned,
 Irregular provisional refusal, which is not recorded in the International
Register until it is rectified by the Office concerned, and
 Irregular provisional refusal, which is recorded in the International
Register before inviting the Office concerned to provide the missing
information.
Let’s look at each kind more closely.
Irregular Provisional Refusal which is not considered as such by WIPO and therefore
cannot be recorded in the International Register nor rectified by the Office concerned
A notification of provisional refusal is not considered as such by WIPO if:

 It does not contain an international registration number to which the
refusal relates (unless other indications contained in the notification permit
WIPO to identify the international registration concerned),
 It does not indicate any grounds for refusal, or
 It was sent to WIPO after the expiry of the refusal period applicable to the
Contracting Party concerned, namely:
o it was sent after the expiry of the relevant time limit of 12 or 18
months, or
o in the case of a refusal based on an opposition, it was sent after
the expiry of 18 months without the Office having, within the time
limit of 18 months, informed WIPO that there was a possibility of
oppositions being filed after the expiry of that period.
In all these cases, WIPO will still send a copy of a provisional refusal to the holder.
At the same time, it will inform both the holder and the Office concerned that the
notification of a provisional refusal is not considered as such indicating the reasons
therefor.
The Office would need to submit a new provisional refusal if this is still possible
within the applicable time limit. If this would not be the case, protection is deemed
granted in that Contracting Party concerned.
Irregular Provisional Refusal which is not recorded in the International Register until
it is rectified by the Office concerned
In some circumstances, an irregular provisional refusal will not be recorded in the

International Register until it is rectified by the Office within the prescribed time limit.
16
In particular, a provisional refusal will not be recorded where it does not contain the
information concerning:
 The time limit for filing a request for review or an appeal, or a response to
an opposition, and
 The authority to which the request has to be addressed.
Irregular Provisional Refusal which is not recorded in the International Register until
rectified by the Office concerned: Time limits to respond and consequences of not
responding
The Office that has issued an irregular notification of provisional refusal, which
cannot be recorded in the International Register before being rectified, will be given a
time limit of two months, from the date of issuing the irregularity notice, to rectify the
notification.
The rectified notification should also, where the domestic law so allows, specify a
new time limit for the holder to request review or appeal or for filing a response to the
opposition (for example, starting from the date of the notification by WIPO to the
holder of the rectified notification).
If a corrected notification is sent within the given time limit, WIPO will consider the
notification as having been sent on the date on which the incomplete provisional
refusal had been sent to it.
WIPO will send a copy of any rectified notification to the holder.
However, if the Office does not rectify its notification within the time limit, the
provisional refusal will not be recorded in the International Register. In this case,
WIPO will inform the holder and the Office that the notification of a provisional refusal
is not considered as such indicating the reasons therefor.
Irregular Provisional Refusal which is recorded in the International Register before

being rectified by the Office concerned
WIPO will issue an irregularity notice if the notification of provisional refusal is

incomplete in other respects, such as:
 It is not signed on behalf of the Office,
 It is presented in other language then English, French or Spanish,
 It does not contain a reproduction or other relevant details of a conflicting
earlier mark,
 It does not clearly indicate which goods and services are affected, or not
affected, by the provisional refusal, or
 It does not contain, where applicable, the name and address of the
opponent and the indication of the goods and services on which the
opposition is based.
17
Whereas these notifications of provisional refusal are considered irregular, WIPO will
still record them in the International Register. At the same time, it will invite the Office
concerned to send a rectified notification within a time limit of two months to remedy
the irregularity. Copies of the irregular notification and of the invitation sent to the
Office will also be transmitted to the holder.
If WIPO receives a rectified notification of a provisional refusal from the Office, it will
record it in the International Register and will transmit its copy to the holder.
Summary
You now know:

 The types of irregular notifications of provisional refusal,
 What kind of irregular notifications can or cannot be rectified,
 The grounds upon which WIPO may issue an irregularity notice, and
 The time frame an Office has to remedy an irregularity and the outcomes
for not responding in time.
Before we continue, let’s check your knowledge.

The correct answers to the questions can be
found at the end of this workbook.
Knowledge Check
Question:
What are the three kinds of irregularity notifications that WIPO may issue in regards
to a provisional refusal?
Answer:
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
Question:
In what circumstances will an irregular provisional refusal not be recorded in the
International Register until it has been rectified by the Office of the designated
Contracting Party?
Answer:
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.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
Question:
WIPO has received a notification of provisional refusal, which is incomplete as it
does not clearly indicate the goods and services that are affected, or not affected.
WIPO issues an irregularity notice to the Office of the designated Contracting Party
to rectify the notification.
Will WIPO record the notification in the International Register?
Answer:
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
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Scenarios
Irregular Provisional Refusals (1)
A designated Contracting Party has notified WIPO of a total provisional refusal using
Model Form 3A below:
MADRID PROTOCOL
Model Form 3A: Total Provisional Refusal of Protection (Rule 17(1) of the

Common Regulations)
I. Office making the notification:
Australia
II. Number of the international registration:
III. Name of the holder: Sterling Citizen
IV. Information concerning the type of provisional refusal:
Please indicate the type of refusal by checking only one of the following
options:
Total provisional refusal based on an ex officio examination
Total provisional refusal based on an opposition
Total provisional refusal based on both an ex officio examination and an

opposition
Where the refusal is based on an opposition, please indicate the name and
address of the opponent:
(i) Name of the opponent:
(ii) Address of the opponent:
V. Information concerning the scope of the provisional refusal:
Total provisional refusal affects all the goods and/or services.
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VI. Grounds for refusal [(where applicable, see item VII)]:
Trademark is similar to earlier registered trademark/s
VII. Information relating to an earlier mark:
(i) Filing date and number, and, if any, priority date:
TM number: 2000001
Filing Date: 12/05/17
Priority Date: 12?05/2017
(ii) Registration date and number (if available):
TM number: 2000001
Registration Date: 12/05/2017
(iii) Name and address of the owner:
Adam Blue Pty Ltd

Unit 1, 74 Flower Avenue
Sydney NSW
Australia
(iv) Reproduction of the mark:
(v) List of the relevant goods and/or services (this list may be in the language
of the earlier application or registration):
Class 3: Shampoo, cosmetics, soap, body lotion
Class 18: Jewellery, jewellery boxes
Class 25: Clothing
Class 35: Retail services in relation to clothing
Class 42: Design services
VIII. Corresponding essential provisions of the applicable law:
Section 44 Trade Marks Act 1995 (Cth)
IX. Information relating to the possibility to request a review or file an appeal:
21
(i) Time limit for requesting review or appeal:
(ii) Authority to which such request for review or appeal should be made:
IP Australia
(iii) Whether the request for review or appeal has to be filed in a specific
language and/or through the intermediary of a representative whose
address is within the territory of the Contracting Party:
Any request for review or appeal must be made in English. You must also
supply an address for service in Australia or New Zealand
(iv) Other requirements, if any:
X. Signature or official seal of the Office making the notification:
IP Australia
XI. Date of the notification to the International Bureau:
2 May 2018
[End of Model Form 3A]
Questions:
Question 1
Is the notification of provisional refusal complete and ready to be recorded by WIPO?
Question 2
If not, what irregular information needs to be remedied so the provisional refusal can
be recorded?
Question 3
What time limit does WIPO allow for remedying any irregular information?
22
Answer:
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
23
A designated Contracting Party has notified WIPO of a partial provisional refusal

using Model Form 3B below:
MADRID PROTOCOL
Model Form 3B: Partial Provisional Refusal of Protection (Rule 17(1) of the

Common Regulations)
AUSTRALIA
II. Number of the international registration:
1650000
III. Name of the holder:
Joanna Everyday
options:
Partial provisional refusal based on an ex officio examination
Partial provisional refusal based on an opposition
Partial provisional refusal based on both an ex officio examination and an

opposition
Please indicate the scope of the refusal, by choosing one of the two listed
options below and, where applicable, list the relevant goods and/or services:
Partial provisional refusal affects only the following goods and/or services:
24
Partial provisional refusal does NOT affect the following goods and/or
services:
List of goods and/or services:
Class 5: pharmaceutical preparations
Class 10: medical apparatus and instruments
Trade mark is not capable of distinguishing the goods and services for which
protection is sought
(i) Filing date and number, and, if any, priority date:
(ii) Registration date and number (if available):
(iii) Name and address of the owner:
(iv) Reproduction of the mark:
(v) List of the relevant goods and/or services (this list may be in the language
(v) Time limit for requesting review or appeal:
1 January 2020
(vi) Authority to which such request for review or appeal should be made:
IP Australia
(vii) Whether the request for review or appeal has to be filed in a specific
25
(viii) Other requirements, if any:
IP Australia

1 July 2018
[End of Model Form 3B]
Question:
Please provide the reasonings for your answer.
Answer:
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
26
A designated Contracting Party has notified WIPO of a total provisional refusal

based on opposition using Model Form 3A below:
MADRID PROTOCOL
Model Form 3A: Total Provisional Refusal of Protection (Rule 17(1) of the

Common Regulations)
Australia
II. Number of the international registration: 1500000
III. Name of the holder: Sterling Citizen
options:
Total provisional refusal based on an ex officio examination
Total provisional refusal based on an opposition
Total provisional refusal based on both an ex officio examination and an

opposition
Total provisional refusal affects all the goods and/or services.
27
Trademark is similar to earlier registered trademark
(vi) Filing date and number, and, if any, priority date:
TM number: 2000001
Filing Date: 12/05/17
Priority Date: 12/05/2017
(vii) Registration date and number (if available):
TM number: 2000001
Registration Date: 12/05/2017
(viii) Name and address of the owner:
Adam Blue Pty Ltd

Unit 1, 74 Flower Avenue
Sydney NSW
Australia
(ix) Reproduction of the mark:
(x) List of the relevant goods and/or services (this list may be in the language
Class 3: Shampoo, cosmetics, soap, body lotion
28
Class 14: Jewellery, jewellery boxes
Class 25: Clothing
Class 35: Retail services in relation to clothing
Class 42: Design services
(ix) Time limit for requesting review or appeal:
One month from the date of this notification
(x) Authority to which such request for review or appeal should be made:
IP Australia
(xi) Whether the request for review or appeal has to be filed in a specific
(xii) Other requirements, if any:
IP Australia
2 May 2018
[End of Model Form 3A]
Questions:
Question 1
29
Question 2
If not, what irregular information needs to be remedied so the provisional refusal can
be recorded?
Question 3
What is the time limit for remedying any irregular information?
Answer:
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
30
Refusal following a Correction (1)
On 7 June 2016, a designated Contracting Party was notified of an international

registration with goods in Class 3. On 1 October 2016, the designated Contracting
Party sends a partial provisional refusal for some of the goods in Class 3.
On 17 May 2017, the designated Contracting Party is notified of a correction by

WIPO that adds an additional class, Class 5, to the international registration. There
are no changes to Class 3 recorded in the correction notification.
After review of the correction notice, the Office of the designated Contracting Party
discovers that a ground for refusal applies to the goods in Class 5. It also discovers
that a refusal applies to some of the goods in Class 3 that were not part of the
provisional refusal it sent on 1 October 2016.
Question:
How should the designated Contracting Party deal with the refusals?
Answer:
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
31
On 21 March 2016, a designated Contracting Party was notified of an international

registration with goods in Class 6. A statement of a Grant of Protection under Rule
18ter(1) is notified to WIPO on 3 September 2017 and subsequently recorded on the
International Registration.
On 22 December 2017, the designated Contracting Party is notified of a correction

by WIPO that adds an additional class, Class 19, to the international registration.
There are no changes to Class 6 recorded in the correction notification.
After review of the correction notice, the Office of the Contracting Party confirms
there are no grounds for refusal in relation to the goods in Class 19, but discovers
that a ground for refusal should have been notified to WIPO in to the relation to the
goods in Class 6.
Question:
What can the designated Contracting Party do about the grounds for refusal in
relation to Class 6?
Please provide the reasonings for your answer.
Answer:
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
32
Questions and Answers

Section 1
Question:
Where no notification of provisional refusal has been communicated to WIPO a
Statement of Grant of Protection under Rule 18ter(1) is sent by Offices of designated
Contracting Parties.
Is an Office required to send this notification? If so, when is it appropriate for the
Office to send the notification of a Statement of Grant of Protection under Rule
18ter(1)?
Answer:
An Office is required to send a statement of grant of protection to WIPO when:
 All procedures before the Office (ex officio examination and opposition) have
been completed before the expiry of the applicable refusal period, and
 There is no ground for the Office to refuse protection for any of the goods and
services listed in the international registration or the subsequent designation.
The Office should send the statement of grant of protection under Rule 18ter(1) to
WIPO before the expiry of the refusal period and as soon as possible after the
positive decision on the mark has been taken.
Question:
Where WIPO has notified the Office on a designated Contracting Party of a
correction of an international registration, an Office may declare in a notification of
provisional refusal to WIPO that it considers that protection cannot, or can no longer,
be granted to the international registration as corrected under Rule 28(3).
What is the time limit for an Office to notify WIPO of a refusal under Rule 28(3)?
Answer:
The time limit for issuing a refusal is the same as for international registrations or
subsequent designations initially notified by WIPO. The time limit is calculated from
the date of notification of the correction by WIPO to the Office concerned (notification
date).
Question:
An Office may voluntarily notify WIPO of the interim status of a mark under Rule
18bis. In what circumstance may an Office send such a notification?
Answer:
An Office may voluntarily notify WIPO of the interim status of a mark under Rule
18bis when:
33
 An Office that has completed its ex officio examination, but the protection of
the mark is still subject to opposition or observations by third parties.
 An Office that has completed the ex officio examination without finding any
grounds for refusal, but the protection of the mark is still subject to opposition
or observations by third parties
 An Office that has notified a provisional refusal due to the ex officio
examination having been completed, but that the protection of the mark is still
subject to opposition or observations by third parties.
Section 2
Question:
What are the three kinds of irregularity notifications that WIPO may issue in regards
to a provisional refusal?
Answer:
The three kinds of irregularity notifications that WIPO may issue in regards to a
provisional refusal are:
 Irregular provisional refusal, which is not considered as such by WIPO and
therefore cannot be recorded in the International Register nor rectified by the
Office concerned,
 Irregular provisional refusal, which is not recorded in the International Register
until it is rectified by the Office concerned, and
 Irregular provisional refusal, which is recorded in the International Register
before inviting the Office concerned to provide the missing information.
Question:
In what circumstances will an irregular provisional refusal not be recorded in the
International Register until it has been rectified by the Office of the designated
Contracting Party?
Answer:
A provisional refusal will not be recorded where it does not contain the information
concerning:
 The time limit for filing a request for review or an appeal, or a response to an
opposition, and
 The authority to which the request has to be addressed.
Question:
WIPO has received a notification of provisional refusal, which is incomplete as it

does not clearly indicate which goods and services are affected or not affected.
WIPO issues an irregularity notice to the Office of the designated Contracting Party
to rectify the notification.
Will WIPO record the notification in the International Register?
Answer:
34
Yes, WIPO will still record the notification in the International Register and will
forward copies of the irregular notification and of the invitation sent to the Office to
the holder.
If WIPO receives a rectified notification of a provisional refusal from the Office, it will
record it in the International Register and transmit a copy to the holder.
35
Scenario Answers
Question 1:
No, the notification does not contain all the required information to meet the
requirements of Rule 17.
Question 2:
The following irregular information would need to be remedied before the provisional
refusal can be recorded:
• The refusal does not contain an international registration number

• The notification does not contain a reproduction of a conflicting mark
• The time limit to request a review or an appeal has not been provided
Question 3:
The time limit to remedy the irregular information is two months, from the date of
notification of the irregularity to the Office. If they are not remedied, the provisional
refusal will not be recorded.
No, the notification of the provisional refusal is not complete and ready to be
recorded by WIPO
This is because the notification does not contain all the required information to meet
the requirements of Rule 17. The indication of which goods and services are
affected or not affected by the refusal is missing.
Question 1:
No the notification does not contain all the required information to meet the
requirements of Rule 17.
Question 2:
The following irregular information would need to remedied:
 The name and the address of the opponent needs to be provided
Because the refusal is based on opposition, the refusal needs to include the name
and the address of the opponent. In this instance, the refusal does not include this
information and it will need to be provided before the refusal can be recorded by
WIPO.
Question 3:
36
The time limit to remedy the irregular information is two months, from the date of
notification of the irregularity by WIPO. If the irregular information is not remedied
the refusal will not be recorded.
Under Rule 28(3) a refusal based on correction can only be notified on the basis that
there are grounds for refusal of the international registration as corrected which did
not apply to the international registration as originally notified.
The designated Contracting Party should send a refusal based on correction under
Rule 28(3) for the goods in Class 5.
It cannot send a refusal based on correction under Rule 28(3) for the goods in Class
3, because Class 3 was not corrected.
However, the Contracting Party can send an additional refusal under Rule 17(1) to
17(3) for the goods in Class 3 because it is still within the appropriate notification
period (12 or 18 months) in which it can notify WIPO of provisional refusals.
Under Rule 28(3), a refusal based on correction can only be notified on the basis
that there are grounds for refusal of the international registration as corrected, which
did not apply to the international registration as originally notified.
In this case, Class 6 has not been corrected so a refusal based on correction under
Rule 28(3) cannot be notified to WIPO by the designated Contracted Party. It is also
20 months since the Contracting Party was notified so and the appropriate period to
notify WIPO of a provisional refusal under Rule 17(1) to 17(3) (12 or 18 months) has
expired
Because of this, the designated Contracting Party cannot notify WIPO of a

provisional refusal against the goods in Class 6.
37

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Workbook: Module 4 Office of a Designated Contracting Party

Topic 2: Communications Addressed to WIPO

In this module we will be looking at the various responsibilities and tasks of a

Hi! My name is Lumi. I’ll be here with you

Irregular Provisional Refusal which is not recorded in the International Register

The module is comprised of three topics and is self-paced, but it is estimated it

The subjects covered in Topic 2 are:

1. Communications to WIPO from the Office of a designated Contracting Party,

2. Irregular notifications of provisional refusals, including:

At the end of Topic 2 you should be able to:

 Differentiate the types of decisions that can be communicated to WIPO by

Scenarios Complexity Ratings

Section 1: Communications to WIPO from the Office of

Communicating Decisions to WIPO

The Office of a designated Contracting Party is responsible for communicating to

The range of communications to WIPO includes:

 First Office action (Rules 17 and 18ter(1)),

Let’s continue on to find out more about each of

First Office Action (Rules 17 and 18ter(1))

A first Office action can be:

Statement of Grant of Protection Where No Notification of Provisional Refusal has

An Office is required to send a statement of grant of protection to WIPO when:

Provisional Refusal (Rule 17)

Provisional refusal may be based on ex officio grounds, on opposition from third

Let’s look at provisional refusals under Rule 17 more closely.

Requirements for a Notification of Provisional Refusal

A notification of provisional refusal, whether total or partial, must:

Content of the Notification of Provisional Refusal

 The Basis for the Provisional Refusal

 Information about an Earlier Mark

 Scope of the Goods and Services Affected by the Provisional Refusal

The provisional refusal must either:

 Time Limits for Review or Appeal

The notification shall contain or indicate:

Additional Requirements for a Provisional Refusal Based on an Opposition

Where the provisional refusal is based on an opposition, or on an opposition and

 An indication of the fact that the provisional refusal is based on an

Additional voluntary information to holders on the status of a mark (Rule

You can find the Model 8 form on the WIPO website:

Final decision on the status of a mark (Rule 18ter(2) and (3))

Statement of Total or Partial Grant of Protection Following a Provisional Refusal

An Office must send a statement of grant of protection following a provisional refusal

Confirmation of Total Provisional Refusal (Rule 18ter(3))

Further decision (Rule 18ter(4))

You can find Model Form 7 on the WIPO website:

Invalidation in a designated Contracting Party (Rule 19)

Invalidation is a term used to refer to any decision by a competent authority (whether

For example, invalidation may occur:

You can find Model Form 10 on the WIPO website:

Invalidation of an international registration cannot be finalized without the holder

It may be necessary for the holder to appoint a local representative.

Where the effects of an international registration are invalidated in a Contracting

Refusal following a correction issued by WIPO (Rule 28(3))

Following the notification by WIPO of the correction to the designated Contracting

Rules 16 to 18ter also apply to refusals following a correction notice issued by

Communicating Decisions to WIPO

The Office of a designated Contracting Party may communicate decisions to WIPO

WIPO encourages Offices to communicate the

More information about the communication with