Significant amendments are on the horizon for the Regulations under the Madrid Protocol which will introduce heightened obligations on national trade mark offices. These modifications are scheduled to take effect from 1st November, 2023, and 1st November, 2024. These changes aim to enhance transparency and efficiency in the international trade mark protection process and provide users of the System with clear time limits in defending their applications.
The Madrid System
The Madrid Agreement and the Madrid Protocol are international treaties that facilitate the protection of trade marks across multiple jurisdictions. Together, the two treaties form the Madrid System for International Registration of Marks administrated by the World Intellectual Property Organization (WIPO). The Madrid System acts as a cost-effective, single application system for individuals and businesses seeking to secure trade mark protection in as many as 130 countries. The Agreement and the Protocol are parallel and independent of one another, possessing several inherent differences including in requirements, time limits and fees. The Agreement, established nearly a century prior to the Protocol, was originally intended to be the foundation of a centralised method of securing international trademark protection, eliminating the need for separate filings in various jurisdictions. In contrast, the Protocol subsequently emerged to enhance the flexibility of the Madrid System, making it more compatible to the national legislation of countries and extending its accessibility to intergovernmental organisations.
The changes that will take effect from 1st November 2023 and 2024 will affect the Regulations under the Madrid Protocol.
Changes to take effect on the 1st of November, 2023
National trade mark offices must indicate the start and end dates of the time limit to respond to provisional refusals.
When issuing provisional refusals, national trade mark offices will be obliged to expressly determine the start and end date of the time limit for the response period.
This requirement is mandatory on national trade mark offices unless the time limit begins on the date on which the WIPO transmits the provisional refusal to the applicant for international registration, or the time limit begins on the date on which the applicant receives it. In such cases, the WIPO will provide the start and end dates in its notification to respond to provisional refusals.
This may be seen as a critical improvement that will enhance transparency and planning, reduce the risk of missing deadlines and simplify communication in the international trade mark protection process for all parties.
By the 1st of February 2025, national trade mark offices are required to provide holders of international registration a minimum of two months to respond to provisional refusal.
Holders of International registration will now have a minimum of two months or 60 days to respond to a refusal.
This will potentially provide trade mark holders with reduced pressure in preparing and submitting their responses. However, unfortunately this rule is not to come into effect until 1st February, 2025 in order to give member states time to amend their domestic legal framework. Member states may delay implementation as there is no ultimate deadline.
Non-compliance with the new notification requirements for provisional refusals is regarded as a failure of the national trade mark office to adhere to these updated standards.
Where a trade mark office does not comply with the above two rules, the WIPO will not accept the provisional refusal and both the national trade mark office and international registration holder will be informed of this.
In such a case, the national trade mark office may send a rectified notification within two months of receiving the defective notification from WIPO or a new corrected provisional refusal.
The clarification of exact deadlines is a positive change for international registration holders and it will be interesting to see how national offices handle it in practice.
National trade mark offices are obliged to notify WIPO of time limits and the way in which they have been calculated.
Such notifications of time limits and calculations will be published by WIPO in the WIPO Gazette of International Marks.
Provisional refusal based on earlier rights must indicate the name of the earlier rights holder and the name of the registered representative.
The same applies to the address of the opponent and their representative. The trade mark offices, however, may be excused from this requirement if providing the address of the earlier rights holder or the opponent, or of their representatives, is not feasible.
Change to take effect on 1st November, 2024
National trade mark offices may ask the WIPO to send communication not covered under the Regulations to the international registration holder.
National trade mark offices can ask the WIPO to send to international registration holders any communication not covered under the Regulations. For example, national trade mark offices can ask the WIPO to send the holder information regarding possible actions, reminders to meet certain requirements, or any other information of a particular interest to the holder. This amendment will enable international registration holders to remain informed about relevant developments and take appropriate action where needed.
These modifications are a positive development, as they establish clear time limits for users of the system to respond to provisional refusals. This approach will benefit international trade mark applicants and their representatives, ensuring a fair and clear process for defending their applications internationally.
