The World Intellectual Property Office (“WIPO”) has recently announced upcoming amendments to the regulations which govern the Madrid Protocol which come into effect on the 1 November 2023 and 1 November 2024.
The Madrid Protocol provides an accessible and efficient way of filing a trade mark application, known as an International Application, in multiple jurisdictions at the same time.
When a country is designated as part of an International Application, the local Intellectual Property Office of that country is given an opportunity to examine the designation in accordance with local laws. In the event that the mark is considered objectionable in that country, the local IP Office will issue a provisional refusal and a deadline by which to respond. The time period allocated for responding to a provisional refusal can often be short and can vary significantly across jurisdictions, creating confusion which is frequently amplified by the deadlines not being clearly stated in the notice of provisional refusal.
Considering that a failure to respond to a provisional refusal often leads to a designation being wholly or partially refused, there are clear and costly consequences to missing a response deadline.
In what is sure to be a welcomed update, the upcoming changes will serve to clarify the response deadlines for provisional refusals and introduce a two month or 60 day minimum time limit to respond to a provisional refusal.
Changes coming into force on 01 November 2023
Clarity of response period
- When a provisional refusal is issued by a country designated in an International Application, WIPO will clearly indicate the relevant response period on their cover letter sent to the owner of the International Application accompanying the refusal. Details of the response period will be also published online in the WIPO Gazette.
- An exception to this may occur when electronic transmission of the refusal to the trade mark owner fails and the response period is calculated from when the owner receives the refusal. In this event, WIPO will send the notification of provisional refusal via registered mail without the response period being indicated.
New minimum response periods
- There will be a new minimum period of 2 months or 60 days for the owner of an International Application to respond to a provisional refusal.
- Countries which are party to the Madrid Protocol will have until 1 February 2025 to implement the minimum response requirement, though this can be extended upon request by a country with (currently) no ultimate deadline.
Address of the holder or opponent
- Where a provisional refusal is based on the citation of prior rights and/or an opposition against the designation, the local IP Office of the country concerned is obliged to provide the address of the owner of the prior rights or the opponent, and/or their representative, where possible, although countries will now be exempt from this requirement where this is not possible (e.g. due to availability or local privacy laws).
Failure to effect the amendments
- Where the IP Office of a country does not indicate the start and end dates for responding to a provisional refusal, the refusal will not be accepted. WIPO will notify both the local IP Office concerned and the owner of the International Application. The local IP Office will be given a two-month period by which to amend the refusal in order to retain the original refusal date. Alternatively, the local IP Office may issue a new corrected refusal.
- The same will apply to notifications of provisional refusals that do not abide by the minimum time limit for response from 1 February 2025 (as previously noted, this deadline can be extended upon request by a country and there is currently no ultimate deadline).
Changes coming into force 01 November 2024
Communications from countries not covered under the Regulations
- Countries party to the Madrid Protocol will now be able to request that WIPO transmit correspondence to owners of International Applications on their behalf that are not otherwise covered under the regulations, such as renewal reminders, citation notices and other reminders to meet requirements of a local IP Office. The exact scope of this new provision is yet to be seen.
Non-effect of limitation of goods & services
- When a limitation of a specification is filed through WIPO, individual local IP Offices may declare that such limitation does not apply to that particular designation. When this occurs, this declaration of non-effect must be published by WIPO.
Co-existence of replacement designations
- Historically, in some territories, local IP Offices have restricted both national and international designations existing at the same time. Hence, if the owner of an International Application owns an existing right in a territory that has been designated in that International application, the designation is considered to ‘replace’ that national right.
- In their amendments, WIPO have confirmed that, where an International Application has replaced a national registration, both the designation and the national right it has replaced must be allowed to coexist.
Overall, the amendments to the regulations are positive and should make the management of International Applications easier for trade mark owners and their representatives. The way in which countries party to the Madrid system handle the clarification of deadlines and defective notices is to be seen. As noted above, local IP Offices do not need to implement the minimum time limit requirement until 1 February 2025 and can opt to delay the obligation; as such, it will continue to be best practice to respond to a provisional refusal as soon as possible.