DL303 Module 4 Topic 2 Workbook Question and Answer 2021 - Tài liệu tham khảo | Đại học Hoa Sen

Questions and Answers Section 1 Question:
Where there is no ground for the Office to refuse protection for any of the goods and services, a
statement of grant of protection under Rule 18ter(1) is sent to WIPO.
Is an Office required to send the statement of grant of protection? If so, when is it appropriate
for the Office to send the notification of a statement of grant of protection under Rule 18ter(1)? Answer:
The Office of a designated Contracting Party is required to send a statement of grant of protection to WIPO when: 
All procedures before the Office (ex off ex icio
amination and opposition) have been
completed before the expiry of the applicable refusal period, and 
There is no ground for the Office to refuse protection for any of the goods and services
listed in the international registration or the subsequent designation.
The Office should send the statement of grant of protection under Rule 18ter(1) to WIPO before
the expiry of the refusal period and as soon as possible after the positive decision on the mark has been taken. Question:
Where WIPO has notified the Office of a designated Contracting Party of a correction in the
International Register, the Office may declare in a notification of provisional refusal to WIPO
that it considers that protection cannot, or can no longer, be granted to the international
registration as corrected under Rule 28(3).
What is the time limit for an Office to notify WIPO of a provisional refusal under Rule 28(3)? Answer:
The time limit for issuing a provisional refusal is the same as for international registrations or
subsequent designations initially notified by WIPO. The time limit is calculated from the date of
notification of the correction by WIPO to the Office concerned (notification date). Question:
Is an Office required to notify WIPO of the interim status of a mark under Rule 18bis? Answer:
No, the issue of a statement on interim status is optional. It is merely voluntary information to
holders and third parties on where the international registration is in the processes before the Office. Section 2 Question:
What are the irregular notifications of provisional refusal? Answer:
There are three kinds of irregular notifications of provisional refusal: 
Irregular provisional refusals, which are not considered as such by WIPO and therefore
cannot be recorded in the International Register nor rectified by the Office concerned, 
Irregular provisional refusals, which are not recorded in the International Register until
they are rectified by the Office concerned, and 
Irregular provisional refusals, which are recorded in the International Register before
inviting the Office concerned to provide the missing information. Question:
In what circumstances will an irregular provisional refusal not be recorded in the International
Register until it has been rectified by the Office of a designated Contracting Party? Answer:
A provisional refusal will not be recorded in the International Register where it does not contain the information concerning: 
The time limit for filing a request for review or an appeal, or a response to an opposition, and 
The authority to which the request has to be addressed. Question:
WIPO has received a notification of provisional refusal, which is incomplete, as it does not
clearly indicate the goods and services that are affected, or not affected. WIPO invites the
Office of the designated Contracting Party to rectify the notification.
Will WIPO record the irregular notification of provisional refusal in the International Register
before it is rectified by the Office? Answer:
Yes, WIPO will still record the notification in the International Register and will forward copies of
the irregular notification and of the invitation sent to the Office to the holder.
If WIPO receives a rectified notification of a provisional refusal from the Office, it will record it in
the International Register and transmit a copy to the holder. Scenario Answers
Irregular Notifications of Provisional Refusal (1) Question 1:
No, the notification does not contain all the required information to meet the requirements of Rule 17. Question 2:
The notification of provisional refusal does not contain:
• A reproduction of a conflicting mark;
• The time limit to request a review or an appeal.
Where a notification of provisional refusal does not contain the information about the time limit
for filing a request for review or an appeal, it cannot be recorded in the International Register
until this information is not provided by the Office concerned. Question 3:
The rectified notification has to be sent to WIPO within two months from the date when WIPO
sent an invitation to rectify the irregular information to the Office.
If the Office does not rectify its notification within the time limit, the provisional refusal will not
be recorded in the International Register. In this case, WIPO will inform the holder and the
Office that the notification of a provisional refusal is not considered as such indicating the reasons therefor.
Irregular Notifications of Provisional Refusal (2)
The notification of provisional refusal is not complete because it does not clearly indicate which
goods and services are affected, or not affected, by the provisional refusal.
Whereas this notification of provisional refusal is considered irregular, WIPO will still record it in
the International Register. At the same time, it will invite the Office to send a rectified
notification within two months to remedy the irregularity. Copies of the irregular notification
and of the invitation sent to the Office will also be transmitted to the holder.
If WIPO receives a rectified notification of a provisional refusal from the Office, it will record it in
the International Register and will transmit its copy to the holder.
Irregular Notifications of Provisional Refusal (3) Question 1:
The notification of provisional refusal is not complete because it does not contain the name and
the address of the opponent. Whereas this notification of provisional refusal is considered
irregular, WIPO will still record it in the International Register. Question 2:
WIPO will nevertheless invite the Office to send a rectified notification within two months to
remedy the irregularity. Copies of the irregular notification and of the invitation sent to the
Office will also be transmitted to the holder.
If WIPO receives a rectified notification of a provisional refusal from the Office, it will record it in
the International Register and will transmit its copy to the holder.
Provisional Refusal following a Correction
Under Rule 28(3), the Office of a designated Contracting Party may issue a new provisional
refusal if it considers that protection cannot be granted to the international registration as corrected.
Time limits for issuing a provisional refusal following a correction remain the same as for
international registrations or subsequent designations initially notified by WIPO, i.e. 12 months,
or 18 months, or more than 18 months for provisional refusals based on an opposition. They are
calculated from the date when the notification of the correction was sent by WIPO to the Office concerned (notification date).
A provisional refusal following a correction can only be based on grounds for refusal applicable
to the international registration as corrected. It cannot include grounds that were forgotten to
be communicated to WIPO in a provisional refusal with regard to the international registration as originally notified.
Therefore, in this case, the Office of a designated Contracting Party can issue a provisional
refusal based on the additional ground applicable to the goods in class 3, which have been
added to the registration following the correction.