Working Group Recommends Changes to Common Regulations

June 29, 2016

The latest session of the Working Group on the Legal Development of the Madrid System for the International Registration of Marks (the Working Group) took place on June 13 to 17, 2016.  Deliberations during this session led the Working Group to recommend changes to the Common Regulations with the aim of benefiting users and Offices of Contracting Parties of the Madrid System, and introducing the recording of division and merger of an international registration. 

Representation before WIPO

Amendments to Rules 3, 25 and 32 would allow WIPO to notify Offices of designated Contracting Parties, and publish in the Gazette, the appointment, change or cancellation of a representative before WIPO.

Further decisions

An amendment to Rule 18ter(4) would make it easier for Offices of designated Contracting Parties to notify WIPO of further decisions concerning international registrations.

Ceasing of effect of the basic mark

The Working Group is proposing two amendments to Rule 22:

  1. Where an Office of origin has issued a “provisional” notification of ceasing of effect, the Office would be required to follow up once a final decision is reached. This proposed amendment aims to increase legal certainty for rights holders as well as ensure accuracy of information in the International Register.
  2. WIPO, when cancelling an international registration following the ceasing of effect of its basic mark, should also have to cancel, to the applicable extent, any international registrations resulting from partial change in ownership.

Communications by Offices of designated Contracting Parties to non-resident holders

A new Rule 23bis would allow Offices that are unable to send, due to their domestic legislation, communications to holders without a local address, to transmit their communications through WIPO.

Division and merger of an international registration

Where a designated Office refuses an international registration for only some goods or services, new Rule 27bis enables the holder to take advantage of division, by opting to turn the accepted or refused part into a new international registration (the divisional registration).  A fee of 177 Swiss francs is proposed for the recording of such division in the International Register.

An opt-out possibility would be available for Contracting Parties whose domestic legislation does not provide for division – or merger – of divisional registrations.  For those Contracting Parties where changes to their legislation would be needed to fully implement division and merger, a delayed application of these amendments to the Common Regulations would be possible.

These recommendations will be submitted to the Madrid Union Assembly for their formal adoption in October 2016, with a proposed date of entry into force of November 1, 2017, with the exception of proposals concerning division, which would take effect on February 1, 2019.