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Amendments in the international trademark registration procedure

By: Virginia Trinidad

October 31, 2023

The Madrid System is a procedure that allows the holder of a national trademark in a member country to register its trademark in up to 130 countries through the World Intellectual Property Office (WIPO), with a single application and the payment of a fee depending on the number of designated countries.

WIPO is constantly implementing improvements in its procedures and, in this line, on November 1, 2023, the amendments to Rules 17, 18, 32, and 40 of the Regulations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks will enter into force.

The amendments mainly affect the following aspects:

Start and end dates of the time limit to respond to a provisional refusal

Although the registration of an international trademark is achieved through a single application, once the international phase is completed, WIPO will forward the application to the national offices of the designated countries for examination under their laws and to issue their objections or provisional refusals, if any.

Until now, the deadlines for replying to provisional refusals by national offices could be confusing, as many offices do not indicate the deadline for replying and the dates for calculating it.

To avoid this, national offices will be required, when issuing a provisional refusal, to indicate the time limit for replying and the start and end date of the time limit, unless the time limit starts on the date on which WIPO transmits the provisional refusal to the holder. In the latter cases, WIPO will indicate the start and end dates in its notification.

The minimum time limit for responding to a provisional refusal

Another important change to Rule 17 is that WIPO will require offices to have a minimum time limit of two months, or 60 calendar days, to file a response to a provisional refusal.

However, Contracting Parties will have until February 1, 2025, to comply with the new minimum time limit requirement and it may even be extended upon request.

Failure to meet the new requirements concerning notifications of provisional   refusal

Where an Office fails to indicate the start and end dates of the time limit for filing a request for review of a provisional refusal, the WIPO will not consider it and the Office concerned will have to send the rectified notification within two months. If the office sends the new notification within the two-month term, the deadline for the defective notification may be maintained. However, WIPO will urge the offices to allow a new time limit to respond. The above will also apply to notifications of provisional refusal that do not indicate the above-mentioned minimum time limit to the holders, from February 1, 2025, or the later notified date.

Obligation to notify time limits and how to calculate them

WIPO will be obliged to publish the notifications sent to national offices requiring them to indicate the time limit for replying to a provisional refusal.

Address of the holder of earlier rights or the opponent and name of the representative

Where the reason for a refusal is the prior existence of an earlier right, or an opposition, when listing the particulars to be included of the earlier rights or the opponent, the obligation to include (if any) the name of the representative of the earlier right or the opponent is introduced as a new feature. However, the obligation to indicate the holder’s address or representative of the earlier right or the opponent is suppressed, if it is not possible, for example, for data protection reasons.

The Madrid Union Assembly also approved changes to Rules 21, 23bis, and 32 of the Regulations that will enter into force on November 1, 2024, affecting communications from national trademark offices not covered by the Regulations and the publication in the Gazette of the fact that a certain limitation has no effect.

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