Module 3 Topic 1 Workbook IP Law

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WORKBOOK
Module 3
Office of Origin
Topic 1: Overview and MM2 Form
Madrid Training Project
Workbook: Module 3 Office of Origin
Introduction
Welcome to Topic 1 of Module 3 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 actions

performed by the Office of origin.
Hi! My name is Lumi. I’ll be here with you as

your guide, directing you to valuable insights
along your learning journey.
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Table of Contents
Introduction...................................................................................................................1
Module Outline..............................................................................................................5
Learning Outcomes......................................................................................................6
Scenarios Complexity Ratings......................................................................................6
Section 1: Overview of the Role of the Office of Origin................................................7
The Office of Origin...................................................................................................8
Tasks of the Office of Origin.....................................................................................8
Providing Assistance to Trademark Owners and Applicants................................8
Certification of the International Application..........................................................8
Remedying Irregularity Notices issued by WIPO..................................................9
Monitoring the Status of the Basic Mark...............................................................9
Summary.................................................................................................................10
Knowledge Check...................................................................................................10
Section 2: Requirements of an International Application...........................................12
Requirements of an International Application.........................................................12
The Basic Mark....................................................................................................12
Entitlement to File................................................................................................12
Language of the International Application...........................................................13
Essential Information for the International Application........................................13
Summary.................................................................................................................14
Knowledge Check...................................................................................................14
Section 3: The Official MM2 Application Form...........................................................16
The Official MM2 Application Form.........................................................................16
Item 1 - Contracting Party Whose Office is the Office of Origin..........................16
Item 2 - Applicant................................................................................................16
Item 2(a) Name....................................................................................................17
Item 2(b) Address................................................................................................18
Item 2(c) Address for Correspondence...............................................................18
Item 2(d) Telephone and Email Address.............................................................18
Item 2(e) Preferred Language for Correspondence............................................19
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Item 2(f) Other Indications...................................................................................19

Item 3 - Entitlement to File..................................................................................20
Item 4 - Appointment of a Representative..........................................................21
Item 5 - Basic Application or Basic Registration.................................................22
Item 6 - Priority Claimed......................................................................................22
Item 7 - The Mark................................................................................................23
Item 7(a)..............................................................................................................24
Item 7(b)..............................................................................................................24
Item 7 (c).............................................................................................................25
Item 7(d)..............................................................................................................26
Item 8 - Color(s) Claimed....................................................................................26
Item 9 - Miscellaneous Indications......................................................................27
Item 9(a) Transliteration......................................................................................27
Item 9(b) Translation...........................................................................................28
Item 9(c) Marks that cannot be Translated.........................................................28
Item 9(d) Special Types of Mark.........................................................................29
Item 9(e) Description of the Mark........................................................................29
Item 9(f) Verbal Elements of the Mark................................................................30
Item 9(g) Disclaimer............................................................................................30
Item 10 - Good and Services...............................................................................31
Item 10(a)............................................................................................................32
Item 10(b)............................................................................................................32
Item 11 - Designations........................................................................................33
The European Union...............................................................................................34
A Second Language............................................................................................34
Seniority...............................................................................................................34
The United States of America.................................................................................35
Item 12 - Signature by the Applicant and/or their Representative......................35
Item 13 - Certification and Signature of the International Application by the
Office of Origin.....................................................................................................36
Fee Calculation Sheet.........................................................................................37
Part (a).................................................................................................................37
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Part (b).................................................................................................................38
Part (c).................................................................................................................38
Summary.................................................................................................................39
Knowledge Check...................................................................................................39
Scenarios....................................................................................................................42
Questions and Answers..............................................................................................50
Scenario Answers.......................................................................................................53
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Module Outline
Module 3 of the Madrid Training Project is intended to provide examiners and
administration staff in IP Offices with an overview of the role of the Office of origin as
part of the Madrid System for the International Registration of Marks.
The module is comprised of four topics and is self-paced, but it is estimated it should
take no more than four hours to complete.
Topic 1 contains three sections and includes knowledge check questions and
scenarios at various points to ensure you have understood the preceding material.
The subjects covered in Topic 1 are:
1. Overview of the role of the Office of origin, including:

o The main tasks performed by the Office of origin.
2. Requirements of an international application, including:

o The requirements that must be met in order to file an international
application.
3. The official MM2 form, including:

o The requirements for each item of the MM2 form.
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Learning Outcomes
This module is intended to provide current or future users of the Madrid System with
an overview of the role of the Office of origin as part of the Madrid System.
At the end of Topic 1 you should be able to:
 Identify and apply the required actions of an Office of origin,

 State the role of the basic mark (basic trade mark application or
registration), and
 Outline the information required to complete the MM2 form, including
compulsory and optional items.
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: Overview of the Role of the Office of Origin

The Office of origin plays an important role in the international registration process.
This flowchart outlines each stage of this process from the beginning, when the
trademark owner files an international application form (MM2) with the Office of
origin, through to WIPO registering the mark in the International Register and issuing
a certificate of international registration.
The applicant files their international application with the Office of origin, which
reviews and certifies the application.
The Office then sends the international application to WIPO, who conducts a formal
examination to ensure the application meets all requirements.
WIPO registers the mark in the International Register and notifies the designated
Contracting Parties, publish the international registration in the gazette and issues
the holder with a certificate of registration.
Let’s continue to find out more about the Office of origin.
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The Office of Origin
The Office of origin is the Intellectual Property (IP) Office of a member of the Madrid
System to which the applicant is connected by establishment, domicile or nationality
and where the mark that is the basis of an international application (the basic mark)
is registered or has been applied for.
For example, the Australian IP Office is the Office of origin for international
applications for applicants connected to the Australian territory by establishment,
domicile or nationality and where that applicant has a basic mark on the Australian
Register.
The Office of origin is responsible for a number of tasks.
Take a moment to consider what you believe may be the

Office’s tasks and add your thoughts into the box below.
When you are ready, let us continue on to learn about the

main tasks and responsibilities of the Office of origin.
Tasks of the Office of Origin
The main tasks of the Office of origin include:

 Providing Assistance to Trademark Owners and Applicants,
 Certification of the International Application,
 Remedying Irregularity Notices issued by WIPO, and
 Monitoring the Status of the Basic Mark.
Providing Assistance to Trademark Owners and Applicants
Part of an Office of origin’s main tasks is to provide assistance to trademark owners

and applicants by:
 Answering questions about the Madrid System and how it works,
 Helping applicants to file international applications, and
 Explaining how to calculate the required fees.
Certification of the International Application
One of the main tasks the Office of origin performs is certification of the international
application.
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The task includes:

 Ensuring that the particulars of the international application correspond to
the particulars of the basic mark, and
 Resolving any issues preventing certification directly with the applicant or
their representative.
Remedying Irregularity Notices issued by WIPO
Where an application received by WIPO contains incomplete or vague information,

WIPO will issue an irregularity notice.
The Office of origin will:

 Provide assistance to applicants or their representatives by explaining
what irregularities are and how to resolve them, and
 Communicate the corrected information to WIPO within applicable
timeframes.
Monitoring the Status of the Basic Mark
The international registration is dependent on the basic mark for a period of five
years from the date of the international registration.
It is the task of the Office of origin to:

 Monitor the basic mark for any changes during the five-year dependency
period.
 Notify WIPO of any changes (ceasing of effect) and requesting a total or
partial cancellation of the international registration concerned.
 Notify WIPO of a division or merger of the basic mark.
Where a final decision resulting in the partial or total ceasing of effect of
the basic mark happens after the five-year period, the Office would still be
obliged to notify WIPO if the action resulting in the ceasing of effect was
initiated in the five-year period.
As you progress through this module, these tasks will be discussed in more detail.
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Summary
You now know:

 The Office of origin assists trademark owners looking to file an
international application as well as to applicants who have already filed
their international applications,
 The Office of origin must certify that the particulars of the international
application correspond to the particulars of the basic mark,
 The Office of origin assists applicants to remedy any irregularities in the
international application notified by WIPO, and
 The Office of origin monitors the basic mark for any changes during the
five-year dependency period and notifies WIPO accordingly.
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:
application. What does this task include?
Answer:
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
Question:
If a final decision resulting in the partial or total ceasing of effect of the basic mark
happens after the five-year dependency period, what, if anything, is required by the
Office of origin?
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Answer:
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
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Section 2: Requirements of an International Application

Requirements of an International Application
A number of requirements must be met when completing an international application

form.
These include:
 The basic mark,
 Entitlement to file,
 Language of the international application, and
 Essential information for the international application.
Let’s take a quick look at these requirements.
The Basic Mark
To file an international application, the applicant must have already filed an

application for registration or registered a mark with their Office of origin. This
national or regional application or registration is referred to as the basic application
or basic registration, or simply the basic mark.
An international application can be based on a single basic mark or several identical

basic marks covering different goods and services
An international application may only contain goods and services covered by the
scope of the basic mark(s).
An international registration is dependent on the basic mark for a period of five

years. This means that for five years from the date of the international registration,
any changes affecting the scope of protection of the basic mark may affect the
international registration concerned.
Entitlement to File
To be entitled to use the Madrid System, an applicant must have a connection with
one of its members, who are referred to as Contracting Parties.
An international application may be filed only by:

 A national of a Contracting Party of the Madrid System; or
 A person domiciled in the territory of a Contracting Party of the Madrid
System; or
 A legal entity which has a real and effective industrial or commercial
establishment in a Contracting Party of the Madrid System.
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If an applicant has a connection with several Contracting Parties

of the Madrid System, such as, a national of Japan living in the
United States of America, the applicant can choose to file their
international application in either Contracting Party provided they
have a trademark
 with the relevant IP Office.
Language of the International Application
An international application may be filed in one of the three working languages of the
Madrid System:
 English,
 French, or
 Spanish.
The language used in the application is determined by the Office of origin. The Office
is entitled to restrict the applicants’ choice to only one language, or two, or can
permit the applicant to choose between any of the three.
WIPO will not accept an international application filed in any other language and will
return the application unexamined to the Office which forwarded it.
Essential Information for the International Application
There are four pieces of information that are mandatory in an international

application. Without this information, an application will not be considered complete
by WIPO.
The application must contain:

 The applicant’s name and contact details.
 A reproduction of the mark.
 The designations of Contracting Parties in which protection is sought.
 The list of goods and services for which protection is sought.
If the application is missing any of the above-mentioned information, the omission

may have an impact on the date of the international registration.
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Summary
You now know:

 The importance of the basic mark in the international application process,
 Who can file an international application,
 The languages that can be used in an international application, and
 The four essential pieces of information required for an international
application.
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:
An applicant is about to lodge an international application. They have a connection
with several Contracting Parties of the Madrid System as they are a national of
Monaco living in the United States of America. Which Office of origin should they
lodge their application through?
Answer:
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
Question:
An international application may be lodged in any of the working languages of the

Madrid System: English, French, or Spanish.
Who determines which language is used in the international application?
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Answer:
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
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Section 3: The Official MM2 Application Form

The Official MM2 Application Form
The MM2 form is the official form for applying for an international registration.
In this section you will be guided through each item of the international application
form. Here you have an opportunity to put what you’re learning into practice.
It’s important that you understand the requirements of the MM2 form so that you can
ensure your certification of international applications is complete and correct.
You may like to download the MM2 form, and complete it as if you were an applicant,
as you are guided through each item of the form.
You can download the official MM2 form from WIPO’s website at:
http://www.wipo.int/madrid/en/forms/
Item 1 - Contracting Party Whose Office is the Office of Origin
The Office of origin of the applicant should be indicated in Item 1.
For example, if the basic mark has been applied for or is registered in Japan, then
Japan should be indicated.
If there is more than one applicant, the name of only one Contracting Party should
be indicated. However, each applicant should be eligible or qualify, with respect to
that Contracting Party, to file the international application through the Office in
question. In other words, each co-applicant has to be connected to that Contracting
Party by establishment, domicile or nationality.
Item 2 - Applicant
Item 2 contains information about the applicant. Let’s look at each part of Item 2.
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Item 2(a) Name
The name or names of the applicants should be provided in Item 2(a).
The applicant’s name must correspond to the name of the person or entity in whose
name the basic application or registration stands. If the application is in the name of
two or more applicants, the basic mark must also be jointly owned by all of them.
Natural persons should indicate their family (or last) name and given (or first) name
in the order in which they are customarily used.
If the applicant is a legal entity, its full official designation must be given.
Where there are multiple applicants, only the name of the first applicant should be
indicated in Item 2(a). All other applicants and their details are to be specified on a
continuation sheet.
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Where the name of the applicant is in characters other than Latin, the name must be
indicated as a transliteration into Latin characters, following the phonetics of the
language of the international application.
Where the applicant is a legal entity, the transliteration may be replaced by a

translation into the language of the international application.
Item 2(b) Address
The address of the applicant must be clear enough to enable prompt postal delivery.
If the applicant does not provide an address for correspondence, or appoint a

representative before WIPO, all communications will be sent to the address provided
in this item.
If there is more than one applicant and no address for correspondence or no

representative has been appointed, communications will be sent to the address of
the first applicant.
Item 2(c) Address for Correspondence
As with the address in Item 2(b), the address for correspondence must be clear
enough to enable prompt postal delivery.
This item is optional. An address for correspondence only needs to be provided if no

address of a representative is provided in Item 4 of the MM2 form and the applicant
would like correspondence to be sent to an address other than that provided in Item
2(b).
Item 2(d) Telephone and Email Address
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The telephone number or email address given in this item should be those of the
person that WIPO should contact when it needs to get in touch with the applicant.
If an email address is supplied, WIPO will send all correspondence electronically and
the applicant will not receive any paper notifications.
Item 2(e) Preferred Language for Correspondence
The applicant may indicate whether they wish to receive communications from WIPO
in English, French, or Spanish.
It is not necessary to fill in Item 2(e) if the applicant wishes to receive

communications in the language that the application is filed in.
A form is not required to change the preferred language for

correspondence. Instead, the change can be requested, free
of charge, via Contact Madrid.
Item 2(f) Other Indications
Other indications can be required by a number of designated Contracting Parties.
If the relevant IP Office requires such an indication, failure to provide it may result in
a provisional refusal of protection of the mark in that Contracting Party. Therefore,
although it is not compulsory to fill in this part of an international application, it is
advisable to do so where appropriate, for example, when designating the United
States of America.
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Item 3 - Entitlement to File
Item 3 of the MM2 form is where the applicant must record information about their
entitlement to file.
The applicant – a natural person or a legal entity - must be entitled to use the Madrid
System by establishing that they:
 Are a national of a Contracting Party of the Madrid System, or
 Are domiciled in a Contracting Party of the Madrid System, or
 Have a real and effective industrial or commercial establishment in a
Contracting Party of the Madrid System.
Where there is more than one applicant listed in the MM2 form, the nature of each
applicant’s entitlement to file must be indicated.
The interpretation of what may be considered nationality, domicile or real and

effective commercial or industrial establishment is determined by the Office of origin
at the time of receipt of the international application.
Where the address of the applicant is not in the same territory as the Office of origin
identified in Item 1, the applicant must provide an address within that territory to
assist in establishing their entitlement to file. This is to be entered in Item 3(b).
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Item 4 - Appointment of a Representative
The appointment of a representative is not mandatory and only empowers the

representative to act before WIPO.
If no representative is appointed, then all correspondence will be sent to the

applicant. Where the application is jointly owned, correspondence will be sent to the
address of the first named applicant in the MM2 form.
Only one representative can be recorded per international application and a new
appointment cancels the previous one.
The Madrid System does not provide for any requirement as to who may act as
representative before WIPO, in terms of their professional qualification, nationality,
residence or domicile. An appointment may be cancelled at any time at the request
of the holder or representative.
The question of whether an applicant needs a representative

before the Office of origin or the Office of a designated
Contracting Party, for example, if a provisional refusal of
protection is issued by an Office, as well as who may act as a
representative and the method of appointment are governed by
the law and practice requirements of the Contracting Party
concerned.
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Item 5 - Basic Application or Basic Registration
The basic application or registration number must be entered at item 5 together with
the basic application or registration date.
If the international application is based on more than one basic mark, all of the
relevant application or registration numbers for those basic marks must be included
at this item.
A continuation sheet should be attached to the international application form where

the international application is based on more than one basic registration or
application and the numbers and dates do not fit in the space provided in the MM2
form.
Item 6 - Priority Claimed
If an applicant wishes to claim priority of an earlier filing, they must do so in the

application, using item 6. The earlier filing cannot be more than six months earlier
than the date of the international registration.
That earlier filing will normally be the basic application or the application, which
resulted in the basic registration. However, it may also be:
 Another application made either in a country party to the Paris Convention
or in a member of the World Trade Organization (WTO); or
 An application which, under a bilateral or multilateral treaty concluded
between countries of the Paris Union, is equivalent to a regular national
filing. On this basis, WIPO records, for example, claims to priority from
applications for European Union Trade Marks filed with the European
Union Intellectual Property Office.
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The applicant must indicate, in item 6, the name of the Office with which the earlier
filing was made, along with the date of the earlier filing. Priority can be claimed from
more than one earlier filing and a continuation sheet should be used to provide all
required details of each filing concerned. If the number of the earlier filing is available
to the applicant, that should be indicated also.
If the priority date is more than six months earlier than the date of the international
registration, WIPO will disregard the claim.
Where the earlier filing does not relate to all of the goods and services listed in Item
10 of the application form, the applicant should indicate the goods and services to
which it does relate. If there are several earlier filings with different dates, the
applicant will need to indicate the goods and services to which each relates.
Where priority is claimed from more than one earlier filing, a continuation sheet
should be used to provide all required details.
Item 7 - The Mark
The reproduction of the mark in item 7 must be the same as the basic mark.
If the basic mark is in black and white, the reproduction must also be in black and
white. Likewise, if the basic mark is in color, the reproduction must be in color also.
The mark may be typed, printed, pasted or reproduced by any other means.
The reproduction of the mark in item 7 must be sufficiently clear for the purposes of
recording, publication and notification. If this is not the case, WIPO will treat the
international application as irregular. Let’s look at each part of Item 7.
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It is not possible to modify the reproduction of the mark after it

has been registered by WIPO. If the holder wishes to protect the
mark in a form which differs, even slightly, from the mark as
recorded, they must file a new international application.
This is true even if the mark has been allowed to be changed in

the basic application or basic registration after the international
application is recorded in the International Register.
Item 7(a)
In most cases, the reproduction of the mark will be contained in the left-hand box,
labelled (a) on the form MM2.
Item 7(b)
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Item 7(b) should only be used when color is claimed as a distinctive feature of the
basic mark but the reproduction of the basic mark is in black and white because the
Office of origin does not provide for publication in color.
In such cases, a reproduction of the mark in color must be provided in box (b), in
addition to the black and white reproduction to be provided in box (a).
The Gazette will then include reproductions of the mark in black and white, and also
in color, for the purpose of establishing the scope of the color claim. Otherwise, box
(b) should be left empty.
Item 7 (c)
Item 7(c) must be checked if the mark is considered to be a mark in standard

characters.
Generally, a mark that is in standard characters may be equivalent to a “word mark”,

which is a term used by many Offices. This means that the mark consists of word or
words, or letters or numerals, or a combination of those elements, as opposed to
stylized or figurative mark, or a mark that is depicted in a special style, font or color,
rather than in a uniform style.
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Item 7(d)
If the mark consists exclusively of a color or a combination of colors, the applicant

must tick box 7(d).
Item 8 - Color(s) Claimed
Item 8 of the MM2 form is where an applicant should indicate if color is a distinctive
or essential feature of the basic mark.
If color is claimed as a distinctive or essential feature of the basic mark, this claim
should be included in the international application by checking the box in Item 8(a).
The color or combinations of colors must also be described in words in Item 8(b).
Applicants should describe the principal parts of the mark that are in color, in respect
of each of the colors claimed and can include reference to an international color
classification system, such as Pantone.
For example, if the mark consists of multiple elements like a house, a bird and a car,
the applicant can specify that ‘the house is blue, the bird is red and the car is brown.’
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Item 9 - Miscellaneous Indications
Item 9 contains information that may need to be provided depending on the nature of
the basic mark. Let’s look at each part of Item 9.
Item 9(a) Transliteration
If the mark consists of or contains non-Latin characters, for example Chinese

characters, or numerals other than Arabic or Roman numerals, the applicant must
provide a transliteration of the mark.
27
This means, in simple terms, a phonetic reproduction of the mark as it sounds,

represented in Latin characters or Arabic numerals.
Where transliteration is missing, WIPO will treat the international application as

irregular.
Item 9(b) Translation
If the mark consists of or contains words which may be translated, it would be

advisable that the applicant provide a translation into English and/or French and/or
Spanish.
A translation of the mark is not compulsory, but may be required by certain

designated Contracting Parties.
WIPO does not check the need for, or the accuracy of, a translation.
Item 9(c) Marks that cannot be Translated
If the mark consists of invented words that have no meaning and cannot be
translated, the applicant may tick box (c) of Item 9.
This is intended to reduce requests by certain Offices of the designated Contracting

Parties, which may require translations.
Box (c) should not be checked if a translation has been provided in box (b).
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Item 9(d) Special Types of Mark
If the basic mark is a three-dimensional mark, a sound mark or a collective,

certification or guarantee mark, then the corresponding box (d) of item 9 should be
ticked in the application form.
This should only be done if the respective indication appears in the basic registration
or basic application. For example, the applicant cannot check the box of a collective
mark if the basic mark is not applied for or registered as a collective trademark.
For a collective, certification or guarantee mark, regulations governing the use of the
mark should not be sent to WIPO. However, a designated Contracting Party may ask
for such regulations to be filed with them directly. An applicant may therefore wish to
send the required documents directly to the Office concerned as soon as the
certificate of international registration is issued by WIPO.
The information about the specific requirements concerning the

collective, certification and guarantee marks applicable in
different Contracting Parties of the Madrid System can be found
in the Madrid Member Profiles database available on WIPO’s
website: http://www.wipo.int/madrid/memberprofiles/#/.
Item 9(e) Description of the Mark
Item 9(e) of the MM2 form provides for two types of description of the mark: a
mandatory description and a voluntary description.
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 Item 9 (e)(i): Mandatory Description

If the basic mark has a description and the Office of origin requires that
this also be included in the application, then this description must be
indicated in item 9 (e)(i).
 Item 9 (e)(ii): Voluntary Description

The applicant may include a voluntary description of the mark in box (e)
(ii). It can be the same description as in the basic application or
registration or any other description of the mark.
Where a mandatory description in provided in box (e)(i), the applicant may still
include a voluntary description in box (e)(ii). The voluntary description, in this case,
should be different from that contained in the basic application or registration.
The Office of origin may wish to explain to applicants that

certain Contracting Parties of the Madrid System, such as the
United States of America and India, require applicants to
provide a description of their mark in an international
application. This may be the case where the trademark is
represented in non-standard or non-Latin characters. Applicants
who fail to provide the required description can find themselves
dealing with an unexpected provisional refusal
Item 9(f) Verbal Elements of the Mark
If the mark is in special characters, hand-written, or in words or letters that could be

misinterpreted, the applicant may indicate what they consider to be the essential
verbal elements of the mark. Providing this information is not mandatory, and is not
intended to have any legal effect.
Item 9(g) Disclaimer
The applicant may provide a disclaimer for any element of their mark.
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For example, some designated Contracting Parties require that non-distinctive

elements of the mark, such as “made in” or descriptions of the goods, be disclaimed.
If a disclaimer is noted in the international application, it will apply to all designated

Contracting Parties of the application.
It is not possible to include a disclaimer for some elements of the mark after the
international application has been registered by WIPO.
Item 10 - Good and Services
The goods and services for which the international registration of the mark is sought
must be grouped in the relevant classes of the International Classification of Goods
and Services for the Purposes of the Registration of Marks (the Nice Classification).
The applicant can use the Madrid Goods & Services Manager
(MGS) for preparing their list of goods and services for the
international application. This online tool is31
useful for ensuring
the goods and services claimed in the international application
will be accepted by WIPO, and in many cases, by designated
You can access the Madrid Goods & Services Manager from the WIPO website:
https://webaccess.wipo.int/mgs/index.jsp?lang=en
Let’s look at each part of Item 10.
Item 10(a)
The goods and services listed in the international application must be covered by the
basic mark or marks. The list may be narrower, but cannot be broader or contain
different goods or services. This does not mean that exactly the same terms must be
used; the terms used in the international application must however be equivalent to,
or fall within the scope of, those used in the basic registration or application.
The goods and services should be indicated with precision. WIPO does not accept
expressions such as “all goods in class X”, “all services in this class”, or “all other
goods in this class”.
Item 10(b)
The applicant can also limit the list of goods and services in respect of one or more
designated Contracting Parties in Item 10(b).
32
For example, the applicant may include Classes 3 and 25 in the main list of their
international application but limit the list of goods to only Class 25 for one or more of
the Contracting Parties designated.
The applicant’s reasons for requesting a limitation of the goods and services may
include that one or more of the designated Contracting Parties require very specific
descriptions of goods and services.
Item 11 - Designations
The Contracting Parties, in which the applicant seeks protection for their mark must
be indicated by checking the corresponding boxes in Item 11. The applicant must
select at least one Contracting Party. The Contracting Party of the Office of origin
cannot be designated.
33
Some Contracting Parties have certain requirements for specific information to be

indicated, either on the MM2 form or provided on a separate form annexed to the
international application.
Let’s take a closer look at the additional information required for

the European Union and the United States of America.
The European Union
A Second Language
Where the European Union (EU) is designated, the applicant must, in addition to the
language of the international application, indicate a second working language before
the European Union Intellectual Property Office (EUIPO).
The second language must be chosen in footnote 1 to item 11 among English,

French, German, Italian or Spanish. This second language serves exclusively as a
language in which third parties may lodge opposition or cancellation proceedings
before the EUIPO.
The applicant should remember that if no indication of a second

language is given in an international application, a provisional
refusal will be notified by the EUIPO.
Seniority
An applicant may claim the seniority of an earlier mark registered in, or for, a
member State of the European Union.
If such a claim has been made and accepted by the EUIPO, the holder may later
surrender the earlier mark or allow it to lapse. Protection in the EU is deemed to
continue to be afforded the same rights in the member State concerned, as it would
have had if the earlier mark had continued to be registered.
34
The earlier mark must not have lapsed at the time the seniority is claimed. Therefore,
protection must still be valid in the EU member State concerned.
To claim seniority of an earlier mark registered in or for a member State of the

European Union, the applicant must fill out form MM17 and annex it to the
international application concerned.
You can view the MM17 form on the WIPO website at:
The United States of America
When designating the United States of America (US), the applicant must fill out the
official MM18 form: a declaration of intention to use the mark.
The declaration is required to be in English, regardless of the language in which the

international application is filed.
The MM18 form has to be annexed to the international application form.
You can view the MM18 form on the WIPO website at:
Item 12 - Signature by the Applicant and/or their Representative
The Office of origin may require or permit the applicant or their representative to sign
the international application. The signature can be handwritten, printed or stamped. It
may also be replaced by affixing a seal to the form.
The signature of the applicant or their representative is a matter for the Office of
origin certifying the application. WIPO will not question the absence of a signature.
35
Item 13 - Certification and Signature of the International Application by the Office of

Origin
The Office of origin must sign the international application form to certify the date on
which the Office received the application and that certain information appearing on
the application form corresponds to the information of the basic mark.
This signature may be handwritten, printed or stamped, or may be replaced by a

seal. Where the application is sent by electronic means, the signature is replaced by
a mode of identification agreed with WIPO.
36
Fee Calculation Sheet
The Fee Calculation Sheet is on page 9 of the international application form. Let’s
look at each part of the fee calculation sheet.
When calculating fees, it is recommended that applicants use the

electronic Fee Calculator available on the Madrid System
website: http://www.wipo.int/madrid/en/fees/calculator.jsp
Part (a)
37
Part (a) of the Fee Calculation Sheet contains a box, which should be checked when
the applicant wishes that the amount of the fees be debited from a current account
with WIPO.
In that case, the holder of the account, the account number, and the party giving
instructions should also be indicated. It is not necessary to indicate the amount to be
debited.
Part (b)
Part (b) of the Fee Calculation Sheet allows applicants to indicate the fees they are
required to pay and how the total amount was arrived at.
Part (c)
38
Part (c) of the Fee Calculation Sheet contains a number of additional methods the
applicant can make the payment to WIPO.
When indicating payment in Part (c) of the Fee Calculation sheet the applicant must
complete part (b) of the sheet.
Summary
You now know:

 Some Contracting Parties have compulsory additional requirements for
specific information in an international application,
 Transliterations are mandatory, while translations are recommended,
 An applicant can claim priority from an earlier filing as long as it is no
more than six months earlier than the date of the international registration,
and
 An international application may include mandatory or voluntary
description of the mark, or both of them.
Before you finish the workbook for this topic, let’s

check your knowledge a final time. The correct
answers to the questions can be found at the end of
this workbook.
Knowledge Check
Question:
An MM2 form has FRANCE entered in Item 1 – Contracting Party Whose Office is
the Office of origin.
Are there any requirements in relation to the Office entered in Item 1 that must be
met if basic mark that the international application is based on has multiple owners?
Answer:
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
39
Question:
 are a national of a Contracting Party of the Madrid System; or
 are domiciled in a Contracting Party of the Madrid System; or
 have a real and effective industrial or commercial establishment in a
Who will determine whether the nationality, domicile or real and effective commercial
or industrial establishment in the international application form can be certified as
correct?
Answer:
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
Question:
The applicant would like to claim priority from their basic mark in their international
application. What information must the applicant include in Item 6 of the international
application form?
Answer:
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
Question:
characters, or numerals other than Arabic or Roman numerals, it is mandatory that
the applicant provide a transliteration of the mark (Rule 9(4)(xii)). This means, in
simple terms, a phonetic reproduction of the mark as it sounds, represented in Latin
characters or Arabic numerals.
40
Is it also mandatory that an applicant provides a translation of a mark that consists of

or contains non-Latin characters?
Answer:
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
41
Scenarios
Applicant Details
An international application has been received by the Office of origin. The

international application has no continuation sheets attached. The basic mark has
the following trademark owner details:
Joan Smith John Jones

121 Elm Street 245 Melody Avenue
Canberra ACT 2600 Canberra ACT 2600
The following information is contained in the MM2 form:
Question:
42
Should the Office of origin certify the international application? Please provide the
reasoning for your answer.
Answer:
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
43
Entitlement to File
The following international application has been filed with the Office of origin.
44
Question:
Does the international application contain sufficient information about the applicant
and their entitlement to file for the Office of origin to certify the application form?
Please provide the reasoning for your answer.
Answer:
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
45
Priority Claims
An international application has been filed on 2 February, 2018 with the Office of
origin. The international application is based on based two basic marks. The relevant
details are as follows:
Trade Mark Number: 19000002

Filing date: 2 February, 2017
Goods and/or services: Class 29: Milk
Trade Mark Number: 19200001

Filing date: 30 January, 2018
Goods and/or services: Class 30: Chocolate beverages with milk
The goods of the international application are identical to the goods in the basic
marks.
Item 6 and the continuation sheet of the MM2 form contain the following information:
Questions:
46
Question 1
Are both priority claims valid?
Question 2
Do the relevant parts of the MM2 contain sufficient information about the priority
claims?
Please provide the reasonings for your answers to questions 1 and 2.
Answer:
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
47
Transliterations/Translations
An international application has been received by the Office of origin. It is based on

the following representation of the basic mark.
Item 9 of the MM2 form includes the following information.
MISCELLANEOUS INDICATIONS
(a) Transliteration of the mark (this information is compulsory where the mark
consists of or contains matter in characters other than Latin characters, or
numerals other than Arabic or Roman numerals):
...............................................................................................................................
...............................................................................................................................
(b)Translation of the mark (as may be required by certain designated Contracting

Parties):
(i) into English: The Best Dog.........................................................................

...............................................................................................................................
(ii) into French: Le Meilleur Chein ..................................................................

...............................................................................................................................
(iii) into Spanish: El Mejor Perro.......................................................................

...............................................................................................................................
(c) These words contained in the mark have no meaning (and therefore
cannot be translated).
(d) Where applicable, check the relevant box or boxes below:
Three-dimensional mark
48
Sound mark
Collective mark, certification mark, or guarantee mark
(e) Description of the mark (where applicable):
The mark consists of Japanese Characters and cartoon dog features including a
pair of ears, a nose, and a mouth
...............................................................................................................................
(f) Verbal elements of the mark (where applicable):

...............................................................................................................................
...............................................................................................................................
(g) The applicant declares that he wishes to disclaim protection for the
following element(s) of the mark:
...............................................................................................................................
...............................................................................................................................
Question:
Does item 9 of the MM2 form contain enough information for the Office of origin to
state that the application form is complete?
Please provide the reasonings for your answer.
Answer:
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
49
Questions and Answers

Section 1
Question:
application. What does this task include?
Answer:
The task includes:
 Ensuring the information provided on the international application corresponds
to the basic mark.
 Resolving any issues preventing certification directly with the applicant or their
representative.
Question:
If a final decision resulting in the partial or total ceasing of effect of the basic mark
happens after the 5-year dependency period, what, if anything, is required by the
Office of origin?
Answer:
If the action leading to the final decision resulting in the partial or total ceasing of
effect of the basic mark was started after the 5-year dependency period, the Office of
origin is not required to notify WIPO as the International Registration is now
independent of the basic mark.
However, where a final decision resulting in the partial or total ceasing of effect of the
basic mark happens after the 5 year period, the Office would still be obliged to notify
WIPO if the action resulting in the ceasing of effect was initiated in the 5 year period.
Section 2
Question:
An applicant is about to lodge an international application. They have a connection
with several Contracting Parties of the Madrid System as they are a national of
Monaco living in the United States of America. Which Office of origin should they
lodge their application through?
Answer:
The applicant can choose either Contracting Party to file their international
application provided they have a trademark with the IP Office.
Question:
An international application may be lodged in any of the working languages of the
Madrid System: English, French, or Spanish.
Who determines which language is used in the international application?
50
Answer:
The language used in the application is determined by the Office of origin. The Office
is entitled to restrict the applicants’ choice to only one language, or two, or can
permit the applicant to choose between any of the three.
Section 3
Question:
An MM2 form has FRANCE entered in Item 1 – Contracting Party Whose Office is
the Office of origin.
Are there any requirements in relation to the Office entered in Item that must be met
if basic mark that the international application is based on has multiple owners?
Answer:
If there is more than one applicant, each applicant should be eligible or qualify, with
respect to that Contracting Party, to file the international application through the
Office in question. In other words, each co-applicant has to be connected to that
Contracting Party by establishment, domicile or nationality.
Question:
 are a national of a Contracting Party of the Madrid System; or
 are domiciled in a Contracting Party of the Madrid System; or
 have a real and effective industrial or commercial establishment in a
Who will determine whether the nationality, domicile or real and effective commercial
or industrial establishment in the international application form can be certified as
correct?
Answer:
The interpretation of what may be considered nationality, domicile or real and
effective commercial or industrial establishment is determined by the Office of origin
at the time the international application is presented.
Question:
The applicant would like to claim priority from their basic mark in their international
application. What information must the applicant include in Item 6 of the international
application form?
Answer:
For each basic mark that the applicant would like to claim priority from, the applicant
must indicate in Item 6:
 The name of the Office with which the earlier filing was made, along with the
date of the earlier filing.
51
 If the number of the earlier filing is available to the applicant, that should be
indicated also.
 Where the basic mark does not relate to all of the goods and services listed in
Item 10 of the application form, the applicant should indicate the goods and
services to which it does relate
 If there are several earlier filings with different dates, the applicant will need to
indicate the goods and services to which each relates.
Question:
characters, or numerals other than Arabic or Roman numerals, it is mandatory that
the applicant provide a transliteration of the mark (Rule 9(4)(xii)). This means, in
simple terms, a phonetic reproduction of the mark as it sounds, represented in Latin
characters or Arabic numerals.
Is it also mandatory that an applicant provides a translation of a mark that consists of

or contains non-Latin characters?
Answer:
No, it is not mandatory that an applicant provides a translation of a mark that
consists of or contains non-Latin characters. If the mark consists of or contains
words which may be translated, it would be advisable that the applicant provide a
translation into English and/or French and/or Spanish.
A translation of the mark is not compulsory but may be required by certain

designated Contracting Parties.
52
Scenario Answers
Applicant details
No, the Office of origin should not certify the international application.
While item 2 of the MM2 form contains information about one of the owners of the
basic marksand the information about this trademark owner matches the information
on the basic mark, the basic mark has two trademark owners.
For the Office of origin to certify the international application it must be filed in both
names of the owners of the basic mark.
Entitlement to File
No, the international application does not include sufficient information about the
applicant and their entitlement to file for the Office of origin to certify the application
form.
 At item 1 of the MM2 for the applicant has indicated that the United States of
America is the Contracting Party whose office is the Office of origin
 At item 2(b) the address for the applicant is:
1704 Maple Leaf Drive

Toronto Ontario 0B1
Canada
 The applicant has not provided an address for correspondence at item 2(c)
 In relation to their entitlement to file the applicant has marked item 3(a)(iv) the
applicant has a real and effective industrial or commercial establishment in
the territory of the Contracting Party mentioned in item 1.
 The applicant has not provided any information at item 3(b)
In this case the Contracting Party is the Unites States of America but the applicant’s
address is in Canada (not in the territory of the Office of origin).
Because the applicant’s entitlement to file is based on having a real and effective
industrial or commercial establishment in the United States of America, the applicant
must provide the address of their industrial or commercial establishment in the
territory of the Office of origin at item (3)(b).
Priority Claims
No, the international application does not include sufficient information about the
applicant and their entitlement to file for the Office of origin to certify the application
form.
53
 At item 1 of the MM2 for the applicant has indicated that the United States of
America is the Contracting Party whose office is the Office of origin
 At item 2(b) the address for the applicant is:
1704 Maple Leaf Drive

Toronto Ontario 0B1
Canada
 The applicant has not provided an address for correspondence at item 2(c)
 In relation to their entitlement to file the applicant has marked item 3(a)(iv) the
applicant has a real and effective industrial or commercial establishment in
the territory of the Contracting Party mentioned in item 1.
 The applicant has not provided any information at item 3(b)
In this case the Contracting Party is the Unites States of America but the applicant’s
address is in Canada (not in the territory of the Office of origin).
Because the applicant’s entitlement to file is based on having a real and effective
industrial or commercial establishment in the United States of America, the applicant
must provide the address of their industrial or commercial establishment in the
territory of the Office of origin at item (3)(b).
Transliterations/Translations
No, item 9 of the MM2 form does not contain enough information for the Office of
origin to state that the application form is complete.
Under Rule 9(4)(a)(xii) of the Common Regulations a mark consisting of or

containing elements in characters other than Latin characters, a transliteration into
Latin charaters must be provided.
A transliteration has not been provided at item 9(a) for the Japanese Characters
contained within the basic mark.
54

Module 3 Topic 1 Workbook IP Law

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1

In this module we will be looking at the various responsibilities and actions

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

Item 2(f) Other Indications...................................................................................19

The subjects covered in Topic 1 are:

1. Overview of the role of the Office of origin, including:

2. Requirements of an international application, including:

3. The official MM2 form, including:

At the end of Topic 1 you should be able to:

 Identify and apply the required actions of an Office of origin,

Scenarios Complexity Ratings

Section 1: Overview of the Role of the Office of Origin

Let’s continue to find out more about the Office of origin.

The Office of Origin

The Office of origin is responsible for a number of tasks.

Take a moment to consider what you believe may be the

When you are ready, let us continue on to learn about the

Tasks of the Office of Origin

The main tasks of the Office of origin include:

Providing Assistance to Trademark Owners and Applicants

Part of an Office of origin’s main tasks is to provide assistance to trademark owners

Certification of the International Application

The task includes:

Remedying Irregularity Notices issued by WIPO

Where an application received by WIPO contains incomplete or vague information,

The Office of origin will:

Monitoring the Status of the Basic Mark

It is the task of the Office of origin to:

You now know:

Before we continue, let’s check your knowledge.

Section 2: Requirements of an International Application

A number of requirements must be met when completing an international application

Let’s take a quick look at these requirements.

The Basic Mark

To file an international application, the applicant must have already filed an

An international application can be based on a single basic mark or several identical

An international registration is dependent on the basic mark for a period of five

An international application may be filed only by:

If an applicant has a connection with several Contracting Parties

Language of the International Application

Essential Information for the International Application

There are four pieces of information that are mandatory in an international

The application must contain:

If the application is missing any of the above-mentioned information, the omission

You now know:

Before we continue, let’s check your knowledge.

An international application may be lodged in any of the working languages of the

Who determines which language is used in the international application?

Section 3: The Official MM2 Application Form

Item 1 - Contracting Party Whose Office is the Office of Origin

The Office of origin of the applicant should be indicated in Item 1.

Item 2(a) Name

The name or names of the applicants should be provided in Item 2(a).

Where the applicant is a legal entity, the transliteration may be replaced by a

Item 2(b) Address

If the applicant does not provide an address for correspondence, or appoint a

If there is more than one applicant and no address for correspondence or no

Item 2(c) Address for Correspondence