Trade and Service Marks
– Trade Marks Act of June 10, 1983, effective October 1, 1983.
– Ordinance No. 7801 of September 21, 1983 (Regulations for the above Act).
– Ordinance No. 7802 of September 21, 1983 (Trademark Classification).
Membership in International Conventions
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since April 29, 1956.
– Madrid Agreement Concerning the International Registration of Marks, Stockholm Act, since April 29, 1956.
– Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods, Stockholm Act, since April 29, 1956.
– Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, Geneva Act, since April 8, 1961.
– Convention Establishing the World Intellectual Property Organization (WIPO), since March 3, 1975.
– Protocol Relating to the Madrid Agreement, since September 27, 1996.
– Trademark Law Treaty, since September 27, 1996.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since December 31, 2002.
Applicant: individuals and companies.
Foreigners: protection is the same as for nationals. Applicants not residing nor established in Monaco must appoint an agent to represent them.
Types of marks: trade and service marks; collective marks.
Not registrable: (1) words or signs contrary to public order or good morals; (2) words or signs prohibited under the terms of Industrial Property International Conventions which are executory in Monaco; and (3) (a) marks merely consisting of the common designation of the concerned products or services; (b) marks comprising elements which are liable to deceive the public; (c) marks composed exclusively of terms indicating the kind, essential quality, quantity, destination, value, origin, or date of manufacturing of the concerned products or services.
Classification: international. A single application may comprise goods in several classes. An additional fee is due for each class beyond three.
Priority: Convention priority may be claimed.
Filing requirements for an application (to be sent to resident agent):
1. Application signed by applicant or attorney;
2. 2 prints of the mark plus 1 print for every class in addition to the first one;
3. Power of attorney – compulsory (unlegalized).
Electronic filing: not available.
Examination and Granting
Examination: as to form and distinctiveness only. There is no substantial examination. No novelty search is conducted by the Monegasque Office.
Disclaimers: not available.
Letters of consent: no provisions.
Notification of irregularities: within two weeks of filing. Delay to answer notification: eight days from receipt in case of material irregularities; fifteen days if trademark is considered not registrable.
Grant: within one month of filing; a granting certificate is delivered to applicant.
Publication: in the “Journal de Monaco”.
Duration – renewal: ten years from filing date for trademarks filed after October 1, 1983, renewable for like periods; (fifteen years from filing date for trademarks filed before October 1, 1983, renewable).
Use: not provided for; no condition.
Marking: not compulsory.
Opposition: not possible.
Appeal: not possible.
Right of prior user: the first public use confers priority right but in order to claim an exclusive right on the trademark, the trademark must be registered.
Secrecy: no provision.
Letters of consent: the Monegasque Office does not conduct search and opposition is not possible.
Modification of Protection after Registration
Assignment: transfer may be with or without business. It is possible to assign all or part of the goods or services. Documents required for registration of an assignment are: original assignment deed, or certified copy; translation into French if the deed is not in French language; power of attorney without legalization, duly signed by the assignee; the prior tax registration of the original document before the Monegasque Tax Authorities is mandatory in case of assignment or license.
License: provided for. Documents required are the same as for an assignment.
Cancellation proceedings: can be instituted before the court if the mark has been registered in contradiction with the legal provisions.
Validation of invalidated marks: a prior user who has acquiesced for a period of five years after the publication in the Journal of Monaco the use of a later similar or identical trademark is no longer entitled to oppose the use of this trademark.
Infringements and penalties: this action must be filed before the Monegasque Court and damages may be awarded.