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2021 Amendments to the Madrid Regulations: Mandatory Email and Replacement

February 1, 2021

As of February 1, 2021, amendments to the Regulations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks will enter into force.

(IMAGE: GETTYIMAGES/BET_NOIRE)

Full details of the amendments to the Regulations PDF, title goes here.

Requirement of an email address

As of February 1, it is now mandatory for:

  • applicants, in the international application,
  • new holders, in a request for the recording of a change in ownership, and
  • representatives, appointed as such in the international application, in a request for recording or in a separate communication, to indicate their email address.

WIPO will send all communications to the representative or, if a representative is not appointed, to the applicant or holder by electronic means to the email address on record.

In the case of applicants, holders or representatives who have placed their request before February 1, 2021 and have not indicated an email address, WIPO will continue to send communications by postal services. It will also send communications by postal services when an electronic communication fails to reach its intended recipient.

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 applicants

If the applicant fails to indicate an email address in an international application, this will result in an irregularity, which the applicant may remedy within three months from the date of the notification of the irregularity by WIPO.

If the applicant fails to correct the irregularity within that period, the international application will be considered abandoned. If corrected, this irregularity will not affect the date of the international registration.

The new requirement applies to international applications received by the Office of origin on or after February 1, 2021.

For new holders

If the new holder fails to indicate an email address in a request for the recording of a change in ownership, this will result in an irregularity, which the new holder may correct within three months from the date of the notification of the irregularity by WIPO.

If the new holder fails to remedy to the irregularity within that period, the request will be considered abandoned.

The new requirement applies to requests for recording received by WIPO or by the Office concerned on or after February 1, 2021.

For representatives

Failure to indicate the email address of the representative, appointed as such in the international application, in a request for recording or in a separate communication, will result in an irregular appointment.

WIPO will inform the applicant or holder, the purported representative and the Office concerned, if any, of this fact and will send all relevant communications only to the applicant or holder until a representative is appointed.

The applicant or holder may appoint a representative in a new communication using form MM12.

The new requirement applies to appointments made on or after February 1, 2021, in an international application, request for recording or in a separate communication.

An irregular appointment will not prevent the international registration or change in ownership from being recorded in the International Register.

Principles governing replacement

The replacement feature would allow the holder of an international registration designating a Contracting Party, in which the holder already has a national or regional right, to benefit from the earlier date of protection under certain conditions.

The amendments to Rule 21 of the Regulations now clearly set out in the Rule itself the principles that govern the replacement, more specifically:

  • Holders have to present directly to the Office concerned a request for it to take note of the international registration. The effective date of replacement is the date of the international registration or the subsequent designation.
  • The Offices should accept requests to take note of replacement as from the date of notification of the international registration or the subsequent designation by WIPO.
  • Offices of designated Contracting Parties cannot refuse protection to the mark in an international registration just because there is a prior identical national or regional registration by the same holder. The Office has to acknowledge that both the national or regional registration and the international registration can coexist – until the holder decides to no longer keep the national or regional right in force;
  • Upon receipt of a request for the Office to take note, the Office should determine whether the required conditions have been met.
  • The international registration does not need to have an identical list of goods and services as the national or regional registration. The list in the international registration can be broader in scope or it can be narrower, but there needs to be, at least, some goods and services overlapping, meaning covered by the national or regional registration and the international registration. The names of the overlapping goods and services do not need to be the same, but they must be equivalent.
  • The replacement is deemed to take place when the international registration takes effect in the designated Contracting Party concerned.

For full details of the amendments to the Regulations under the Protocol, please refer to Information Notice No.78/2020 PDF, title goes here.

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  • End of the Brexit transition period
  • Extension of the Protocol to Guernsey
  • Entry into force of the Protocol in Trinidad and Tobago
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