1

WORKBOOK

Module 3
Office of Origin
Topic 4: Ceasing of Effect, Transformation, Division or Merger,
Corrections in the International Register

Madrid Training Project

Workbook: Module 3 Office of Origin
Topic 4: Ceasing of Effect, Transformation, Division or Merger,
Corrections in the International Register
Madrid Training Project

Introduction
Welcome to Topic 4 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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Workbook: Module 3 Office of Origin
Topic 4: Ceasing of Effect, Transformation, Division or Merger,
Corrections in the International Register
Madrid Training Project

Table of Contents
Introduction...................................................................................................................1
Module Outline..............................................................................................................3
Learning Outcomes......................................................................................................4
Scenarios Complexity Ratings......................................................................................4
Section 1: Ceasing of Effect of the Basic Mark............................................................5
Ceasing of Effect.......................................................................................................5
Monitoring of the Basic Mark....................................................................................5
Notification Received by WIPO.................................................................................6
Section 2: Transformation of an International Registration..........................................7
Section 3: Division or Merger of the Basic Mark(s)......................................................8
Division or Merger.....................................................................................................8
WIPO Notification..................................................................................................8
WIPO Action..........................................................................................................8
Summary...................................................................................................................9
Knowledge Check.....................................................................................................9
Corrections in the International Register................................................................11
Discrepancy between the Data in the International Register and the Documents
filed with WIPO....................................................................................................11
Obvious Errors.....................................................................................................11
Objective Errors in Facts Recorded in the International Register.......................12
Substantive Errors Attributed to a National or Regional IP Office......................12
Errors Attributed to the Holder or Representative..................................................12
Requesting a correction..........................................................................................13
Summary.................................................................................................................13
Knowledge Check...................................................................................................13
Scenarios....................................................................................................................15
Question and Answers...............................................................................................24
Scenario Answers.......................................................................................................27

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Workbook: Module 3 Office of Origin
Topic 4: Ceasing of Effect, Transformation, Division or Merger,
Corrections in the International Register
Madrid Training Project

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 4 contains four sections and includes knowledge check questions at various
points to ensure you have understood the preceding material.

The subjects covered in Topic 4 are:

1. Ceasing of effect of the basic mark during the five-year dependency

period, including:
o What is meant by ceasing of effect of the basic mark and its
consequences for the international registration concerned, and
o The requirement to monitor the basic mark by the Office of origin
during the five-year dependency period.

2. Transformation of an international registration into national or regional

applications.

3. Division or Merger of basic mark(s).

4. Corrections in the International Register, including:

o What types of errors can or cannot be corrected.

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Workbook: Module 3 Office of Origin
Topic 4: Ceasing of Effect, Transformation, Division or Merger,
Corrections in the International Register
Madrid Training Project

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 4 you should be able to:

 Identify the consequences of ceasing of effect of the basic mark and

outline responsibilities of the Office of origin in this regard,
 Describe the procedure of notifying the division or merger of the basic
application or registration, and
 Explain how and when the errors in the International Register can be
corrected.

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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Workbook: Module 3 Office of Origin
Topic 4: Ceasing of Effect, Transformation, Division or Merger,
Corrections in the International Register
Madrid Training Project

Section 1: Ceasing of Effect of the Basic Mark

Ceasing of Effect

An international registration is dependent on the basic mark for a period of five years
following the date of the international registration.

If, within this period, the basic mark ceases to have effect, either partially or fully and
for any reason, the Office of origin must inform WIPO and request to cancel the
international registration in respect of the goods and services concerned.

This rule of ceasing of effect also applies to basic marks affected after the expiry of
the five years of dependency, where the action resulted in the ceasing of effect
commenced within that period.

At the end of the five-year dependency period, the international registration becomes
independent of the basic mark.

Dependence of the international registration on the basic mark is absolute and is

effective regardless of the reasons why the basic mark has ceased to enjoy, in whole
or in part, legal protection.

For example, a ceasing of effect of the basic mark can be a result of:
 A final decision of rejection of a basic application,
 Withdrawal of a basic application,
 Limitation of goods and services in a basic application or basic
registration,
 Abandonment or renunciation of the basic registration,
 A final decision of revocation, cancellation or invalidation of the basic
registration.

Monitoring of the Basic Mark

The Office of origin is required to monitor the basic mark for any changes concerning
the scope of protection that may affect the international registration.

If such changes are found, the Office of origin must notify WIPO and request the
cancellation of the international registration either in its entirety or specify which
goods and services the ceasing of effect relates to.

The Office should not send the notification until it is clear that there is no possibility
of the ceasing of effect being reversed. While it is possible to notify WIPO of a
provisional decision of ceasing of effect under Rule 22(1)(b), where the subsequent

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Workbook: Module 3 Office of Origin
Topic 4: Ceasing of Effect, Transformation, Division or Merger,
Corrections in the International Register
Madrid Training Project

final decision would not confirm the provisional decision, the Office of origin should
notify WIPO of this fact.

There is no official form available for these actions. However, WIPO has made
Model Form 9 available for use in this instance.

You can access the Model Form 9 from the WIPO Website:
http://www.wipo.int/export/sites/www/madrid/en/contracting_parties/pdf/model_form_
9.pdf

Notification Received by WIPO

Upon receiving a notification of a ceasing of effect containing all necessary

information, WIPO will:
 Record the notification in the International Register,
 Cancel the international registration to the extent requested by the Office
of origin, and
 Notify the holder and all designated Contracting Parties.

If the notification does not contain all the necessary information needed for
recording, WIPO cannot record the cancellation of the international registration and
will inform the Office of origin of this fact.

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Workbook: Module 3 Office of Origin
Topic 4: Ceasing of Effect, Transformation, Division or Merger,
Corrections in the International Register
Madrid Training Project

Section 2: Transformation of an International

Registration
Where the international registration has been cancelled due to the ceasing of effect
of the basic mark, the holder has the possibility of requesting that their international
right be transformed into national or regional rights directly before the designated
Contracting Parties concerned. This process is called transformation of the
international registration.

A national or regional application must be filed directly to the IP Office of the

designated Contracting Party concerned within three months from the date of the
recording of the cancellation of the international registration in the International
Register.

The national or regional applications resulting from transformation are treated as if

they had been filed on the date of the original international registration or the date of
the subsequent designation, if applicable.

The transformation is not available to the holders having requested the voluntary
cancellation of the international registration.

More information on transformation is provided in

Module 4 of the Madrid System eLearning training
course.

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Workbook: Module 3 Office of Origin
Topic 4: Ceasing of Effect, Transformation, Division or Merger,
Corrections in the International Register
Madrid Training Project

Section 3: Division or Merger of the Basic Mark(s)

Division or Merger

Where the laws and regulations of a Contracting Party allows, it is possible for the
basic mark or basic marks to be either divided or merged.

It may be possible for a national or regional application or registration on which an

international registration is based to be divided into several applications or
registrations, or for several basic applications or basic registrations to be merged into
a single application or registration.

Where this is done during the five-year period of dependency of the international
registration, the Office of origin must notify WIPO accordingly.

WIPO Notification

The notification of the division or merger of the basic mark(s) sent by the Office of
origin to WIPO must indicate:
 The number of the international registration. Where this is not yet
available, the number of the basic application should be provided.
 The name of the holder or applicant.
 The number of each basic application or registration resulting from either
the division or merger.

WIPO Action

When WIPO receives a notification of division or merger, they will:

 Record the notification in the International Register.
 Notify the division or merger to the IP Offices of the designated
Contracting Parties and to the holder of the international registration.
 Publish the relevant data in the Gazette.

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Workbook: Module 3 Office of Origin
Topic 4: Ceasing of Effect, Transformation, Division or Merger,
Corrections in the International Register
Madrid Training Project

Summary

You now know:

 The reasons why a basic mark may cease to have effect and the
consequences of ceasing of effect for the international registration,
 The Office of origin’s responsibilities regarding the monitoring of the basic
mark during the five-year dependency period,
 The transformation process and timeframes for filing a national or regional
application, and
 The process of notifying WIPO of the division or merger of the basic
mark(s).

Before we continue, let’s check your knowledge.

The correct answers to the question can be found
at the end of this workbook.

Knowledge Check

Question:
When WIPO is notified of the merger of the basic applications or registrations by an
Office of origin, what information must that notification contain?

Answer:

.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................

Question:
A basic mark has ceased to have effect in the Office of origin due to a request by the
owner to delete goods and services. The international registration is six years old. Is
the Office of origin required to inform WIPO?

Please explain your answer.

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Workbook: Module 3 Office of Origin
Topic 4: Ceasing of Effect, Transformation, Division or Merger,
Corrections in the International Register
Madrid Training Project

Answer:

.......................................................................................................................................
................................................................................................................................................

................................................................................................................................................

................................................................................................................................................

................................................................................................................................................

Question:
A ceasing of effect for the basic mark can be the result of a number of varied
reasons, for example, a final decision of rejection of a basic application or the
limitation of goods and services in a basic application or basic registration.

Are there any reasons where, during the 5-year dependency period, a ceasing of
effect of the basic mark does not need to be notified to WIPO where the scope of
protection affects the international registration?

Answer:

.......................................................................................................................................
................................................................................................................................................

................................................................................................................................................

................................................................................................................................................

................................................................................................................................................

Question:
An international registration has been cancelled due to the ceasing of effect of the
basic mark. Is there a process where the holder has the possibility of requesting that
their international right become national or regional rights directly before the
designated Contracting Parties concerned? If so, what is that process?

Answer:

.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................

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Workbook: Module 3 Office of Origin
Topic 4: Ceasing of Effect, Transformation, Division or Merger,
Corrections in the International Register
Madrid Training Project

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Workbook: Module 3 Office of Origin
Topic 4: Ceasing of Effect, Transformation, Division or Merger,
Corrections in the International Register
Madrid Training Project

Corrections in the International Register

Corrections can be made by WIPO where an error has occurred in the International
Register. An error can be corrected ex officio when discovered by WIPO, or on the
request of the holder or a national or regional IP Office.

A correction in the International Register will be generally made for the following
errors:
 Discrepancy between the Data in the International Register and the
Documents filed with WIPO,
 Obvious Errors,
 Objective Errors in Facts Recorded in the International Register, and
 Substantive Errors Attributed to a National or Regional IP Office.

Discrepancy between the Data in the International Register and the Documents filed
with WIPO

These are the errors attributed to WIPO.

When there is a mistake on the part of WIPO, it will be corrected without further
question. There are no time limits for requesting or undertaking such corrections.

Obvious Errors

Where there is an obvious error in the International Register and the correction
sought is also obvious, the error will be corrected as soon as it comes to the
attention of WIPO.

For example:

The list of goods in an international application includes:

Class 30: sugar-coated hard caramels; candy made with caramels;

caramel popcorn

When the record for the application is viewed in Madrid Monitor, the list of
goods appears as:

Class 30: sugar-coated hard camels; candy made with camels;

caramel popcorn

There are no time limits for requesting such corrections.

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Workbook: Module 3 Office of Origin
Topic 4: Ceasing of Effect, Transformation, Division or Merger,
Corrections in the International Register
Madrid Training Project

Objective Errors in Facts Recorded in the International Register

Where there is an objective error in a fact recorded in the International Register, for
example, where there are minor typographical errors or spelling mistakes in a name
or address, or in a date or number as recorded, this may in general be corrected.

There are no time limits for requesting such corrections.

Substantive Errors Attributed to a National or Regional IP Office

If the error is attributable to an Office and its correction would affect the rights
deriving from the international registration, the error may only be corrected if the
request for correction is received by WIPO within nine months from the date of the
publication of the incorrect entry in the International Register.

Errors for which the correction must be requested within nine months are:
 A discrepancy between documents received by WIPO and those filed with
the Office, which could, for example, relate to the name of the
applicant/holder,
 The list of designated Contracting Parties, or
 The list of goods and services for which protection is sought.

Errors Attributed to the Holder or Representative

Apart from the correction of minor errors or spelling mistakes, which will not impact
the rights deriving from the international registration, WIPO will not correct errors
made by the holder or their representative.

In particular, WIPO will not correct the following types of errors resulting from a
mistake made by the holder or representative:
 Errors concerning the mark itself, the list of designated Contracting
Parties, or
 The list of goods and services.

Additionally, there is no provision for a mark that is recorded in the International

Register to be amended in any way, either on renewal or at any other time. It is also
not possible to expand the list of goods and services of an international registration.
In both these instances, the holder must file a new international application.

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Workbook: Module 3 Office of Origin
Topic 4: Ceasing of Effect, Transformation, Division or Merger,
Corrections in the International Register
Madrid Training Project

Requesting a correction
The official MM21 form can be used to request a correction.

A correction may be requested via WIPO’s Contact Madrid service or Madrid Office
Portal (MOP).

When submitting a request, the number of the international registration and details of
what is to be corrected must be indicated.

The MM21 form can be accessed on the WIPO website:

http://www.wipo.int/export/sites/www/madrid/en/forms/docs/form_mm21.pdf

Summary
You now know:
 The types of errors that can be corrected by WIPO,
 Corrections affecting the rights derived from an international registration
must be requested by an Office within nine months from the date of
publication of the incorrect data in the International Register,
 The substantive mistakes attributed to the holder or their representative
cannot be corrected, and
 How to request a correction before WIPO.

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 error can be corrected ex officio when discovered by WIPO, or on the request of
the holder or a national or regional IP Office. List the types of errors that a correction
in the International Register will be generally made for.

Answer:
.......................................................................................................................................
................................................................................................................................................

................................................................................................................................................

................................................................................................................................................

................................................................................................................................................

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Workbook: Module 3 Office of Origin
Topic 4: Ceasing of Effect, Transformation, Division or Merger,
Corrections in the International Register
Madrid Training Project

Question:
In particular, what types of errors will not be corrected by WIPO when resulting from
a mistake made by the holder or representative?

Answer:

.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................

Question:
If an error is attributable to an Office and its correction would affect the rights
deriving from the international registration, is there a time limit for the Office to
request the correction?

Answer:

.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................

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Workbook: Module 3 Office of Origin
Topic 4: Ceasing of Effect, Transformation, Division or Merger,
Corrections in the International Register
Madrid Training Project

Scenarios

Ceasing of effect of the Basic Mark (1)

An international registration has a registration date of 17 July, 2014 and contains the
following goods and services:

Class 9: Sunglasses; cases for sunglasses; anti-glare glasses; cases for anti-
glare glasses; cellular phones; carrying cases for cell phones

Class 14: Jewellery; jewellery boxes; jewellery cases; horological and

chronometric instruments

Class 18: Bags; umbrellas and parasols

Class 25: Clothing, footwear, headgear

The basic mark which this international registration is based on has the following
goods and services:

Class 9: Computer software; data processing equipment; sunglasses; cases

for sunglasses; anti-glare glasses; cases for anti-glare glasses; cellular
phones; carrying cases for cell phones

Class 14: Jewellery; jewellery boxes; jewellery cases; horological and

chronometric instruments

Class 16: Printed matter; stationery and office requisites, except furniture

Class 18: Bags; umbrellas and parasols

Class 25: Clothing, footwear, headgear

On 29 September 2017, the basic trade mark is amended to the following list of
goods and services:

Class 9: Sunglasses; cases for sunglasses; anti-glare glasses; cases for anti-
glare glasses; cellular phones; carrying cases for cell phones

Class 16: Printed matter

Class 18: Bags; umbrellas and parasols

Class 25: Clothing, footwear, headgear

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Workbook: Module 3 Office of Origin
Topic 4: Ceasing of Effect, Transformation, Division or Merger,
Corrections in the International Register
Madrid Training Project

Question:

Based on the above information does the Office need to notify WIPO of a ceasing of
effect of the basic mark?

Please provide the reasonings for your answer.

Answer:

.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................

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Workbook: Module 3 Office of Origin
Topic 4: Ceasing of Effect, Transformation, Division or Merger,
Corrections in the International Register
Madrid Training Project

Ceasing of Effect of the Basic Mark (2)

An international registration has a registration date of 24 May, 2013 and contains the
following goods and services:

Class 12: Vehicles for locomotion by land, air and water or rail

Class 37: Motor vehicle maintenance and repair

The basic mark which the international registration is based on has the same list of
goods and services as the international registration.

On 22 November, 2019 the basic mark is amended to delete Class 37 and now
contains the following list of goods in Class 12:

Class 12: Vehicles for locomotion by land, air and water or rail

Question:

Based on the above information, does the Office need to notify WIPO of a ceasing of
effect of the basic mark?

Please provide the reasonings for your answers.

Answer:

.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................

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Workbook: Module 3 Office of Origin
Topic 4: Ceasing of Effect, Transformation, Division or Merger,
Corrections in the International Register
Madrid Training Project

Ceasing of Effect of the Basic Mark (3)

An international registration has a registration date of 3 October, 2010 and contains

the following goods:

Class 18: Bags; umbrellas and parasols

Class 25: Clothing, footwear, headgear

The basic mark which this international registration is based on has the following
goods and services:

Class 18: Bags; umbrellas and parasols

Class 25: Clothing, footwear, headgear

Class 35: Retail or wholesale services for clothing, footwear, headgear, bags,
umbrellas and parasols

The basic mark was examined and advertised for opposition. On 7 April, 2011 a
third party opposed the acceptance of the basic mark. Eventually as result of the
opposition, the basic mark is amended to the following goods and services:

Class 18: Bags, namely, athletic and sports bags

Class 25: Clothing, namely, athletic and sports clothing, footwear, namely,
athletic and sports footwear, headgear, namely, hats and visors for use in
sporting activities

Class 35: Retail or wholesale services for athletic and sports clothing, athletic
and sports footwear, hats and visors for use in sport activities, athletic and
sports bags

The amendments to the basic mark were made on 1 February, 2016

Question:

Based on the above information, does the Office need to notify WIPO of a ceasing of
effect of the basic mark?

Please provide the reasonings for your answer.

Answer:

.......................................................................................................................................
.......................................................................................................................................

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Workbook: Module 3 Office of Origin
Topic 4: Ceasing of Effect, Transformation, Division or Merger,
Corrections in the International Register
Madrid Training Project

.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................

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Workbook: Module 3 Office of Origin
Topic 4: Ceasing of Effect, Transformation, Division or Merger,
Corrections in the International Register
Madrid Training Project

Corrections (1)

WIPO has electronically received a certified MM2 form from an Office of origin. The
application contains the following information regarding the Contracting Parties
designated and the goods and services:

Contracting Parties designated:

 Denmark
 Japan
 New Zealand
 Turkey

Goods and services:

Class 4: Industrial oils and greases; lubricants; dust absorbing, wetting and
binding compositions

Class 3: Cleaning, polishing, scouring and abrasive preparations; detergents

Class 33: Alcoholic beverages [except beers]

During the examination of this application WIPO receives two separate requests for
correction. The first request is from the representative appointed before WIPO for the
application and the second is from the Office of origin.

The request for correction from the representative appointed before WIPO states
that during the lodgement of the application with the Office of origin the trademark
owner of the basic mark did not designate all the Contracting Parties required and
that the application should be corrected to include the additional Contracting parties:

 United States of America,

 Lesotho, and
 Cuba

The request for correction from the Office of origin states that during the electronic
transfer of the application, data relating to the goods and services contained in the
application was not complete. The review by the Office showed that Class 32 did not
transfer to WIPO.

The goods included in Class 32 are:

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Workbook: Module 3 Office of Origin
Topic 4: Ceasing of Effect, Transformation, Division or Merger,
Corrections in the International Register
Madrid Training Project

Class 32: Frozen vegetable juices; fruit ale; grain based non-alcoholic
beverages; non-alcoholic honey-based beverages

Question:

What action will WIPO take in relation to the requests it has received?

Answer:

.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................

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Workbook: Module 3 Office of Origin
Topic 4: Ceasing of Effect, Transformation, Division or Merger,
Corrections in the International Register
Madrid Training Project

Corrections (2)

On 2 February 2017, WIPO electronically received a certified MM2 form from an

Office of origin.

The application contains the following information regarding the Contracting Parties
designated and the goods and services:

Contracting Parties designated:

 China
 United States

Goods and services:

Class 25: Clothing; footwear

Class 35: Retailing of clothing, footwear and jewellery

WIPO determines that the application meets all requirements, registers the
international registration in the International Register on the 20 February 2018 and
notifies the Contracting Parties designated of the international registration.

On 1 December 2018, the holder contacts their Office of origin indicating class 18 is
missing from the international registration.

The Office of origin reviews the original international application and confirms class
18 was included in the application. Further investigation reveals that during the
electronic transfer of the application, data relating to the goods and services
contained in the application was not complete and class 18 did not transfer to WIPO.

The goods included in Class 18 are:

Class 18: Jewellery

The Office of origin contacts WIPO and requests a correction to the international
registration to include the missing class.

Question:

Is WIPO able to take corrective action in relation to the request it has received?

Please provide the reasonings for your answer.

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Workbook: Module 3 Office of Origin
Topic 4: Ceasing of Effect, Transformation, Division or Merger,
Corrections in the International Register
Madrid Training Project

Answer:

.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................

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Workbook: Module 3 Office of Origin
Topic 4: Ceasing of Effect, Transformation, Division or Merger,
Corrections in the International Register
Madrid Training Project

Question and Answers

Section 1, 2, & 3

Question:
When WIPO is notified of the merger of the basic applications or registrations by an
Office of origin, what information must that notification contain?

Answer:
A notification of the merger of the basic applications or registrations from the Office
of origin must contain:
 The number of the international registration. Where this is not yet available,
the number of the basic application should be provided.
 The name of the holder or applicant.
 The number of each basic application or registration resulting from either the
division or merger.

Question:
A basic mark has ceased to have effect in the Office of origin due to a request by the
owner to delete goods and services. The international registration is six years old. Is
the Office of origin required to inform WIPO?

Please explain your answer.

Answer:
The Office of origin is only required to inform WIPO if the action, resulting in the
ceasing of effect, commenced within the 5-year dependency period.

In all other cases the Office of origin is not required to inform WIPO of the ceasing of
effect as the international registration is outside the dependency period.

Question:
A ceasing of effect for the basic mark can be the result of a number of varied
reasons, for example, a final decision of rejection of a basic application or the
limitation of goods and services in a basic application or basic registration. Are there
any reasons where, during the 5-year dependency period, a ceasing of effect of the
basic mark does not need to be notified to WIPO where the scope of protection
affects the international registration?

Answer:
No, Dependence of the international registration on the basic mark is absolute and is
effective regardless of the reasons why the basic mark has ceased to enjoy, in whole
or in part, legal protection.

Question:

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Workbook: Module 3 Office of Origin
Topic 4: Ceasing of Effect, Transformation, Division or Merger,
Corrections in the International Register
Madrid Training Project

An international registration has been cancelled due to the ceasing of effect of the
basic mark. Is there a process where the holder has the possibility of requesting that
their international right become national or regional rights directly before the
designated Contracting Parties concerned? If so, what is that process?

Answer:
Yes, the process is called transformation of the international registration.

A national or regional application must be filed directly to the IP Office of the

designated Contracting Party concerned within three months from the date of the
recording of the cancellation of the international registration in the International
Register.

The national or regional applications resulting from transformation are treated as if

they had been filed on the date of the original international registration or the date of
the subsequent designation, if applicable.

The transformation is not available to the holders having requested the voluntary
cancellation of the international registration.

Section 4

Question:
An error can be corrected ex officio when discovered by WIPO, or on the request of
the holder or a national or regional IP Office. List the types of errors that a correction
in the International Register will be generally made for

Answer:
A correction in the International Register will be generally made for the following
errors:
 Discrepancy between the Data in the International Register and the
Documents filed with WIPO
 Obvious Errors
 Objective Errors in Facts Recorded in the International Register
 Substantive Errors Attributed to a National or Regional IP Office

Question:
In particular, what types of errors will not be corrected by WIPO when resulting from
a mistake made by the holder or representative?

Answer:
WIPO will not correct the following types of errors resulting from a mistake made by
the holder or representative:
 Errors concerning the mark itself, the list of designated Contracting Parties, or
 The list of goods and services.
Question:

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Workbook: Module 3 Office of Origin
Topic 4: Ceasing of Effect, Transformation, Division or Merger,
Corrections in the International Register
Madrid Training Project

If an error is attributable to an Office and its correction would affect the rights
deriving from the international registration, is there a time limit for the Office to
request the correction?

Answer:
Yes, the error may only be corrected if the request for correction is received by
WIPO within nine months from the date of the publication of the incorrect entry in the
International Register.

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Workbook: Module 3 Office of Origin
Topic 4: Ceasing of Effect, Transformation, Division or Merger,
Corrections in the International Register
Madrid Training Project

Scenario Answers
Ceasing of Effect (1)

Yes, the Office needs to notify WIPO of a ceasing of effect of the basic mark.

A change that affects the protection afforded by the international registration has
occurred on the basic mark within the five-year dependency period.

The amendment to delete Class 14 affects the protection afforded by the

international registration. Therefore the Office should notify WIPO and request that
the international registration be cancelled to the same extent (i.e., Class 14 should
be deleted from the international registration).

The Office would not need to notify WIPO of the changes in Class 9 and Class 16
because the changes are to goods that are not included in the list of goods and
services in the international registration, so those changes do not affect the
protection afforded by the international registration.

Ceasing of Effect (2)

No, the Office does not need to notify WIPO of the change because the change has
occurred outside the five-year dependency period.

Only changes that occur within five-year period or as a result of an action that
commenced within this dependency period need to be notified to WIPO.

Ceasing of Effect (3)

Yes, the Office needs to notify WIPO of a ceasing of effect of the basic mark.

A change that affects the protection afforded by the international registration has
occurred on the basic mark.

The amendments to Class 18 and Class 25 on the basic mark affect the protection
afforded by the international registration. Therefore, the Office should notify WIPO
and request the international registration be cancelled to the same extent (i.e., Class
18 and Class 25 should be amended to match the list of goods in the basic mark).

The Class 35 services were not part of the international registration so the Office
does not need to notify WIPO of the changes to Class 35.

Any changes that occur within the five-year dependence period or as a result of an
action that commenced within the five-year dependency period must be notified to
WIPO.

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Workbook: Module 3 Office of Origin
Topic 4: Ceasing of Effect, Transformation, Division or Merger,
Corrections in the International Register
Madrid Training Project

In this case, the changes are a result of an opposition action that commenced within
the five-year dependency period. Even though the amendments are made outside
the five-year dependency period they are a result of an action that commenced
within the five-year dependency period.

Correction (1)

WIPO will only action the request for correction from the Office of origin. It will not
action the correction request from the representative.

An error that is attributable to an Office that affects the rights deriving from an
international registration will be corrected as long as the request is received by
WIPO within nine months.

However, an error that can be attributed to the applicant, holder or their

representative will not be considered by WIPO as an error in the International
Register, and will not be corrected.

Correction (2)

No, WIPO is unable to take corrective action in relation to the request it has
received.

If a correction effects the rights derived from the international registration, the
request must be submitted to WIPO by the Office within nine months from the date of
the publication of the incorrect entry in the International Register.

In this instance, the request for correction is outside of this nine months period and
cannot be processed.

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