Recently WIPO announced some amendments to the regulations under the Madrid Protocol (Madrid System of International Trademarks). These amendments have entered into force on November 1, 2021. I would like to summarize the most important parts of these amendments.
Changes in the procedure of appointment of representative
Applicants and new holders (transferees) can continue to appoint a representative in new international applications and in requests for the recording of a change in ownership.
According to new amendments, the request for appointment of representative parts have been removed from all “requests of recording” forms (except MM5), namely, subsequent designation (form MM4), subsequent designation resulting from conversion (form MM16), limitation (form MM6), renunciation (form MM7), cancellation (form MM8) and change in the name or address of the holder (form MM9). The appointment of representative can no longer be requested through these types of recording request. However, the holders of international trademarks can appoint a representative only in a separate communication (like filing MM12 form or by using WIPO’s Madrid online services).
Failures of meeting the time limits
If any applicants, holders, their representatives or Offices of contracting parties fail to meet a specific time limit for an action before the International Bureau, the new amendments of regulations will excuse this failure if the subject party can submit to the International Bureau satisfactory evidence of the reason (force majeure situations) for the failure of meeting the time limit (within six months from its expiry).
Continued processing of international applications and requests for recording
According to new amendments to the regulations, applicants and holders can request for continued processing of their files if they miss a specific time limit concerning “payment of the fees due to a classification proposal” and “to remedy an irregularity in a request for the division of an international registration”.
For this purpose, applicants and holders will use form MM20 and pay the continued processing fee and perform the necessary action of the missed time limit simultaneously (within two months from the expiry of the missed time limit).
Partial Replacements of national or regional registrations
According to the amendments to Rule 21(3)(d) of the Regulations, the partial replacement of an earlier national or regional registration or registrations by an international registration is possible. However, the offices of the contracting parties will not be required to apply amended Rule 21(3)(d) before February 1, 2025.
Editorial amendments in Ceasing of Effect regulations
By these amendments, the references to judicial actions and proceedings will be removed from the text of the regulations; but of course these amendments will not result in any substantive change in the implementation of the regulations.
Editorial amendments in Continuation of Effects
The new amendments will remove the amount of the prescribed fee for a request for the continuation of effects from the text of the regulations. However, the amount of the fee for this action will not change and it will be available in item 10 of the Schedule of Fees.
No longer a requirement for the indication of the holder address in Subsequent Designation requests
As the title is self-explanatory, the item concerning the address of the holder will be removed from the form MM4.
In summary...
The amendments are basically related to appointment of a representative by the holders of Int’l trademark registrations, excuses for missing specific time limits, no longer a requirement of holder’s address in subsequent designations and some editorial changes in regulations of Ceasing of Effect and Continuation of Effects.
(Note: You can access the related Madrid information notice here).