Madrid System Applicants and New Holders: Further Details on the Requirement of an Email Address
March 18, 2021
Following the amendments to the Regulations that entered into force on February 1, 2021, we would like to clarify further the requirement for applicants, in an international application, new holders, in a request for the recording of a change in ownership, and representatives appointed as such in any request, to indicate their email address.
As of February 1, the Regulations require that applicants indicate their own email address in the international application.
Appointment of a representative
Where applicants appoint a representative, they must also indicate the representative’s email address. Applicants cannot indicate the email address of the representative as their own: in short, the email address of the applicant and of the representative must be different.
Where there is more than one applicant, each applicant must indicate their own email address, which must be different from each other, as well as to that of their representative.
Where a representative is appointed, WIPO will continue to send all communications only to the representative, except for a few communications for which the Regulations require that WIPO send a copy to the holder (For further information on these communications, see paragraph 183 of the Guide to the International Registration of Marks under the Madrid Protocol).
WIPO will not include the email address of applicants, holders or representatives on the Madrid System online information services (e.g. Madrid Monitor) nor publish such information in the WIPO Gazette of International Marks.
Failure for the applicant to indicate their own email address
Where the applicant’s email address is missing, or the applicant indicates an email address that is the same as the representative’s, WIPO will issue an irregularity that the applicant (or the representative) must remedy within the indicated time limit.
Failure to do so will result in the international application being abandoned.
Available remedies if the application is abandoned
Should the international application be abandoned, applicants may request that WIPO continues processing the international application, by indicating their email address and paying the continued processing fee. Applicants must request continued processing within two months from the expiry of the time limit to remedy the irregularity.
Exceptionally, applicants may request to be excused for having missed the time to remedy the irregularity due to COVID-19 or other force majeure reason. Applicants must request to be excused within six months from the expiry of the time limit to remedy the irregularity.
The same principle applies for new holders (transferees) of international registrations.
Where the email address of the new holder (transferee) has not been provided in the request for recording of the change in ownership nor remedied within the indicated time limit, the change in ownership will not be recorded.