DL303 Module 4 Topic 3 Workbook Question and Answer 2021 - Tài liệu tham khảo | Đại học Hoa Sen

Questions and Answers Section 1 Question:
A Contracting Party is designated in an international registration under the Madrid System. The
holder of the international registration has also national trademark rights in that Contracting
Party. The marks in the international and national registrations are identical and registered for the same goods and services.
The international registration was granted protection in the designated Contracting Party, and
the holder now wants the Office to take note of the replacement under Article 4bis.
Should the holder send their request to WIPO or directly to the Office of the designated Contracting Party? Answer:
The holder should send their request directly to the Office of the designated Contracting Party. Question:
What are the requirements under Article 4bis of the Madrid Protocol that must be met before
the Office of a designated Contracting Party can take note of the replacement of a national or
regional registration by an international registration? Answer:
The requirements for replacement are: 
Both the national or regional registration and the international registration must be in the name of the same holder, 
Protection of the international registration extends to the Contracting Party concerned, 
The goods and services listed in the national or regional registration are also listed in the
international registration in respect of that Contracting Party. Where all the goods and
services listed in the national/regional registration or registrations are not listed in the
international registration, the scope of replacement shall be limited to the overlapping
goods and services listed in the international registration (total or partial replacement), and 
The extension of the international registration to the Contracting Party concerned must
take effect after the date of the national or regional registration. Section 2 Question:
The Office of a designated Contracting Party has been notified of a partial cancellation of the
international registration at the request of the holder. The notification removes goods in classes
25 and 28 from the international registration concerned. The Office then receives a request
from the holder’s representative asking to transform the cancelled part of the international
registration into a national application.
Should the Office satisfy the request? Answer:
No, the Office should not satisfy the request, because transformation may only take place
where the international registration has been cancelled following the ceasing of effect of the
basic mark. If the holder has voluntarily requested cancellation of their international
registration, transformation is not an available option. Question:
The application, on which an international registration is based, has been subject to a partial
cancellation in the Office of origin during the five-year dependency period. At the request of the
Office of origin, the international registration has been partially cancelled. The holder wants to
transform the international registration with regard to the goods and services removed from the
International Register into a national application.
Should the holder send their request to WIPO or directly to the Office of a Contracting Party? Answer:
The holder should send their request directly to the Office of the Contracting Party concerned. Section 3 Question:
The Office of a designated Contracting Party, which is notified by WIPO of a change in
ownership affecting that Contracting Party, wishes to declare that the change in ownership has no effect in its territory.
What is the time limit for the Office to send this declaration to WIPO? Answer:
The declaration must be sent before the expiry of 18 months from the date on which the
notification of the change in ownership was sent to the Office concerned. Question:
The Office of a designated Contracting Party has been notified of a limitation of the list of goods
and services affecting that Contracting Party. The Office considers that the limitation has no
effect, because the recorded limitation is rather an expansion of the applicable list of goods and services.
What course of action can the Office take? Answer:
The Office of a designated Contracting Party may declare that the limitation has no effect in that Contracting Party. Question:
The Office of a designated Contracting Party wishes to declare that the recording of a given
license for an international registration has no effect in their territory.
What action will WIPO take upon receiving the declaration? Answer:
Upon receiving the declaration, WIPO will: 
Record it in the International Register, 
Notify the party (holder or Office) that requested the recording of the license, and 
Publish relevant information in the WIPO Gazette of International Marks. Scenario Answers Replacement (1) Question 1:
WIPO will return the request to the holder. This is because the holder must make the request
directly to the Office where the national or regional registration is recorded.
Once an Office takes note in its Register that the national or regional registration has been
replaced by the international registration, it must notify WIPO. Once WIPO receives this
notification from the Office, it will record the notification in the International Register and inform the holder. Question 2:
No, the conditions for replacement have not been met.
The protection of the international registration does not yet extend to New Zealand. New
Zealand has only sent an interim status notification that their ex off e
icio xamination has been
completed. The conditions for replacement will be met once New Zealand sends a statement of
grant of protection under Rule 18ter. Replacement (2) Question 1:
Yes, the conditions for replacement have been met.
Both the national registration and international registration are: 
in the name of the same holder, 
the protection of the international registration extends to India, 
all of the services of the national registration are listed in the international registration, and 
the extension of the international registration to India takes effect after the date of the national registration.
It is important to note that that the list of goods and/or services in the international registration
does not need to be identical to national registration. In fact, the list in international registration
can be broader (as is the case here). The most important is that the broader list does contain all
of the goods and/or services of the national registration.
If the list in the international registration is narrower than the national registration, then the
Office concerned may accept partial replacement. It would then be up to the holder to decide if
they wish to let the (broader) national right later lapse and continue only with the narrower international registration. Question 2:
The notification of replacement from the designated Contracting Party must contain the following information: 
the international registration number, 
the filing date and number, the registration date and number and the priority date (if
any) of the national or regional registration which has been replaced, 
where the replacement concerns only some of the goods and services listed in the
international registration, those goods and services, and 
information relating to any other rights acquired by virtue of the national or regional registration. Limitations
The Offices are not required to send any specific communication to WIPO with regard to the
limitation of the list of goods and services affecting the Contracting Parties concerned.
At the same time, the Offices may declare to WIPO that the limitation has no effect in their
territories. It can be where the Office of a designated Contracting Party considers that the
recorded limitation is rather an expansion of the applicable list of goods and services.
A declaration from the Office of a designated Contracting Party that a limitation has no effect in
its territory must be sent to WIPO before the expiry of 18 months from the date on which the
notification of the limitation was sent to the Office concerned.
Declaration that a Given Licence Has No Effect Question 1:
Under Rule 20bis(5) of the Common Regulations, the declaration must be sent to WIPO. WIPO
will record the declaration in the International Register, publish it in the Gazette and notify the
party (holder or Office) that presented the request to record the licence. Question 2:
The declaration must include the following information: 
The reasons for which the recording of the given licence has no effect, 
If the declaration does not affect all of the goods and services to which the licence
relates, the goods and services which are affected, or the goods and services which are
not affected by the declaration, 
The corresponding essential provisions of the law, and 
Whether the declaration may be subject to review or appeal. Question 3:
The declaration must be sent to WIPO within 18 months from the date of notification by WIPO of the recorded licence.