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.
Table of contents
- Remedies and Extension of Time Limits (Updated: April 22, 2020)
- Resumption of postal communications from WIPO (Updated: July 20, 2020)
- Electronic submission of forms to WIPO: Signatures (Added: May 15, 2020)
- Resumption of certified documents and extracts services (Updated: July 20, 2020)
- Measures implemented by IP Offices of Madrid Members (Updated: October 30, 2020)
- Madrid System online services to ensure business continuity and responsiveness (Updated: July 20, 2020)
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.
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.
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.
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.
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
- Cuban Industrial Property Office (OCPI)
- Madagascar Office of Industrial Property (OMAPI)
- State Agency on Intellectual Property (AGEPI) of the Republic of Moldova
- Slovenian Intellectual Property Office (SIPO)
- Spanish Patent and Trademark Office (OEPM)
- Directorate of Industrial and Commercial Property Protection (DCIP) of the Ministry of Internal Trade and Consumer Protection of the Syrian Arab Republic
- National Office of Intellectual Property of Viet Nam
Closure of IP offices
- Antigua and Barbuda Intellectual Property and Commerce Office (ABIPCO)
- Superintendence of Industry and Commerce (SIC) of Colombia
- Greek Trademark Office
- Office of the Controller-General of Patents, Designs and Trademarks of India
- Italian Patent and Trademark Office (UIBM)
- Mexican Institute of Industrial Property (IMPI)
- Intellectual Property Office of the Philippines (IPOPHL)
- National Institute for Standardization and Industrial Property (INNORPI) of Tunisia
Extensions, suspensions and other temporary measures
- African Intellectual Property Organization (OAPI)
- Austrian Patent Office (APO)
- Italian Patent and Trademark Office (UIBM)
- Spanish Patent and Trademark Office (OEPM)
- United States Patent and Trademark Office (USPTO)
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
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, 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.