Amendments to Common Regulations Take Effect November 1

October 27, 2017

Mark your calendars – a number of amendments to the Common Regulations under the Madrid Agreement and Protocol will enter into force on November 1, 2017.

(Photo: Gettyimages/BernardaSv)

What you need to know

Although the scope of upcoming amendments covers a wide range of topics, trademark owners and users of the Madrid System will benefit directly from three key changes:

1. Voluntary description of a mark (Rule 9)

Certain countries (such as the United States and India) require applicants to provide a description of their mark in an international trademark application (Form MM2 PDF, MM2). This may be the case where the trademark is represented in “non-standard” or non-Latin characters. Applicants who fail to provide the required description can find themselves dealing with an unexpected provisional refusal.

To help avoid the risk of this type of provisional refusal, you will have the opportunity, starting November 1, to include a voluntary description of your mark in an international application or subsequent designation.

This means that, from November 1, an international application:

  • must include, if required by the Office of origin, the same description of the mark contained in the basic application or registration (i.e., in the “basic mark”); and
  • may also contain any other description of the mark (a “voluntary description”).
Tip! - A voluntary description can only be added in a later subsequent designation if one was not already included in the original international application or a previously recorded subsequent designation.

International application Form MM2 PDF, MM2 and subsequent designationForm MM4 PDF, MM4 have been modified to allow you to include up to two descriptions for your trademark. These updates will be available as of November 1, 2017.

Extract from Form MM2, Section 9 (e).

To find out more about the requirements for the description of a mark in your target market(s), use the Member Profiles Database.

2. Appointment or cancellation of a representative (Rules 3, 25 and 32)

Beginning next month, each time you officially appoint or cancel a representative for your international trademark registration (i.e., each time a representative is recorded in the International Register in connection with your international trademark registration), WIPO will notify the IP Offices in the countries/regions covered by your registration, and publish the appointment or cancellation in the WIPO Gazette.

3. Cancellation of subsequent designation of the United States caused by irregularities with Form MM18 (Rule 24(5)(c))

From November 1, unremedied irregularities involving Form MM18 (Declaration of intention to use the mark in the United States) PDF, MM18 will no longer lead to the abandonment of your subsequent designation request in your other target markets.

Starting next month, if an irregularity that relates only to Form MM18 is found during WIPO’s examination, and this irregularity is not remedied within three months, only the designation of the United States will be cancelled. Any other countries/regions included in your request will no longer be affected.

The changes outlined above, as well as additional amendments aimed at assisting IP Offices of Madrid System members, will be published in an upcoming Information Notice (No. 17/2017).

Remember: If you use the Madrid System to expand the scope of your international registration to cover the United States, you are required to file an additional form—Form MM18 (Declaration of intention to use the mark)—with your subsequent designation request.

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