COVID-19 Update: Madrid System

October 30, 2020

Originally published March 25, 2020 (edits have been made since)

The World Intellectual Property Organization (WIPO) is continuing operations under the Madrid System for the International Registration of Marks. We are committed to ensuring that any transitional issues experienced by users, intellectual property (IP) offices and any other stakeholders in our processes are kept to a minimum despite these extenuating circumstances. You can monitor WIPO’s operations during the COVID-19 pandemic using the Organization’s online dashboard.

Find out more: WIPO news on COVID-19.

We are mindful that possible disruptions might affect users of the Madrid System due to measures taken against the COVID-19 outbreak. Consequently, we have compiled all relevant information for Madrid users on this page, which will be updated as instructions become available.

Equivalent measures are being taken in the PCT and Hague Systems; for further information please refer to the respective webpages for these registration systems.

Table of contents

Remedies and Extension of Time Limits Available for Madrid System Users

We wish to inform you of the remedies available against a failure to meet a time limit under the Madrid System and to remind you of the automatic extension of time limits in case an intellectual property (IP) office is not open to the public.

Remedies available against failure to meet a time limit for a communication addressed to WIPO

In certain parts of the world, access to mail and delivery services, as well as to electronic communication might be impracticable due to measures taken in connection with the COVID-19 outbreak, such as, for example, lockdown, quarantine or self-isolation.

In such a situation, under Rule 5(1), (2) and (3) of the Regulations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the Regulations), applicants, holders and IP offices who have failed to meet a time limit for a communication addressed to WIPO may be excused if they send that communication within five days after regaining access to mail or delivery services or to electronic communication. In any event, WIPO must receive the communication no later than six months from the date on which the time limit concerned expired.

WIPO will treat favorably any request made under Rule 5 of the Regulations citing COVID-19 related issues and not require that applicants, holders or IP Offices submit evidence in respect thereof.

Rule 5 of the Regulations applies to any communication addressed to WIPO for which there is a time limit under the Regulations or the treaty. For example, a communication:

  • in which an IP Office transmits an international application or a subsequent designation
  • in which an IP Office notifies a provisional refusal
  • or in which an applicant, a holder or an IP Office remedies an irregularity in an international application or in a request for recording.

Rule 5 of the Regulations also covers the time limit to pay any fee to WIPO, including the period of grace to pay the fees for the renewal of an international registration. Accordingly, this will apply to communications addressed to WIPO for acceptable modes of payment under the Madrid System (e.g. instructions to debit from a Current Account at WIPO or a payment by transfer to a WIPO bank or postal account).

Applicants, holders and IP offices are encouraged to take prompt action so that WIPO receives the communication, instruction or payment no later than six months from the expiry of the time limit concerned.

Users can present requests and send communications to WIPO via our online services or Contact Madrid.

For detailed information on these remedies, please refer to Information Notices No. 7/2020 PDF, Information Notice No. 7/2020 and No. 27/2020 PDF, Information Notice No. 27/2020.

Continued processing

Holders or applicants who have failed to meet the time limits specified or referred to in Rules 11(2) and (3), 20bis(2), 24(5)(b), 26(2), 34(3)(c)(iii) and 39(1) of the Regulations1 may request that WIPO continue processing the international application, subsequent designation, payment or request concerned. They may request continued processing without giving any reason or providing any evidence.

Applicants or holders must request continued processing by presenting official form MM20 to WIPO within two months from the date on which the aforementioned time limits expired and meet all the prescribed requirements.

Closure of the IP Office of a Contracting Party

IP Offices of Contracting Parties should inform WIPO that they are not open to the public and indicate the dates on which they will remain closed, either in the same communication or as soon as those dates are known, and specify the date on which they will reopen.

Under Rule 4(4) of the Regulations, a period that expires on a day on which an IP Office is not open to the public would expire on the first subsequent day on which that IP Office reopened. All time limits under the Madrid System that concern that IP Office (e.g., the time limit to send a provisional refusal), including the time limit for the holder to respond to a notification sent by the IP Office (e.g., the time limit to respond to a notification of provisional refusal), would be extended accordingly.

IP offices are strongly encouraged to include information on further flexibilities or remedies available to holders of international registrations in connection with time limits afforded by those IP Offices.

WIPO has made publicly available all relevant information officially received from IP Offices of the Contracting Parties.

For detailed information on these remedies, please refer to Information Notice No. 7/2020 PDF, Information Notice No. 7/2020.

Footnote

1 Time limits to remedy an international application, a request for the recording, amendment or cancellation of the recording of a license, a subsequent designation, a request for the recording of cancellation, limitation or a change to the international registration, pay the second part of an individual fee, or, file a request for continuation of effects in a successor State.

Resumption of postal communications from WIPO

While the COVID-19 outbreak is still developing globally, the situation in Switzerland is stabilizing and postal and public services have resumed. With user satisfaction in mind, WIPO is therefore resuming most of its postal mail-based services.

WIPO has resumed sending out all communications in paper format to users who have not yet provided an email address. In addition, the backlog of all notifications which WIPO could not send to users in paper format due to the postal interruptions since March 2020 has been sent by postal mail.

For users who have provided email addresses, all communications are sent and will continue to be sent electronically as usual. For users who have received certified documents and extracts as well as certificates in electronic format and additionally requested hard copies from WIPO, the hard copies in question are being sent by postal mail.

Communications addressed to applicants, holders or to their representatives and certified documents during the disruption of postal services

Applicants, holders and their representatives are advised to send communications under the Madrid System to WIPO by electronic means. They may present requests to WIPO using the upload function in Madrid Portfolio Manager or through Contact Madrid. Use of our online services is also strongly recommended. More online services will be offered over the coming months.

How to provide an email address to WIPO

In view of the current circumstances, WIPO urges applicants, holders and representatives to provide an email address to receive electronic communications under the Madrid System if they have not already done so. Applicants may indicate an email address in their international applications. Applicants, holders or representatives who have not yet provided an email address may do so through Contact Madrid.

It is now also possible to verify in Madrid Monitor whether an email address is on record at WIPO in respect of any international registration.

For detailed information on temporary measures applicable during the disruption of postal services, please refer to Information Notice No. 11/2020 PDF, Information Notice No. 11/20.

Footnote

2 Recordings concerning representation before the International Bureau (Rule 3(4)(b) and 6 (d) of the Regulations), the possible notification of a provisional refusal under Article 5(2)(c) (Rule 16(2)), the notification of a provisional refusal (Rule 17(4)), a statement of interim status of the mark (Rule 18bis(2)), a statement of final disposition of the status of a mark (Rule 18ter(5)), a notification of invalidation (Rule 19(2)), a restriction of the holder’s right of disposal (Rule 20(3)), licenses (Rule 20bis(3)), replacement of a national or regional registration (Rule 21(2)), cancellation of the international registration at the request of the Office of origin (Rule 22(2)), division or merger of the basic mark (Rule 23(2)), a subsequent designation (Rule 24(8)), cancellation, limitation, renunciation and changes (Rule 27(1)), declaration that a change in ownership has no effect (Rule 27(4)(d) and (e)), declaration that a limitation has no effect (Rule 27(5)(d) and (e)), division (Rule 27bis(4)), merger (Rule 27ter), and a correction in the International Register (Rule 28(2)).

Electronic submission of forms to WIPO: Signatures

WIPO would like to remind Madrid System users that when it is not possible for them to submit forms electronically with the handwritten signature of holders or representatives, signatures can also be printed, typed or stamped; it may be replaced by the affixing of a seal. A handwritten signature is not mandatory. As usual, forms must be submitted using the online Contact Madrid service.

Resumption of certified documents and extracts services

WIPO fully resumed the certified documents, extracts and legalization services on July 13, 2020.

As of July 13, WIPO will deliver the following documents and services:

  • certified copies of certificates of international registration and renewal;
  • attestations; and,
  • detailed certified extracts
  • simple certified extracts
  • legalization of documents; and
  • expedited services.

WIPO will send paper copies of the documents previously delivered in electronic version by email (PDF) between March 31 and July 12, 2020 as soon as possible.

Holders of international registrations with a date later than January 1, 2011, and their representatives may download, free of charge, simple copies of their certificates of international registration and renewal using the Madrid Portfolio Manager.

For detailed information on measures concerning certified documents, extracts and legalization services, please refer to Information Notices No. 12/2020 PDF, Information notice no. 12/2020 and No.52/2020 PDF, Information notice no. 52/2020.

Measures implemented by IP offices of Madrid members

In those cases where WIPO is officially notified of relevant COVID-19 related information by IP Offices, such information will be published in Information Notices and made publicly available on the Madrid Member Profiles Database. You may also use WIPO’s COVID-19 IP Policy Tracker to look up all measures adopted by IP offices in response to the COVID-19 pandemic.

Reopening of IP Offices

  • Intellectual Property Agency of the Republic of Azerbaijan PDF, official communications received from Azerbaijan
  • Cuban Industrial Property Office (OCPI) PDF, official communications received from Cuba
  • Madagascar Office of Industrial Property (OMAPI) PDF, official communications received from Madagscar
  • State Agency on Intellectual Property (AGEPI) of the Republic of Moldova PDF, Reopening of State Agency on Intellectual Property of the Republic of Moldova
  • Slovenian Intellectual Property Office (SIPO) PDF, official communications received from Slovenia
  • Spanish Patent and Trademark Office (OEPM) PDF, official communications received from Spain
  • Directorate of Industrial and Commercial Property Protection (DCIP) of the Ministry of Internal Trade and Consumer Protection of the Syrian Arab Republic PDF, official communications received from Syrian Arab Republic
  • National Office of Intellectual Property of Viet Nam PDF, Reopening of National Office of Intellectual Property of Viet Nam

Closure of IP offices

  • Antigua and Barbuda Intellectual Property and Commerce Office (ABIPCO) PDF, official communications received from ABIPCO
  • Superintendence of Industry and Commerce (SIC) of Colombia PDF, official communications received from SIC
  • Greek Trademark Office PDF, official communications received from Cuba
  • Office of the Controller-General of Patents, Designs and Trademarks of India PDF, official communications received from India
  • Italian Patent and Trademark Office (UIBM) PDF, official communications received from Italy
  • Mexican Institute of Industrial Property (IMPI) PDF, official communications received from IMPI
  • Intellectual Property Office of the Philippines (IPOPHL) PDF, official communications received from Philippines
  • National Institute for Standardization and Industrial Property (INNORPI) of Tunisia PDF, official communications received from INNORPI

Extensions, suspensions and other temporary measures

  • African Intellectual Property Organization (OAPI) PDF, Extensions, suspensions and other temporary measures, OAPI
  • Austrian Patent Office (APO) PDF, Extensions, suspensions and other temporary measures, Austria
  • Italian Patent and Trademark Office (UIBM) PDF, Extensions, suspensions and other temporary measures, Italy
  • Spanish Patent and Trademark Office (OEPM) PDF, Extensions, suspensions and other temporary measures, Spain
  • United States Patent and Trademark Office (USPTO) PDF, Extensions, suspensions and other temporary measures, USA

Users can access detailed  information on the laws and practices of IP offices of the Madrid System members  in our Madrid Member Profiles Database.

Madrid System online services to ensure business continuity and responsiveness

Applicants, holders and representatives are strongly advised to use the Madrid System e-Services or Contact Madrid to perform transactions online, where possible.

Madrid Portfolio Manager

Madrid Portfolio Manager is the most effective tool to manage a portfolio of international registrations under the Madrid System. Users may view their international applications, international registrations in force, as well as those that have lapsed, view their status on Madrid Monitor, consult their history and download electronic copies of all their documents, including their international registration certificates. Users may also renew their international registrations and present subsequent designations and requests for recording for their international registrations in force.

In view of the current circumstances, applicants, holders and their representatives are strongly encouraged to rely on Madrid Portfolio Manager to manage their international registrations.

If you are new to Madrid Portfolio Manager, watch our dedicated webinar to get started.

Other key online services include:

  • Madrid Monitor to track the real-time status of your international trademark registration and related requests (set up e-Alerts to be notified by email automatically), as well to retrieve the electronic version of all notifications. You can now identify registrations with missing email addresses with our new email address status filter.
  • Madrid Member Profiles Database to verify the status of IP Offices of Madrid Members
  • Email Notifications to receive email copies (PDF) of notifications concerning your international application or registration (e.g. provisional refusals, irregularity notices, and more). Those who have not yet provided an email address to receive electronic communications from WIPO may do so through Contact Madrid

Learn more about all the Madrid e-Services designed to support you at each stage of your international trademark’s registration lifecycle.

Questions or comments

Send us your questions, forms or any other request via Contact Madrid.