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Madrid Agreement and Madrid Protocol

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Latest News: 01-11-2017 (Newsletter Issue 1/17)
Safeguard against Non-Delivery of E-Communication
WIPO announced amendments to Rule 5 of the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement. It is to provide a safeguard against non-delivery of an electronic communication.

The new paragraph (3) of Rule 5 states, that failure of an interested party to meet a time limit for a communication addressed to the International Bureau that was sent electronically, would be excused where the interested party submits satisfactory evidence showing that the time limit was not met because of a failure in the electronic communication with the International Bureau or a failure that affects the locality of the interested party due to extraordinary circumstances beyond the control of the interested party. It should be noted that the latter applies to outages affecting a high number of users, such as all users in a large area of a city or country, rather than localized problems within a particular building. In the above-mentioned cases, a new communication should be effected no later than five days after the electronic communication service is resumed.

Furthermore, the Hague Portfolio Manager, which is available on the WIPO website,
allows an applicant to reply electronically to an irregularity notice issued by the International Bureau against an international application. The Portfolio Manager will be extended to also cover other types of actions, such as requests for the recording of a change in ownership or a change in the name or address of the holder, to cover the whole lifespan of the international registration. The proposed amendments to Rule 5 would also provide a safeguard against non-delivery of an electronic communication in the case of non-availability of electronic communications services.

The amendments to Rule 5 of the Common Regulations will come into effect on January 1, 2017.

For further information, please see here

Source: www.wipo.int


Latest News: 11-22-2016 (Newsletter Issue 21/16)
Changes to Class Headings and Goods/Services
WIPO will apply the 11th edition of the Nice Classification of Goods and Services for the Purposes of the Registration of Marks (NCL) as reported before. The latest edition brings with it a number of significant additions and amendments to class headings and list of goods and services:

Amendments to class headings
The class headings affected are those numbered 3, 6, 10, 14, 16, 17, 18, 20, 21, 22, 24, 26, 28, 31 and 45. In addition to these fifteen classes, Explanatory Notes for classes 5, 11, 29, 30, 35, 42 and 44 were also modified.

The most notable changes are involving Class 21. Although a proposal to transfer table cutlery, kitchen knives and other kitchen utensils for cutting from Class 8 to Class 21 was not approved, all serving utensils will be grouped under Class 21 beginning January 1, 2017.

Amendments to list of goods and services
Changes to the alphabetical list of terms under the NCL included the additions of several new services, including unlocking of mobile phones under Class 42, as well as dog walking, kimono dressing assistance, and conducting religious ceremonies under Class 45.

Further, eyelash brushes (under Class 21), foam toe separators for use in pedicures (Class 21), and herbal extracts for cosmetic purposes (Class 3) joining existing entries for false eyelashes (Class 3), manicure sets (Class 8), and hair extensions (Class 26) have been included.

Culinary entrepreneurs will rejoice at the addition of several new goods under Classes 29 and 30, including guacamole, onion rings, falafel, bibimbap, dulce de leche, almond, peanut and coconut milks, as well as nut- and chocolate-based spreads. For the more adventurous foodie, escamoles (prepared edible ant larvae) and edible insects have also been added (Classes 29 and 31), courtesy of proposals by representatives from Mexico and France.

Brand owners in the health sector can benefit from changes and additions to several classes, including body composition monitors (Class 10), and new entries for both herbal extracts and phytotherapy preparations for medical purposes (Class 5).

WIPO will apply the 11th edition of the NCL to all applications and international registrations received by an Office of Origin under the Madrid System on or after January 1, 2017. However, WIPO will not reclassify the list of goods and services under international registrations affected by renewals, subsequent designations or other changes filed after December 31, 2016.

Source: www.wipo.int


Latest News: 11-22-2016 (Newsletter Issue 21/16)
DIU to Local Office Required for IR Designating MZ
The Office of Mozambique has informed WIPO that the holder of a mark must submit a further Declaration of Intention to Use (DIU) directly to the Office of Mozambique by using the prescribed form in Portuguese and paying the required fee. Such declaration must be:

- submitted by the holder’s authorized representative, who must be domiciled in Mozambique;
- presented within five years from the date the Office of Mozambique is notified of the international registration or the subsequent designation.

For further information, please see here

Source: www.wipo.int


Latest News: 10-26-2016 (Newsletter Issue 19/16)
11th Edition of Nice Classification Soon in Force
WIPO informed that a new edition of the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification) will enter into force on January 1, 2017.

The 11th edition of the Nice Classification will be applied to all applications for international registration that are received by the Office of origin on or after January 1, 2017.

WIPO will not reclassify, in accordance with the eleventh edition of the Nice Classification, the list of goods and services of an international registration that is the subject, after December 31, 2016, of a renewal, subsequent designation or any other change affecting the said list.

Further, WIPO will insert the abbreviation “NCL(11-2017)” next to the list of goods and services in the notifications sent to designated Contracting Parties, registration certificates and publications.

The new edition will be available here once it is in force.

Source: www.wipo.int


Latest News: 10-12-2016 (Newsletter Issue 18/16)
Accession to Madrid System by Brunei
On October 6, 2016, Brunei Darussalam deposited with the Director General of WIPO its instrument of accession to the Madrid Protocol for the International Registration of Marks.

Its accession makes Brunei the 98th member of the Madrid System. The Protocol will enter into force with respect to Brunei Darussalam on January 6, 2017.

From early next year, local brand owners in Brunei Darussalam can begin using the Madrid System to protect their marks in the 114 territories of its 98 members, by filing a single international application in one language and paying one set of fees in a single currency.

Source: www.wipo.int


Latest News: 10-12-2016 (Newsletter Issue 18/16)
Opposition Procedure Against IR in Mexico in Force
The Mexican Institute of Industrial Property (IMPI) informed WIPO that the new opposition procedure, which entered into force on August 30, 2016, also applies to international registrations designating this country and subsequent designations of Mexico notified to IMPI as from that date.

IMPI will republish the international registrations and subsequent designations under the respective national filing numbers in its online Industrial Property Gazette within a maximum period of 10 working days upon receipt of such notification. The opposition must be filed to IMPI directly within a non-extendable period of one month, drafted in Spanish and subject to payment of a fee.

Within a maxiumum period of 10 working days after expiry of this deadline, IMPI will publish a list of opposed marks. Documents relating to the opposition will be available online at the IMPI records consultation service. Holders of opposed international registrations or their local representatives may respond to the opposition within a non-extendable period of one month thereafter. The response must be drafted in Spanish, filed directly with IMPI and bear an address in Mexico for the purpose of receiving notifications. Failure to respond is not construed by IMPI as tacit acceptance of the claims made by the opposing party. The opposition does not suspend the IMPI procedure for determining whether it should grant protection or prolong the time limit for reaching that decision.

Upon expiry of the opposition period and of the response period, where appropriate, IMPI will conduct the substantive examination, during which it may consider the claims made by the opposing party and the holder during the opposition proceedings, as well as any other material deemed relevant to the examination.

Upon completion of the substantive examination, IMPI will send a statement of grant of protection or an ex officio notification of provisional refusal, as appropriate, to WIPO, and also communicate its decision to the opposing party. WIPO will transmit a copy of the notification or statement to the holder of the international registration.

For further information, please check here

Source: www.wipo.int


01-11-2017 (Newsletter Issue 1/17)
Accession to Hague Agreement on IR of Industrial Designs by Cambodia
WIPO notifies the deposit by Cambodia, on November 25, 2016, of its instrument of accession to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs.

The Geneva Act will enter into force on February 25, 2017.

For further information, please see here and here

Source: www.wipo.int


12-06-2016 (Newsletter Issue 22/16)
Non-Working Days in 2017
The Madrid Registry will be closed to the public the following days:

- New Year: Monday, January 2, 2017
- Easter: Friday, April 14, 2017 and Monday, April 17, 2017
- Ascension: Thursday, May 25, 2017
- Whitsun: Monday, June 5, 2017
- Jeûne Genevois: Thursday, September 7, 2017
- Christmas: Monday, December 25, 2017
- New Year: Friday, December 29, 2017

Source: www.wipo.int


11-09-2016 (Newsletter Issue 20/16)
Two New Offices in Africa
WIPO informed that its member states agreed to expand a network of overseas offices that promote WIPO services and cooperation around the world.

The first two new offices will be opened in Algeria and Nigeria.

Source: www.wipo.int


11-09-2016 (Newsletter Issue 20/16)
Accession to WIPO Convention by the Cook Islands in Force
The Cook Islands has become a party to the Convention Establishing the World Intellectual Property Organization (WIPO Convention).

The accession to WIPO is separate from the Cook Islands being party to these agreements. It is an encouraging step towards establishing a regulatory framework in line with international standards.

Source: www.wipo.int


09-28-2016 (Newsletter Issue 17/16)
Filing of International Trademark Applications in UK by Email
The UK Intellectual Property Office (UKIPO) announced that it is now possible to file international trademark applications electronically as from September 26, 2016, by using the following email address Internationaltrademarks@ipo.gov.uk

The Office encourages applicants to use the UKIPO version of the MM2. The MM17/MM18 will be accepted if filed with the MM2. No other forms or correspondence should be emailed to the above mentioned address.

An updated version of the UKIPO’s form MM2 'Application to register an International trade mark' is available here

Source: www.gov.uk


09-13-2016 (Newsletter Issue 16/16)
Accession to WIPO Convention by the Cook Islands
WIPO notifies the deposit by the Government of the Cook Islands, on July 27, 2016, of its instrument of accession to the Convention Establishing the Word Intellectual Property Organization (WIPO), signed at Stockholm in 1967.

The said Convention will enter into force, with respect to the Cook Islands, on October 27, 2016.

Source: www.wipo.int


07-25-2016 (Newsletter Issue 14/16)
New and Revised Model Forms for Offices Available
WIPO informs that there are now 15 model forms for Offices of the Contracting Parties of the Madrid System available here

These model forms reflect the essential applicable requirements under the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement (the “Common Regulations”) and their purpose is to assist Offices notifying decisions to the International Bureau on the scope of protection of an international registration.

The existing model forms have been simplified to be more user-friendly for the Offices. In addition, the following new model forms are now available:

̶- Model Forms 3A, to notify a total provisional refusal, and 3B, to notify a partial provisional refusal, replace former model form 3;
̶- Model Form 10, to notify the invalidation of an international registration;
̶- Model Forms 11 and 12 to, correspondingly, declare that a change in ownership has no effect and to notify any final decision relating to that declaration;
̶- Model Forms 13 and 14 to, correspondingly, declare that a limitation has no effect and to notify any final decision relating to that declaration.

Offices are encouraged to use these model forms, adjusting them to their individual requirements, when sending communications to the International Bureau. By using these model forms, Offices will be providing all the information that is required for the proper recording in the International Register of the contents of their communication.

Source: www.wipo.int


06-28-2016 (Newsletter Issue 12/16)
Accession to Hague Agreement by North Korea
WIPO has announced the accession to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, adopted at Geneva (the "Geneva Act") by the Democratic People's Republic of Korea on June 13, 2016.

The Geneva Act will enter into force on September 13, 2016.

Source: www.wipo.int


06-28-2016 (Newsletter Issue 12/16)
Ratification to Singapore Treaty by North Korea
WIPO announced the ratification to the Singapore Treaty by North Korea.

In conformity with Article 28(3), the said Treaty will enter into force on September 13, 2016.

Source: www.wipo.int


06-14-2016 (Newsletter Issue 11/16)
Expedited Establishment of Attestation or of Certified Copy
As from June 6, 2016, users of the Madrid System will be able to request the expedited establishment of an attestation or of a certified copy from the International Register.

WIPO will produce the document within five working days following the receipt of such a request and upon payment of 100 Swiss francs per document in addition to the corresponding fees.

For further information, please click here.

Source: www.wipo.int


05-31-2016 (Newsletter Issue 10/16)
New Madrid Monitor Search Tool
WIPO informs about its new Madrid Monitor search tool which supports the searching for information on all international marks recorded under the Madrid System. The tool integrates in one application functionalities and information currently accessible through ROMARIN, the WIPO Gazette of International Marks, Madrid E-Alert and Real-Time Status.

Madrid Monitor’s intuitive search interface allows accessing all information available in the register regarding marks. There is a simple keyword search and an easy to use advanced search. It is also possible to gain a real-time status of an application through the Madrid Monitor, as well as e-alerts whenever any changes are made in relation to an IRN.

WIPO invites to test the Beta version of the Madrid Monitor and appreciates feedback to improve the tool.

For more information, please check here

Source: www.wipo.int


05-02-2016 (Newsletter Issue 8/16)
Accession to Singapore Treaty by South Korea
WIPO has announced the accession to the Singapore Treaty on the Law of Trademarks by the Republic of Korea on April 1, 2016. The Treaty will enter into force on July 1, 2016.

Source: www.wipo.int


05-02-2016 (Newsletter Issue 8/16)
Scope of IR Protection on French Overseas Territories
WIPO announced that the National Industrial Property Institute of France (INPI) has provided information to WIPO on the French Overseas Territories which are covered by a designation of France or a designation of the European Union in an application for international registration or in a designation subsequent to the international registration.

For further information, please see the public note here

Source: www.wipo.int


04-20-2016 (Newsletter Issue 7/16)
Faroe Islands Now Covered
The Faroe Islands are now part of the Madrid System with effect from April 13, 2016.

On January 13, 2016, WIPO had notified the deposit by the Government of the Kingdom of Denmark of a declaration that withdrew the declaration mde upon ratification of the Madrid Protocol to the effect that "the Protocol should not apply to the Faroe Islands".

Source: www.wipo.int


04-20-2016 (Newsletter Issue 7/16)
Common Regulations of Madrid Agreement Amended
WIPO announced amendments to the Common Regulations under the Madrid Agreement concerning the International Registration of Marks and the Protocol Relating to that Agreement (the Common Regulations) that entered into force on April 1, 2016.

The Amendments to Rule 5 of the Common Regulations concern the irregularities in postal and delivery services and in communications sent electronically.

For further information, please check the notice here

Source: www.wipo.int


04-05-2016 (Newsletter Issue 6/16)
New Version of Madrid Goods and Services Manager Now Available
WIPO informed that a new version of the Madrid Goods and Services Manager is now available.

A number of functions, as well as new content, have been introduced to enhance the Madrid Goods and Services Manager and make it easier to use.

The following topics are new:
- Explanatory Notes in all languages: Explanatory Notes help to establish the correct classification of terms that are not found in the Alphabetical List of Goods and Services. These Explanatory Notes are now available in all 17 languages of the Madrid Goods and Services Manager.
- Similar group codes: Some countries have developed coding systems that facilitate the search of similar groups of goods or services through the use of codes known as “similar group codes”. These may facilitate similarity searches before an international application is filed. They are also used in some IP Offices during the examination process. You can now access national “similar group codes” for the IP Offices of Japan (JPO) and of the Republic of Korea (KIPO), which were the first IP Offices to communicate these codes to WIPO.
- Search by Nice Classification indication basic number: A “basic number” is attributed to each indication from the Alphabetical List of the Nice Classification. In the new version of the tool, a basic number can be used to search Nice indications and will generate all synonymous indications associated with the basic number.
- Participating countries: The number of Madrid System Contracting Parties participating in the Madrid Goods and Services Manager continues to grow and includes 26 Contracting Parties as of January 2016.
- Updated support: Help and FAQ modules have been updated in all current languages to provide better support and reflect recent improvements to the tool.

Source: www.wipo.int


04-05-2016 (Newsletter Issue 6/16)
Common Regulations under Madrid Agreement and Protocol Amended
WIPO announced on its website that the amendments to Rules 5 and 36 to the Common Regulations has entered into force on April 1, 2016:

Rule 5: Irregularities in Postal and Delivery Services and in Communications Sent Electronically:
- This rule will apply when an interested party (i.e., the applicant, the holder, the representative or an Office) fails to meet a time limit for a communication sent to the International Bureau (IB) electronically (e.g., e-mail, fax, electronic form).
- Late receipt of such a communication will be excused if the interested party submits satisfactory evidence showing that the time limit was missed due to a failure in the electronic communication to the IB or to a failure affecting the locality of the interested party due to extraordinary circumstances.
- In this case, a new communication should be sent to the IB no later than five days after the electronic services are resumed.

Rule 36: Exemption From Fees:
- The recording of a change of the address for correspondence can be requested by the applicant, holder or representative, free of charge, by sending a letter or email.

For further information, please refer to Information Notice No. 17/2016.

Source: www.wipo.int


04-05-2016 (Newsletter Issue 6/16)
Accession to Singapore Treaty by Japan
WIPO has announced the accession to the Singapore Treaty on the Law of Trademarks by Japan on March 11, 2016. The Treaty will enter into force on June 11, 2016.

The said instrument contained the following declaration:
"Pursuant to Article 29(1) of the Treaty, the provisions of Article 3(1)(a) and 1(b), Article 5(1) and (4), Article 7(2), Article 8(5), Article 11 and 13(1)(a), (1)(c), (2), (4) and (5) shall not apply to defensive marks".

Source: www.wipo.int


03-16-2016 (Newsletter Issue 5/16)
Request Correction of Recording - New Form
WIPO announced that a new official form (MM21) is now available for users requesting the correction of a recording in the International Register under the Madrid System. The form can be accessed here.

Although not compulsory, users are encouraged to take advantage of this new form as it facilitates providing all the information that the International Bureau requires to process their requests. The form may be presented by the holder, representative of the holder or an Office of a Contracting Party.

Under the Madrid System
– errors attributable to the International Bureau may be corrected if a request is presented by the holder or an Office, at any time;
– errors attributable to an Office, the correction of which would affect the rights deriving from the international registration, may be corrected if a request, presented by that Office, is received by the International Bureau within nine months from the date of the publication of the recording in the International Register that is the subject of the correction; and,
– errors attributable to the applicant, holder or representative may not be corrected.

For any question, please contact the Madrid Customer Service at intreg.mail@wipo.int or +41 (0)22 338 86 86.

Source: www.wipo.int


03-02-2016 (Newsletter Issue 4/16)
Chance to Clarify the Scope of Protection of IR
The Office of the European Union (OHIM) has informed the International Bureau of the World Intellectual Property Organization (WIPO) that holders of international registrations designating Europe receive the chance to clarify the scope of protection of their goods and services.

OHIM has issued a Communication on Article 28(8) of the amending EU trade mark Regulation, which will enter into force on March 23, 2016. Article 28(8) of Council Regulation No. 207/2009 (EUTMR) allows for a transitional period during which proprietors of European Union Trade Marks, applied for before June 22, 2012 and registered for the entire heading of a Nice class, may declare that their intention on the date of filing had been to seek protection for goods and services beyond those covered by the literal meaning of that class heading.

Declarations may only be made for European Union Trade Marks that were filed before June 22, 2012 and continue to be registered for the entire heading of at least one Nice class.

In accordance with Articles 145 and 151 EUTMR, the provisions of Article 28(8) EUTMR, i.e., the possibility of submitting declarations, also extend to protected international registrations and subsequent designations designating the European Union, before June 22, 2012 and continue to be in force for the entire class heading of at least one Nice class.

Declarations for international registrations and subsequent designations designating the European Union must be submitted to OHIM, under the modalities specified in Communication No 1/2016 of February 8, 2016 of the President of OHIM.

Declarations must be submitted directly to OHIM between March 23, 2016 and September 24, 2016, both dates included. These declarations are not to be sent to WIPO.

Where OHIM finds that declarations comply with the requirements of Article 28(8) EUTMR and the Communication, it will send to WIPO, for each concerned international registration, a statement under Rule 18ter(4), which is applicable by analogy, of the Common Regulations Under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement.

WIPO will record and publish the pertinent information in the International Register and inform the holders of the concerned international registrations.

For further information please check here

Source: www.wipo.int


03-01-2016 (Newsletter Issue 4/16)
Declaration of Use for IR Designating Cambodia Required
Holders of international registrations containing a designation of Cambodia must file declarations of actual use of the mark with evidence to that effect. Such declarations must be filed directly with the Office of Cambodia, as prescribed by the applicable laws and regulations and upon payment of a fee:

- Within a one-year period, following five years counted from the date on which protection was granted in Cambodia, as indicated in the statement sent by the Office of Cambodia to the International Bureau of WIPO under either Rule 18ter(1) or (2) of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement; and
- Within a one-year period, following five years counted from the date of each renewal of the international registration.

Alternately, a declaration of non-use of the mark, stating the valid grounds, under the laws of Cambodia, can be filed with the Office of Cambodia. This declaration must be submitted by the holder’s authorized representative with a local address or by a legal representative in Cambodia. A local address is required for purposes of notification.

Failure to file declarations of either actual use or non-use of the mark will prompt the Office of Cambodia to declare, ex officio, that the mark is no longer protected.

For further information, please see here

Source: www.wipo.int


03-01-2016 (Newsletter Issue 4/16)
Courtesy Email Reminders by USPTO
The United States Patent and Trademark Office (USPTO) informed WIPO that holders of international registrations designating the United States of America receive courtesy email reminders of the requirement to file affidavits of continued use in commerce by the USPTO.

To avoid invalidation of protection under the law of the US, holders of US registrations as well as holders of international registrations containing a designation of the US are required to periodically affirm, in an affidavit, the continued use in commerce (or claim excusable non-use) of a mark with respect to the goods and services for which the mark has been granted protection. This affidavit must be filed directly with the USPTO.

As of January 2015, holders of US registrations and of international registrations designating the US receive a courtesy email from the USPTO reminding them of the upcoming deadline to file an affidavit of continued use in commerce if the holders have:
- a “live” registration on the date the reminder is sent,
- provided a valid email address to the USPTO, and
- authorised email communication with the USPTO.

These reminders are sent on the start date of the period to file the affidavit of continued use to the email addresses on record with the USPTO. The reminders identify the mark and indicate, inter alia, the deadline to file the said affidavit, as well as the grace period deadline and the filing fee per class. No reminders are sent by regular mail and no follow-up emails are attempted for undeliverable emails. Any failure by the USPTO to provide the courtesy email reminders or any non-receipt of such reminders will not excuse a holder who fails to meet its statutory obligations.

Holders are encouraged to use the USPTO Trademark Application Electronic System (TEAS) Change of Correspondence Address Form to indicate, update, or delete the email addresses to which the USPTO can send courtesy email reminders. Holders need to enter the corresponding US application serial or US registration number which can be found in the statement of grant of protection. Holders cannot enter the international registration number.  

For further information on the requirement to file an affidavit of continued use (or excusable non-use), please check here and here

For more details on the information by the USPTO, please check here

Source: www.wipo.int


02-17-2016 (Newsletter Issue 3/16)
Madrid Protocol to Cover Faroe Islands
WIPO has notified the deposit by the Government of the Kingdom of Denmark, on January 13, 2016, of a declaration according to which it withdraws the one made upon ratification of the Madrid Protocol "to the effect that until further notice the Protocol should not apply to the Faroe Islands".

The Faroe Islands will be part of the Madrid System with effect from April 13, 2016.

Source: www.wipo.int


02-02-2016 (Newsletter Issue 2/16)
Nice Classification Tenth Edition, 2016 Version Implemented
A new version of the tenth edition of the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification) has entered into force on January 1, 2016. This new version will be available on the website of the World Intellectual Property Organization (WIPO), at the following address: www.wipo.int/classifications/nice/en/

The 2016 version of the tenth edition of the Nice Classification includes a number of changes with regard to the previous version. The purpose of the present notice is to inform the Offices of the Contracting Parties of the Madrid Union, as well as applicants and holders, of the practice that is followed by WIPO for the examination of applications for international registration that are presented during the transition to the new version of the tenth edition of the Nice Classification.

WIPO will apply the 2016 version of the tenth edition of the Nice Classification to all applications for international registration that are received by the Office of origin on or after January 1, 2016.

In conformity with its standing practice, WIPO will not reclassify, in accordance with the 2016 version of the tenth edition of the Nice Classification, the list of goods and services of an international registration that is the subject, after December 31, 2015, of a renewal, subsequent designation or any other change affecting the said list.

Moreover, in accordance with the recommendation of the Committee of Experts of the Nice Union, made at its twenty-fifth session in April 2015, and for all international registrations for which the list of goods and services has been classified according to the 2016 version of the tenth edition of the Nice Classification, WIPO will insert the abbreviation “NCL(10-2016)” next to the list of goods and services in the notifications sent to designated Contracting Parties, registration certificates and publications.

Finally, the Madrid Goods & Services Manager (MGS) (available at: www.wipo.int/mgs/) will be updated to reflect the changes introduced by the latest version of the Nice Classification.

Source: www.wipo.int


02-02-2016 (Newsletter Issue 2/16)
Non-Working Days in 2016
WIPO informs about the non-working days in 2016 in addition to Saturdays and Sundays.

The following days are not open for the public:
- New Year: Friday, January 1, 2016
- Easter: Friday, March 25, 2016 and Monday, March 28, 2016
- Ascension: Thursday, May 5, 2016
- Whitsun: Monday, May 16, 2016
- Jeûne Genevois: Thursday, September 8, 2016
- Christmas: Monday, December 26, 2016
- New Year: Friday, December 30, 2016

Source: www.wipo.int


01-20-2016 (Newsletter Issue 1/16)
Accession to the Singapore Treaty by Ireland
WIPO notifies the deposit by the Government of Ireland on December 21, 2015, of its instrument of accession to the Singapore Treaty on the Law of Trademarks, adopted at Singapore on March 27, 2006.

The Treaty will enter into force on March 21, 2016.

Source: www.wipo.int


01-20-2016 (Newsletter Issue 1/16)
Accession to Hague Agreement by Turkmenistan
On December 16, 2015, the Government of Turkmenistan deposited with WIPO its instrument of accession to the Geneva (1999) Act of the Hague Agreement Concerning the International Registration of Industrial Designs. A list of the Contracting Parties to the Hague Agreement is available here

The Act will enter into force on March 16, 2016.

Source: www.wipo.int


01-20-2016 (Newsletter Issue 1/16)
Accession to Madrid Protocol by Lao People's Democratic Republic
On December 7, 2015, the Lao People's Democratic Republic (Lao PDR) acceded to the Madrid Protocol for the International Registration of Marks, following the deposit of its instrument of accession with the Director General of the World Intellectual Property Organization (WIPO).

The Protocol will enter into force on March 7, 2016.

Source: www.wipo.int


01-20-2016 (Newsletter Issue 1/16)
Recording of Licenses in International Register no Effect in Gambia
WIPO informed that the recording of licenses in the International Register has no effect in Gambia.

A license relating to an international registration of a mark needs to be recorded in the national Register of the Office of Gambia to have effect. The formalities required for such recording must be completed directly with the Office of Gambia.

The notification entered into force on December 18, 2015.

For more information, please see here

Source: www.wipo.int


12-08-2015 (Newsletter Issue 19/15)
Accession to Singapore Treaty by OAPI
On November 13, 2015, the Director General of WIPO has notified the deposit by the African Intellectual Property Organization (OAPI) of its instrument of accession to the Singapore Treaty on the Law of Trademarks. The said instrument contained the following declarations:

In accordance with Article 29 of the Singapore Treaty:
- "The provisions of Article 6 of the said Treaty will not be applicable to OAPI. According to the said provisions, where goods or services belonging to several classes of the Nice Classification have been included in one and the same application, such an application shall result in one and the same registration.
- The provisions of Article 19(2) of the Treaty will not be applicable to OAPI. OAPI requires the recordal of a license as a condition for any right that the license may have under the provisions of the Bangui Agreement, to join infringement proceedings initiated by the holder or to obtain, by way of such proceedings, damages resulting from an infringement of the mark which is the subject of the license".

The Treaty will enter into force on February 13, 2016.

Source: www.wipo.int


11-25-2015 (Newsletter Issue 18/15)
Updated ROMARIN Database Launched
WIPO announced that a new version of the ROMARIN database is now available, introducing a number of functional enhancements that allow customers to more easily search and find detailed information on marks recorded under WIPO’s Madrid System.

Functional improvements:
- Expanded range of data can be displayed in search results
- History of an international registration in relation to a selected designated Contracting Party can be displayed and printed
- New search option available based on the expiry date of an international registration
- Display now optimized for use on handheld devices

These improvements have been introduced in response to customer feedback and the continued commitment to improving user experience on E-Services.

Source: www.wipo.int


11-25-2015 (Newsletter Issue 18/15)
Termination of Hague Agreement by Ivory Coast
WIPO notified that the Government of the Republic of Ivory Coast deposited, on October 27, 2015, an instrument of acceptance of the termination of the London Act of the Hague Agreement concerning the International Deposit of Industrial Designs of November 6, 1925, as revised at London on June 2, 1934.

A separate notification will be made on the coming into effect of the termination when the required number of acceptances is reached.

Source: www.wipo.int


11-11-2015 (Newsletter Issue 17/15)
Single Form for All Madrid System Applications
On October 31, 2015, the Madrid Protocol entered into force in Algeria, which was the last remaining Contracting Party of the Madrid Union to be a member of the Madrid Agreement only. As a result, the Protocol is now in force in every Contracting Party of the Madrid Union and a single application form is to be used for all Madrid System applications.

For practical purposes, the Madrid System now operates as a single treaty system, introducing a number of practical changes that streamline the process for the registration and management of marks.

Chief among these changes is the requirement to file all international applications using the MM2 International Application form. Forms MM1 and MM3 are no longer applicable and will not be available on the Madrid website. Any international application filed using forms MM1 or MM3 on or after October 31, 2015 will be considered irregular in accordance with the Common Regulations.

For more information please check here

Source: www.wipo.int


11-11-2015 (Newsletter Issue 17/15)
Declaration on Extension of Oppositions by Zimbabwe
On October 7, 2015, Zimbabwe has deposited the declaration to extend the period within which it must reject international trade mark oppositions if they are not to be automatically allowed. The period will extend from 12 to 18 months under Article 5(2) of the Protocol.

Further, Zimbabwe wants in connection with each international registration in which it is mentioned and in connection with the renewal of any such international registration an individual fee instead of a share in the revenue produced by the supplementary and complementary fees.

The said declaration will enter into force on January 7, 2016.

Source: www.wipo.int


11-11-2015 (Newsletter Issue 17/15)
Declaration of Intention to Use when Designating Mozambique
Mozambique has notified WIPO that it requires a declaration of intention to use the mark when designating Mozambique under the Madrid Protocol concerning the international registration.

Amendments to the footnote of the official forms will be modified to indicate that the applicant or holder declares that he has the intention that the mark will be used by him or with his consent in Mozambique in connection with the goods and services identified in the international application or subsequent designation concerned.

The notification made by Mozambique entered into force three months after its receipt by the Director General of WIPO, namely on November 5, 2015.

Source: www.wipo.int


10-28-2015 (Newsletter Issue 16/15)
Accession to Madrid Protocol by Gambia
On September 18, 2015, the Director General of the WIPO has notified the deposit by the Government of the Republic of the Gambia of its instrument of accession to the Madrid Protocol. It will enter into force on December 18, 2015.

Source: www.wipo.int


10-28-2015 (Newsletter Issue 16/15)
Practical Consequences of Algeria’s Accession to Madrid Protocol
On July 31, 2015, Algeria deposited its instrument of accession to the Protocol Relating to the Madrid Agreement. The Protocol will enter into force on October 31, 2015.

WIPO has published a notice on the practical consequences of Algeria’s Accession to Madrid Protocol which can be seen here.

Source: www.wipo.int


10-28-2015 (Newsletter Issue 16/15)
Coverage of UK Dependent Territories
The Intellectual Property Office of the United Kingdom (IPO) has provided information to WIPO on the coverage of a designation of the United Kingdom through the Madrid Protocol with respect to the British Overseas Territories and the British Crown Dependencies.

For further information, please access the notice directly here. A list of British Overseas Territories and British Crown Dependencies can be found at the end of the notice.

Source: www.wipo.int


09-02-2015 (Newsletter Issue 13/15)
Algeria Joins the Madrid Protocol
Algeria has acceded to the Madrid Protocol for the International Registration of Marks, transforming the Madrid System into a one treaty system.

On July 31, 2015, the Government of the People’s Democratic Republic of Algeria deposited with the Director General of WIPO its instrument of accession to the Madrid Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. The Protocol will enter into force with respect to Algeria on October 31, 2015.

Signatory to the Madrid Agreement since July 5, 1972, the country was the last of the 95 members of the Madrid System which was not party the Protocol.
This represents a milestone for the Madrid System and its users. From now on, all international registrations of marks will be exclusively governed by the Madrid Protocol. As a result, the filing and management of international registrations will be simplified for users.

Brand owners in Algeria will also benefit from this accession, gaining full access to the territories covered by the Madrid Protocol for international trademark protection.

Source: www.wipo.int


07-14-2015 (Newsletter Issue 11/15)
Changes to Payment for IR designating Ghana
The Government of Ghana has withdrawn the notification that its individual fee is payable in two parts, made under Rule 34(3)(a) of the Common Regulations. It has also modified the amounts of that individual fee.

Therefore, as from August 10, 2015, the amounts of the individual fee in respect of Ghana will be payable in full and no longer in two parts.

Those amounts will be:
- 379 Swiss francs per class of goods or services, when designating Ghana in an international application or subsequently;
- 370 Swiss francs per class of goods or services, when renewing an international registration in which Ghana has been designated.

For further information, please refer to here

Source: www.wipo.int


06-16-2015 (Newsletter Issue 9/15)
Beta Version of ROMARIN Database
WIPO has announced that they are redesigning the ROMARIN database, which is used to search detailed information on all marks recorded under WIPO’s Madrid System, to better respond to the needs of users. A beta version of the ROMARIN database is now ready to get tested until June 30, 2015.

Functional improvements are
- A new field for Expiration Date added to the basic search function;
- Up to 13 types of data can be presented on the results screen (e.g. designated Contracting Parties, description of the mark, basic application number and Nice Classification);
- Filtering by country is now more compact and easier to navigate.

To access the beta version of the ROMARIN database, please click here. Feedback is appreciated via the contact form here

The current version of the ROMARIN database will remain available whilst the beta version is being tested.

Source: www.wipo.int


06-16-2015 (Newsletter Issue 9/15)
New terms and conditions for electronic communication
WIPO has published new terms and conditions for electronic communication
between the Office and applicants and holders of international registrations. The new terms and conditions will replace the previous ones.

For more information on the new terms and conditions please click here

Source: www.wipo.int


05-27-2015 (Newsletter Issue 8/15)
Geneva Act of the Lisbon Agreement Adopted
A Diplomatic Conference was held in Geneva from May 11 to 21, 2015 and adopted the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications.

The Geneva Act allows the international registration of geographical indications (GIs), in addition to appellations of origin, and permits the accession to the Lisbon Agreement by certain intergovernmental organizations.

The Geneva Act of the Lisbon Agreement further develops the legal framework of the Lisbon System, which helps promote many globally marketed products such as, for example, Scotch whiskey, Darjeeling tea and Café de Colombia.

Other changes affect fee provisions, scope of protection, protection against becoming generic, and safeguards for respect of prior trademark rights.

It will enter into force three months after five eligible parties have deposited their instruments of ratification or accession.

For more information, please click here

Source: www.wipo.int


05-13-2015 (Newsletter Issue 7/15)
No Recordings of Licenses in International Register Accepted by Cambodia
The Government of Cambodia has notified the Director General of the World Intellectual Property Organization (WIPO) that the recording of licenses in the International Register shall have no effect in Cambodia.

Consequently, a license relating to an international registration of a mark which has been granted with respect to Cambodia shall, in order to have effect in that Contracting Party, be recorded in the national Register of the Office of Cambodia. The formalities required for such recording must be completed directly with the Office of Cambodia and according to the conditions laid down by the legislation of that Contracting Party.

The notification made by the Government of Cambodia under Rule 20bis(6)(b) of the Common Regulations shall enter into force on the date of entry into force of the Madrid Protocol with respect to Cambodia, namely, June 5, 2015.

Source: www.wipo.int


05-13-2015 (Newsletter Issue 7/15)
New version of Madrid E-Renewal
A new version of the Madrid E-Renewal is now available at the following address: https://webaccess.wipo.int/trademarks_ren/?lang=en

The system allows users to renew an international Registration and calculates the fees due for the renewal of an international registration in accordance with Rule 30 of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement.

Further, E-Renewal indicates the number of classes that remain in the international registration. It also indicates the number of classes taken into account to calculate and charge the amount for Contracting Parties that have declared for individual fee, when this is different from the number of classes that remain in the international registration. This information is available both in the payment confirmation screen and in the ensuing confirmation e-mail.

E-Renewal may be used to renew an international registration in respect of Contracting Parties for which a final decision refusing protection for all goods and services has been recorded. In this case, E-Renewal will charge the amount of the complementary fee or, where the Contracting Party has declared for individual fee, it will calculate and charge the corresponding amount taking into account all the goods and services for which that Contracting Party remains designated.

E-Renewal cannot be used to renew an international registration for all goods and services, including those that are not protected, in respect of Contracting Parties for which a final decision partially refusing protection has been recorded. In this particular case, users must send a renewal request in paper by submitting form MM11.

Finally, international registrations that have been cancelled (due to ceasing of effect or at the request of the holder) or for which the period of grace has expired cannot be renewed, either through E-renewal or by submitting a request in paper. Moreover, international registrations cannot be renewed in respect of Contracting Parties for which invalidation for all goods and services has been recorded.

For further information, please click here

Source: www.wipo.int


03-31-2015 (Newsletter Issue 5/15)
Accession to the Madrid Protocol by Cambodia
On March 5, 2015, the Government of Cambodia deposited with the Director General of the World Intellectual Property Organization (WIPO) its instrument of accession to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“the Madrid Protocol”).

The Madrid Protocol will enter into force, with respect to Cambodia, on June 5, 2015.

The said instrument of accession was accompanied by the declaration referred to in Article 5 (2)(b) and (c) of the Madrid Protocol, whereby the time limit of one year to notify a provisional refusal of protection is replaced by 18 months, and a provisional refusal resulting from an opposition may be notified after the expiry of the 18-month time limit.

Source: www.wipo.int


03-31-2015 (Newsletter Issue 5/15)
New version of the WIPO Gazette
WIPO announced that a new version of the WIPO Gazette of International Marks is now available at the following address: http://www.wipo.int/madrid/gazette/

The new version provides an improved user experience and features an entirely new search by function. It allows users to search for the publication of recordings:
- by international registration number (IRN);
- by name of the holder or verbal elements of the mark;
- within a given year;
- by publication date. Users can conduct combined searches to narrow the results.

The new function allows “wild card” searches, which can be conducted by replacing one character with a question mark within a string of characters. For instance, a search for the string T?P in the verbal elements of the mark will return a table listing the publication of recordings in which the mark contains a three-letter word or acronym starting with the letter T and ending with the letter P.

The search by function also provides for truncation searches, which can be conducted by inserting an asterisk within a string of characters. For instance, a search for the string PARA* in the verbal elements of the mark will return a table listing the publication of recordings in which the mark contains any word or acronym starting with those letters.

The results of searches are presented in a table, sorted by IRN, in ascending order. These results can be downloaded in Microsoft Excel format.

Users can directly access the ROMARIN online database by clicking the IRN link in the pop-up window.

Source: www.wipo.int


03-31-2015 (Newsletter Issue 5/15)
Fees and Licence Recordal for IR Designating OAPI
1. As provided for by Rule 34(2)(b) of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement (“the Common Regulations”), the African Intellectual Property Organization (OAPI) has notified the Director General of the World Intellectual Property Organization (WIPO) that it accepts to collect and forward to the International Bureau of WIPO the fees due under the Madrid Protocol and the Common Regulations.

Pursuant to Rule 35(1) of the Common Regulations, any fees paid to the International Bureau of WIPO should be in Swiss currency, irrespective of the fact that OAPI may have collected such fees in another currency.

2. As provided for by Rule 20bis(6)(b) of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement (“the Common Regulations”), the African Intellectual Property Organization (OAPI) has notified the Director General of the World Intellectual Property Organization (WIPO) that the recording of licenses in the International Register shall have no effect in the territory of its member States.

Consequently, a license relating to an international registration of a mark which has been granted with respect to OAPI shall, in order to have effect in that Contracting Party, be recorded in the Register of OAPI. The formalities required for such recording must be completed directly with OAPI and according to the conditions laid down by the legislation of that Contracting Party.

3. Both notifications entered into force on the date of entry into force of the Madrid Protocol with respect to OAPI, namely, March 5, 2015.

Source: www.wipo.int


03-18-2015 (Newsletter Issue 4/15)
Japan Accedes to Geneva Act of the Hague Agreement
On February 13, 2015, the government of Japan deposited its instrument of accession to the Geneva Act of the Hague Agreement concerning the International Registration of Industrial Designs with the Director General of the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland.

The Act will come into effect for Japan on May 13, 2015, three months after the deposit.

Source: www.jpo.go.jp


02-25-2015 (Newsletter Issue 3/15)
USA and Japan Join International Design System
The United States of America and Japan have joined the Hague System for the International Registration of Industrial Designs.

The Hague System offers a cost-effective, efficient means of registration of industrial designs in a large number of countries, providing design owners broad geographical protection of their designs with a minimum of formality and expense. Through a single application filed with WIPO, either electronically or on paper, a design can be registered in the 64 countries and intergovernmental organizations that are members of the Hague Agreement, which is underpinned by a series of international treaties.

For more information, please see here

Source: www.wipo.int


01-13-2015 (Newsletter Issue 1/15)
Amendments to Common Regulations
The Assembly of the Madrid Union adopted a new rule and other amendments to the Common Regulations which entered into force on January 1, 2015.

The new Rule 5bis of the Common Regulations will provide for continued processing where an applicant or holder has missed certain time limits.

The amendments to Rule 30 of the Common Regulations changes the manner in which an international registration is renewed. Further, the amendments to Rule 31 will provide for the sending of a notification to the holder and to his representative, if any, where an international registration has not been renewed or where it has not been renewed in respect of a designated Contracting Party.

For more information, please check here

Source: www.wipo.int


01-13-2015 (Newsletter Issue 1/15)
Accession to the Madrid Protocol by Zimbabwe
On December 11, 2014, the Government of Zimbabwe deposited with the Director General of the World Intellectual Property Organization (WIPO) its instrument of accession to the Protocol relating to the Madrid Agreement Concerning the International Registration of Marks (“the Madrid Protocol”). The Madrid Protocol will enter into force, with respect to Zimbabwe, on March 11, 2015.

Source: www.wipo.int


12-09-2014 (Newsletter Issue 19/14)
Opposition Procedure for International Registrations Designating Turkey Explained
The International Bureau of the World Intellectual Property Organization (WIPO) published on its website explanatory information from the Turkish Patent Institute (TPI) about the opposition procedure related to international registrations designating Turkey. Further, in the document will be explained how to obtain information on the status of the trademark proceeding in Turkey.

To access the information, please click here

Source: www.wipo.int


12-09-2014 (Newsletter Issue 19/14)
New Version of Nice Classification into Force Soon
The World Intellectual Property Organization (WIPO) has announced the new version of the tenth edition of the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification). The new version will enter into force on 1 January 2015 and can be accessed under www.wipo.int/classifications/nice/en.

The 2015 version of the tenth edition of the Nice Classification includes a number of changes with regard to the previous version. The purpose of the present notice is to inform the Offices of the Contracting Parties of the Madrid Union, as well as applicants and holders, of the practice which is followed by the International Bureau of WIPO for the examination of applications for international registration that are presented during the transition to the new version of the tenth edition of the Nice Classification.

The International Bureau of WIPO will apply the 2015 version of the tenth edition of the Nice Classification to all applications for international registration that are received by the Office of origin on or after 1 January 2015.

In conformity with its standing practice, the International Bureau of WIPO will not reclassify, in accordance with the 2015 version of the tenth edition of the Nice Classification, the list of goods and services of an international registration that is the subject, after 31 December 2014, of a renewal, subsequent designation or any other change affecting the said list.

Moreover, in accordance with the recommendation of the Committee of Experts of the Nice Union, made at its twenty-fourth session in April 2014, and for all international registrations for which the list of goods and services has been classified according to the 2015 version of the tenth edition of the Nice Classification, the International Bureau of WIPO will insert the abbreviation “NCL(10 2015)” next to the list of goods and services in the notifications sent to designated Contracting Parties, registration certificates and publications.

Finally, the Madrid Goods & Services Manager (available at www.wipo.int/mgs/) will be updated to reflect the changes introduced by the latest version of the Nice Classification.

Source: www.wipo.int


11-25-2014 (Newsletter Issue 18/14)
Change in Examination of International Registrations Designating EU
The International Bureau of the World Intellectual Property Organization (WIPO) would like to bring to the attention of applicants, holders, Offices of the Contracting Parties and users of the Madrid System at large, that, as from 1 October 2014, the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM) examines the indication of goods and services as listed in international registrations where the European Union has been designated (either in an international application or subsequent designation), for vague terms.

This change brings the OHIM practice in line with that of the European Union national and regional Intellectual Property Offices, as previously outlined in the Common Communication on the implementation of “IP Translator” dated 20 February 2014.

The change in practice affects all international registrations, where the European Union has been designated (either in an international application or subsequent designation), notified by the International Bureau of WIPO to OHIM on or after 1 October 2014.

As a result, if a term, used in a list of goods and services covered by an international registration where the European Union has been designated (either in an international application or subsequent designation), is considered by OHIM as being too broad or too vague, and lacking clarity and precision, OHIM may issue a notification of provisional refusal with respect to the said registration.

A list of 11 terms considered by OHIM as being too broad or too vague, and lacking clarity and precision, is reproduced in the Annex.

For further information on this change in practice, please contact directly OHIM or consult the Guidelines for Examination in OHIM on Community Trade Marks, Part M, International Marks.

Source: www.wipo.int


11-11-2014 (Newsletter Issue 17/14)
Accession to the Convention by Niue
The Director General of WIPO presents his compliments to the Minister for Foreign Affairs and has the honor to notify the deposit by the Government of Niue, on 8 October 2014, of its instrument of accession to the Convention Establishing the World Intellectual Property Organization (WIPO Convention), signed at Stockholm on July 14, 1967, and as amended on September 28, 1979.

The said Convention will enter into force, with respect to Niue, on 8 January 2015.

Source: www.wipo.int


11-10-2014 (Newsletter Issue 17/14)
Guide on IP Challenges Faced by Festival Organizers
WIPO published a practical guide on how best to use intellectual property for organisers of arts and cultural festivals.

The publication titled Intellectual Property and Folk, Arts and Cultural Festivals – A Practical Guide focusses on the main IP challenges faced by festival organizers and outlines some practical elements of an effective IP management strategy.

Source: www.ip-watch.org


11-09-2014 (Newsletter Issue 17/14)
Tajikistan Ratifies Singapore Treaty
On 26 September 2014, Tajikistan deposited its instrument of ratification of the Singapore Treaty on the Law of Trademarks with the World Intellectual Property Organization (WIPO).

The said treaty will enter into force with respect to the Republic of Tajikistan on 26 December 2014.

Source: www.wipo.int


10-28-2014 (Newsletter Issue 16/14)
Lithuania Accepts Recordings of Licenses in International Register
The State Patent Bureau of the Republic of Lithuania (SPB) notified the World Intellectual Property Organization of its intension to withdraw, with immediate effect, its earlier notification under Rule 20bis(6)(b) of the Common Regulations under the Madrid Agreement and Protocol.

As from 2 September 2014, the recording in the International Register of a license relating to an international registration of a mark has effect in Lithuania. Such recording has the same effect as if it had been made directly in the national Register of the State Patent Bureau of the Republic of Lithuania.

Source: www.wipo.int


07-22-2014 (Newsletter Issue 12/14)
E-Subsequent Designation Now Available
With e-subsequent designation, WIPO announced a new web based tool which can be found on https://www3.wipo.int/osd/. The new web based tool is based upon a smart form approach, where most mandatory data elements are provided automatically by the system.

All that is needed is to enter an international registration number, select the Contracting Party or Parties subject of the subsequent designation, indicate the goods and services (all or some only of the goods and services covered by the international registration) and pay the fee online, by credit card or through a WIPO current account.

Users will receive immediately an acknowledgement of receipt, through a confirmation screen which is followed by an e mail.

It is still necessary to use the paper form MM4, Designation Subsequent to the International Registration, where the holder or his representative
- wishes to include certain miscellaneous indications that were not provided in the international application, such as the legal nature of an entity or a translation of the mark;
- requests that the subsequent designation be recorded only after the recording of a renewal or a change, such as a partial cancellation;
- wants, at the same time, to appoint a representative or to subscribe to e communications;
– must present the subsequent designation through the Office of the Contracting Party of the holder (where Algeria is subsequently designated or is the Office of the Contracting Party of the holder).

Moreover, where the subsequent designation results from conversion, it is still necessary to use the paper form MM16 Subsequent Designation Resulting from Conversion (European Union).

For more information, please click here

Source: www.wipo.int


07-04-2014 (Newsletter Issue 11/14)
Madrid Goods and Services Manager (MGS) Updated
WIPO has announced that its Goods and Services Manager (MGS) has been updated. Some of the updates are:

- Launch of the Korean interface bringing the number of languages interfaces to 16.
- “Check acceptance by WIPO“ function was expanded with numerous indications of goods and services.
- “Check acceptance by designated Contracting Party (dCP)” function has been extended to a total of 19 participating Contracting Parties.

To receive further information, please click here

Source: www.wipo.int


05-16-2014 (Newsletter Issue 8/14)
Image-Based Search for TMs Launched
WIPO has launched a image-search function for its Global Brand Database, adding a new feature that allows users to upload an image to search for visually similar trademark and other brand-information records.

Source: www.wipo.int


04-01-2014 (Newsletter Issue 6/14)
New Publication/Revised Guide/Official Forms Changed
WIPO has announced on its website a new publication. It targets small and medium sized enterprises and users without much knowledge of the Madrid system. This publication is divided in two parts: Part I gives a brief description of the Madrid system and its main features, while part II has more practical focus on how to complete specific forms available for use in the Madrid system. The publication will also be available in French, Spanish, Arabic, Chinese and Russian.

WIPO has published a slightly revised version of the Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol. The text has been updated to reflect recent amendments to the Common Regulations. The Guide is available in English, French and Spanish. Arabic, Chinese and Russian versions will follow.

Further, the official Madrid forms (MM forms) have been revised to render them more user-friendly and to provide more accurate information. The most important amendments concern information and contact details of the Madrid Customer Service (on the cover page of the forms), and the election of e-mail for purposes of communicating with the International Bureau of WIPO: where the applicant/holder or his representative provides an e-mail address in the forms, any further correspondence from the International Bureau related to the international application and the resulting international registration will be sent only electronically.
Additional to that the form for requesting the recording of a limitation in an international registration (MM6) has been simplified by providing that any class not limited in item 5 of the form will remain as recorded. The revised MM forms are available in English, French and Spanish.

Source: www.wipo.int


01-21-2014 (Newsletter Issue 1/14)
Delay of Gazette Publication Reduced
From the first issue of the WIPO Gazette of International Marks in 2014 (No. 1/2014), the Office is reducing the delay of publication by seven days. A consequence of this will be that the date of publication will be identical to the date of notification to designated Contracting Parties.

The Gazette is published once a week on Thursdays. The Gazette contains all relevant data concerning new international registrations, renewals, subsequent designations, changes and other entries affecting international registrations, as well as information of general interest related to the Madrid system.

The electronic version of the Gazette is available here

Source: www.wipo.int


01-21-2014 (Newsletter Issue 1/14)
Locarno Classification Update
WIPO announced on its website that a new edition of the international classification used for the purposes of the registration of industrial designs (Locarno Classification) will enter into force on 1 January 2014. The tenth edition of the Locarno Classification includes a number of changes with regard to the previous edition. Reclassification of the products is not necessary.
The tenth edition of the Locarno Classification can be accessed here

Source: www.wipo.int


12-17-2013 (Newsletter Issue 18/13)
New Online Licensing System
WIPO announced a new online licensing system for intergovernmental organisations on 6 December 2013. The new system will make it easier for intergovernmental organisations to bring their published material to a wider audience in order to distribute their studies, reports, data sets and other material online. Once applied, the licenses give the public permission to republish that content.

For more information please click here

Source: www.wipo.int


12-17-2013 (Newsletter Issue 18/13)
Israel Joined Global TM Database
The Israeli Patent Office has joined the Global Trademark Database of the World Intellectual Property Organization (WIPO).

Since the beginning of November 2013 the Israeli Patent Office has begun transferring to the International Bureau information regarding trademarks registrations and applications that have been filed in Israel (directly or via the Madrid Protocol). The International database allows applicants who wish to file trademarks in several countries to perform an easy and quick trademark search, free of charge.

Source: Luzzatto & Luzzatto Patent Attorneys, Israel


12-03-2013 (Newsletter Issue 17/13)
Non Working Days in 2014
WIPO has announced the non working days in 2014 in addition to Saturdays and Sundays on its website. The days on which WIPO is not scheduled to be open to the public during 2014 can be seen here

Source: www.wipo.int


10-01-2013 (Newsletter Issue 14/13)
Information Required when Effecting Payment
The World Intellectual Property Organization (WIPO) informs about their payment instructions in order to allocate the payment to its corresponding request.

The following information are required when effecting payment:
- name and address of the natural person or the legal entity making the payment;
- official form related to the request for which payment is being made (e.g. MM2);
- international registration or, where applicable, basic registration or application number;
- mark or, where applicable, verbal elements of the mark;
- name of the holder, where different from the natural person or the legal entity making the payment.

Where payment concerns more than one request, users are asked to send a communication to the following address: income.mark-dm@wipo.int, with a list of all the said requests and the amount being paid for each of them.

A payment order form is available. The payment needs to include all additional bank charges. An acknowledgement of receipt will be sent out within 10 days from such receipt. If the aforementioned acknowledgement is not received within the said period, WIPO needs to be informed via income.mark-dm@wipo.int.

Information on payment methods can be found here

Source: www.wipo.int


09-03-2013 (Newsletter Issue 12/13)
New Special Services
The International Bureau of the World Intellectual Property Organization (WIPO) provides new special services to better serve the needs of users of the Madrid system. These new special services are available upon request and against the payment of a fee.

As from August 1, 2013, users of the Madrid system may request the following new special services:
(a) Issuance of a certified copy of a certificate of an international registration and of a certificate of its renewal.
(b) Expedited establishment of a certified extract from the International Register.
(c) Legalization of a certified extract from the International Register

Users of the Madrid system can request these new special services to the Client Records Unit of the Madrid Operations Service by sending a detailed communication, indicating the new special service requested and the international registration number to which the request relates, to the following address: madrid.records@wipo.int.

For further information, please check here

Source: www.wipo.int


07-01-2013 (Newsletter Issue 10/13)
Syria's Denunciation of Madrid Agreement in Force
The Government of the Syrian Arab Republic has cancelled its association with Madrid Agreement for the international registration of marks. The denunciation became effective on 29 June 2013. Syrian continues to be a party to the Protocol Relating to the Madrid Agreement concerning the International Registration of Marks (“the Madrid Protocol”) and therefore remains a member of the Madrid Union.

As a result, as from 29 June 2013, the Syrian Arab Republic may no longer be designated under the Madrid Agreement and countries party only to this treaty may no longer be designated under the Madrid Agreement where the Office of the Syrian Arab Republic is either the Office of origin or that of the Contracting Party of the holder. The form corresponding to applications for international registrations governed exclusively by the Madrid Agreement (Form MM1) will be updated accordingly.

International marks registered up to 29 June 2013, containing a designation of the Syrian Arab Republic, which is a designation governed by the Madrid Agreement, and not refused within the period of one year provided for in Article 5 of the Madrid Agreement, will continue, throughout the period of international protection, to enjoy the same protection in the Syrian Arab Republic as if they had been deposited there directly.

For more information, please check here

Source: www.wipo.int


07-01-2013 (Newsletter Issue 10/13)
IR Designations to PH require Declaration of Use
The Philippines has notified the WIPO that holders of international registrations containing a designation of the Philippines must file declarations of actual use of the mark with evidence to that effect.

Such declarations must be filed directly with the Office of the Philippines, as prescribed by the applicable laws and regulations and upon payment of a fee:
- Within a three year period, counted from the date of the international registration or the date of the recordal of the subsequent designation of the Philippines. A one-time six month extension of the three-year period to file the aforementioned declaration may be requested, provided that such request is filed before the expiry of the said period;
- Within a one-year period, following five years counted from the date on which protection was granted in the Philippines, as indicated in the statement sent by the Office of the Philippines to the International Bureau under either Rule 18ter(1) or (2) of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement;
- Within a one-year period, following five years counted from the date of each renewal of the international registration.

Alternately, within the aforementioned periods, holders may file, directly with the Office of the Philippines, in the manner prescribed by the applicable laws and regulations and upon payment of a fee, a declaration of non-use of the mark, stating the valid grounds, under the laws of the Philippines, for such non-use.

The declaration of actual use or non-use of the mark must be submitted by the holder’s authorized representative with a local address or by a legal representative in the Philippines. A local address is required for purposes of notification.

Failure to file declarations of either actual use or non-use of the mark, within the applicable periods, will prompt the Office of the Philippines to declare, ex officio, that protection to the mark which is the subject of an international registration containing a designation of the Philippines cannot or can no longer be granted.

Source: www.wipo.int


06-04-2013 (Newsletter Issue 8/13)
Designation to India Needs National Recording of License
India has notified the Director General of the World Intellectual Property Organization (WIPO) that the recording of licenses in the International Register shall have no effect in India.

A license relating to an international registration of a mark which has been granted with respect to India shall, in order to have effect in that country, be recorded in the national Register of the Office of India. The formalities required for such recording must be completed directly with the Office of India and according to the conditions laid down by the legislation of that Contracting Party.

The notification shall enter into force on the date of entry into force of the Madrid Protocol with respect to India, namely, July 8, 2013.

Source: www.wipo.int


06-04-2013 (Newsletter Issue 8/13)
Declaration of Intention to Use in India Needed
India has notified the Director General of the World Intellectual Property Organization (WIPO) that it requires, as a Contracting Party designated under the Madrid Protocol, a declaration of intention to use the trademark.

The applicant or holder declares that he has the intention that the mark will be used by him or with his consent in that Contracting Party in connection with the goods and services identified in the international application or subsequent designation concerned.

The notification shall enter into force on the date of entry into force of the Madrid Protocol with respect to India, namely, July 8, 2013.

Source: www.wipo.int


05-21-2013 (Newsletter Issue 7/13)
New Version of Madrid Goods and Services Manager
The International Bureau of the World Intellectual Property Organization (WIPO) has announced that in the new version of the Madrid Goods and Services Manager (MGS) the following amendments have been made:

a) The “Translate into” function has been extended to provide users with the possibility of an instant, high-quality translation into any of the 15 MGS languages, free of charge;

b) the “Check acceptance by designated Contracting Party (dCP)” function has been introduced. This function enables users to determine whether indications, compiled from MGS and contained in the lists of goods and services, would be acceptable to selected Contracting Parties.

Further, as of May 1, 2013, there are 15 languages available in MGS. In addition to the 10 languages already available (English, Arabic, Dutch, French, German, Hebrew, Italian, Portuguese, Russian, Spanish) the following five languages have been added: Chinese (simplified), Chinese (traditional), Japanese, Norwegian, Turkish.

MGS is an online tool of the Madrid system which allows compiling and translating lists of goods and services selected from a database containing over 40,000 indications in English, properly classified according to the most recent edition of the International Classification of Goods and Services for the Purposes of the Registration of Marks under the Nice Agreement (the Nice Classification).

Source: www.wipo.int


04-15-2013 (Newsletter Issue 5/13)
Change of Practice Concerning Syrian Arab Republic
The International Bureau of the World Intellectual Property Organization (WIPO) has received a letter from the Office of the Syrian Arab Republic concerning a deferral of the expiry of the time limit to file an appeal against a provisional refusal with respect to a designation of the Syrian Arab Republic made in an international registration. The time required by non-residents to obtain such legalized power of attorney often exceeds the time limit to file an appeal against a provisional refusal, which is 30 days from the date on which the holder of the international registration receives the notification of provisional refusal sent by WIPO.

The Office of the Syrian Arab Republic announced that any holder of an international registration wishing to file an appeal against a provisional refusal issued by the Office of the Syrian Arab Republic will be allowed to do so directly before the Office, within 30 days from the date on which the holder received the notification of provisional refusal sent by the International Bureau of WIPO. After receiving the appeal, the Office of the Syrian Arab Republic will freeze the proceedings for a period of three months as from the date on which the appeal was filed, to allow for the submission of the required power of attorney appointing a local representative.

Users of the Madrid system may contact the Office of the Syrian Arab Republic for further information concerning this matter.

For more information, please click here

Source: www.wipo.int


04-15-2013 (Newsletter Issue 5/13)
Syrian TM office rejects IRs designating Israel
Even though Israel joined the Madrid Protocol in 2010, the Trademark Office of Syria is rejecting International Trademarks designating Israel alleging reasons of ‘public interest’.
As a matter of policy, Israel will not reject an international application merely because it co-designates countries with whom it does not have relations.

The Israeli Trademark Office suggests that in practical terms, while it is possible to file a national application separately, a more cost-effective way is not to designate Israel initially, but to add Israel only after the registration in Syria has been obtained.

Source: JAH & Co. IP, Qatar and JMB Davis Ben-David, Israel


02-18-2013 (Newsletter Issue 2/13)
Official Forms Amended/Preferred Communication
WIPO has announced that revised versions of the official Madrid forms (MM forms) are available. One amendment refers to the indication of the preferred means of communications with WIPO. Where e.g. an e-mail address is indicated and the appropriate box is ticked, the holder or his representative thereby indicates that electronic communication is the preferred means.

WIPO also provides more guidance on how the list of goods and services should be prepared in order to reducing the number of possible irregularities.

All official Madrid forms are available on the Madrid system web site here

Source: www.wipo.int


01-18-2013 (Newsletter Issue 1/13)
2013 Version of 10th Edition of Nice Classification
As from 2013, the Committee of Experts of the Nice Union revises the Nice Classification annually. The corresponding annual versions of each edition are published and enter into force on January 1 every year. The edition of the publication is indicated as before with an Arabic number between round brackets next to the abbreviation NCL, followed now by a hyphen and the year of the entry into force of the new version, as follows: NCL(10-2013), i.e. Nice Classification, 10th edition, version 2013.

Each new version of the Classification includes all changes adopted by the Committee of Experts since the adoption of the previous version. “Changes” consist in adding new goods and services to, and deleting goods and services from the Alphabetical List, and modifying the wording of the indications of goods and services, the Class Headings and the Explanatory Notes.

As from the 10th edition, version 2013, the Nice Classification will be published online only. The 10th edition published in June 2011 is the last printed edition.

The new version of the tenth edition of the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification) has entered into force on January 1, 2013. It includes a number of changes with regard to the previous version.

WIPO will apply the 2013 version to all international applications that are received by the Office of origin on or after January 1, 2013. The office will not reclassify the list of goods and services of an international registration that is the subject, after December 31, 2012, of a renewal, subsequent designation or any other change affecting the said list.

To access the updated version of the tenth edition of the Nice Classification, please click here

Source: www.wipo.int


12-04-2012 (Newsletter Issue 18/12)
Use of Class Headings of Nice Classification
The International Bureau of the World Intellectual Property Organization (WIPO) announced that Rule 9 of the Common Regulations Under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement does not allow to include indications that the use of class headings is intended to cover all goods and services in the alphabetical lists of the classes concerned. WIPO will disregard any such indications.

Further details can be seen here

Source: www.wipo.int


12-04-2012 (Newsletter Issue 18/12)
Designation to Colombia Needs Recording of License
Colombia has notified the Director General of the World Intellectual Property Organization (WIPO) that the recording of licenses in the International Register shall have no effect in Colombia.

A license relating to an international registration of a mark which has been granted with respect to Colombia shall, in order to have effect in that country, be recorded in the national Register of the Office of Colombia. The formalities required for such recording must be completed directly with the Office of Colombia and according to the conditions laid down by the legislation of that country.

The notification made by Colombia under Rule 20bis(6)(b) entered into force on August 29, 2012.

To acces the notice, please click here

Source: www.wipo.int


12-04-2012 (Newsletter Issue 18/12)
Customer Satisfaction Survey
WIPO announced that a Customer Satisfaction Survey about online services has been posted on the Madrid system pages of the WIPO website here

WIPO wants to improve their services and nine questions are been asked in the survey about Madrid Real-time Status (MRS), Madrid Electronic Alert (MEA) and Madrid Portfolio Manager (MPM).

Source: www.wipo.int


11-01-2012 (Newsletter Issue 16/12)
Designation to New Zealand Needs Intention to Use
The Government of New Zealand has notified the Director General of the World Intellectual Property Organization (WIPO), that it requires, as a Contracting Party designated under the Protocol, a declaration of intention to use the mark.

By designating New Zealand, the applicant or holder declares that he has the intention that the mark will be used by him or with his consent in that country in connection with the goods and services identified in the international application or subsequent designation concerned.

The notification made by New Zealand shall enter into force on the same date as the entry into force of the Madrid Protocol with regard to New Zealand, namely December 10, 2012.

Source: www.wipo.int


09-27-2012 (Newsletter Issue 14/12)
Denunciation of Madrid Agreement from Syria
On June 29, 2012, the Government of the Syrian Arab Republic deposited its instrument of denunciation of the Madrid Agreement concerning the International Registration of Marks (“the Madrid Agreement”). The denunciation will take effect on June 29, 2013.

According to Article 15(5) of the Madrid Agreement, international marks registered up to that date under the Madrid Agreement in respect of the Syrian Arab Republic, and not refused within the period of one year provided for in Article 5, will continue, throughout the period of international protection, to enjoy the same protection in the Syrian Arab Republic as if they had been deposited there directly.

The Syrian Arab Republic continues to be party to the Protocol Relating to the Madrid Agreement concerning the International Registration of Marks (“the Madrid Protocol”), to which it acceded on August 5, 2004.

www.wipo.int


05-15-2012 (Newsletter Issue 8/12)
New Web-Based Communication Services
WIPO announced the launch of three new web-based communication services, designed to improve the management of international trademark registrations:

Madrid Real-time Status (MRS): a stand-alone tool that provides the status in real time of trademark documents being processed by the WIPO;

Madrid Electronic Alert (MEA): a free “watch service” designed to inform anyone interested in monitoring the status of certain international trademark registrations;

Madrid Portfolio Manager (MPM): a web service that allows holders of international registrations and their representatives to access their international trademark portfolios.

For further information, please click here

Source: www.wipo.int


04-17-2012 (Newsletter Issue 6/12)
Communication of Notifications Changed
WIPO intends to increase the use of electronic communication and encourages applicants of international registrations or their appointed representatives to take advantage of electronic communication.

WIPO announced that from April 30, 2012, the office will send by registered mail, to applicants or to their appointed representatives, notifications relating to irregularities in international applications.

As from the aforementioned date, WIPO will begin by sending standard mail in lieu of registered mail, to the holders of international registrations or to their recorded representatives, notifications of provisional refusal based on an opposition.

For further information, please here

Source: www.wipo.int


03-27-2012 (Newsletter Issue 5/12)
Additional Languages for G&S Manager
WIPO announced that the new version of the Goods & Services Manager (G&S Manager) features additional language interfaces, thus bringing the total of available languages to 10: English, French and Spanish (three working languages of the Madrid System), as well as Arabic, Dutch, German, Hebrew, Italian, Portuguese, Russian.
Other language versions of the G&S Manager are currently under preparation. It is expected that the Chinese and Japanese interfaces will be available in the course of 2012.

The G&S Manager can be accessed here

Source: www.wipo.int


02-07-2012 (Newsletter Issue 2/12)
Countries Adopting 10th Edition of Nice Classification
The tenth edition of the Nice Classification has been adopted by the WIPO with effect of January 1, 2012.

In conformity with its previous practice, the WIPO will not reclassify the list of goods and services of an international registration that is the subject, after December 31, 2011, of a renewal, subsequent designation or any other change affecting the list of goods and services. The goods and services manager has been been adapted reflect the amendments.

For more information on the notification, please click here

The UK Intellectual Property Office has published a helpful summary of all changes to the classification system. To access the document, please click here,

Source: www.wipo.int, www.ipo.gov.uk

Updated list of countries that have adopted the 10th edition of the Nice Classification:

Albania, Algeria, Armenia, Australia, Austria, Bahrain, Benelux, Bolivia, Bosnia and Herzegovina, China, Croatia, Cyprus, Czech Republic, Denmark, Ecuador, Egypt, Estonia, Finland, France, Germany, Guatemala, Hungary, Hong Kong, Iceland, Indonesia, Ireland, Italy, Japan, Jordan, Kyrgyzstan, Lebanon, Montenegro, Morocco, Mozambique, New Zealand, Norway, Oman, Philippines, Portugal, Romania, Serbia, Singapore, Slovakia, Slovenia, Sweden, Switzerland, Syria, Tunisia, Turkey, United Arab Emirates, United Kingdom, Uruguay, Yemen

Sources: Country Index network of local attorneys


11-08-2011 (Newsletter Issue 13/11)
Introduction of the 10th Edition of the Nice Classification
WIPO will introduce the 10th edition of the Nice Classification on January 1, 2012. The 10th edition can be accessed here

Source: www.wipo.int

10-25-2011 (Newsletter Issue 12/11)
EuroClass Tool Improved
OHIM has launched a new improved version of its popular EuroClass tool, incorporating the functions of the now obsolete EuroAce and EuroNice applications.

EuroClass is a useful tool to assist when filing your trade mark and when trying to organise goods and services into the correct classes.
It helps with the classification of goods and services, allowing to compare the content of the national classification databases and the acceptance of goods and services in twenty national trade mark offices.
By selecting a term from the result list that is shown as accepted by OHIM for the trademark application, it will be automatically accepted by OHIM.
EuroClass also provides translations for goods and services and shows the acceptance by each office.

To access EuroClass Tool please click here


10-25-2011 (Newsletter Issue 12/11)
Use of Electronic Communication
WIPO intends to increase the use of electronic communication between the holders of international registrations and WIPO, as a faster, more efficient and secure means to effectively deliver information, for the benefit of the users of the Madrid system.

To that effect, new terms and conditions for electronic communication have been published to replace those published in Information Notice No. 15/2007.

To access the new terms and conditions please click here



09-05-2011 (Newsletter Issue 10/11)
New Madrid System Logo Introduced
The International Bureau of WIPO is integrating the new logo of the Organization in all contacts with users of the Madrid system and the public at large. In September 2011, the WIPO will gradually introduce the new Madrid system logo, which is based on WIPO logo.

Source: www.wipo.int


09-01-2011 (Newsletter Issue 10/11)
Non Working Days in 2012
WIPO has announced on its website the non working days in 2012. For more information please click here

09-01-2011 (Newsletter Issue 10/11)
Request for Territorial Extension of IR Equates to Grant of Protection
On May 16, 2011, the Government o fthe Kingdom of the Netherlands sent a statement to the International Bureau of the World Intellectual Property Organization (WIPO) concerning territorial extension of International Registrations to the Caribbean Part of the Netherlands.

Bonaire, Sint Eustatius and Saba can be designated in an International Madrid Registration. The applicable legislation (Wet merken BES) does not provide in any procedure that may lead to a decision to refuse protection in the Caribbean Netherlands. Therefore, protection in the Caribbean Netherlands is granted automatically with the designation: The Benelux Office for Intellectual Property, which is the Office executing the Wet merken BES, will equate any notification by the International Bureau of an extension to a statement of grant of protection.

To view the statement, please click here


03-08-2011 (Newsletter Issue 4/11)
Global Brand Database Online
WIPO has launched a new on-line tool on March 8th, 2011. The Global Brand Database will make it easier to search over 640,000 records relating to internationally protected trademarks, appellations of origin and armorial bearings, flags and other state emblems as well as the names, abbreviations and emblems of intergovernmental organizations. The database allows free of charge, simultaneous brand-related searches across multiple collections.

For more information please click here


01-01-2011 (Newsletter Issue 1/11)
Online Tool G&S Manager Launched
On December 20th, 2010, WIPO launched an on-line tool: The Madrid System Goods & Services Manager (G&S Manager) will help trademark applicants in compiling the list of goods and services that must be submitted when filing an international application under the Madrid System for the International Registration of Marks.

The G&S Manager, which can be accessed through the WIPO GOLD portal, gives access to thousands of standard terms classified in accordance with the 9th edition of the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification). Applicants using the G&S Manager can select the terms that best describe the goods and services relating to the mark.

For more information please click here


11-03-2010 (Newsletter Issue 16/10)
Application of the Madrid Protocol by the Netherlands Amended
The Kingdom of the Netherland had extended the application of the Madrid Protocol to the Netherlands Antilles, with effect from April 28th, 2003. As a territorial entity whithin the Kingdom of the Netherlands, the Netherlands Antilles ceased to exist on October 10th, 2010. The territory has been divided into the tree territorial entities of Curaçao, St. Martin and the Islands of Bonaire, Saint Eustatius and Saba (BES), each haging a distinctive trademarks legislation and administration within the Kingdom of the Netherlands. The Government of Kingdom of the Netherlands extended the application of the Madrid Protocol to the new independent territorial entities of Curaçao, Saint Martin and the Islands of Bonaire, Saint Eustatius and Saba effective from October 10th, 2010.

For more information please click here


11-01-2010
Validity of International Registration in Greenland
The Director General of the World Intellectual Property Organization (WIPO) presents his compliments and has the honor to refer to the deposit by the Kingdom of Denmark, on November 10, 1995, of its instrument of ratification of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, adopted at Madrid on June 27, 1989 ("Madrid Protocol (1989)"). The said instrument contained a declaration that "until later decision, the Protocol will not be applied to the Faroe Islands or to Greenland".

The Director General has the honor to notify the deposit by the Government of the Kingdom of Denmark, on October 11, 2010, of a declaration according to which it withdraws the one made upon ratification of the Protocol "to the effect that until further notice the Protocol should not apply to Greenland".

The said declaration will enter into force on January 11, 2011.

For more information please click here


10-01-2010 (Newsletter Issue 15/10)
Updated List of Members to the Madrid System
An updated list of members to the Madrid Agreement and Madrid Protocol is now available here

Source: www.wipo.int

06-01-2010 (Newsletter Issue 11/10)
Official Fees for Designs Changed
The World Intellectual Property Organization (WIPO) announced changes in fees for designs, effective by June 1st, 2010.

Source: www.wipo.int

The Madrid System for the International Registration of Marks was established to simplify the filing, registration and maintenance of trade mark rights in more than one jurisdiction. A single trademark registration should automatically apply around the world, thus making international trademark registration more effective. The system for international registration of marks is governed by two treaties: the Madrid Agreement Concerning the International Registration of Marks, originally dating from 1891, and the Protocol Relating to the Madrid Agreement, that was adopted in 1989. The system is administered by the International Bureau of World Intellectual Property Organisation (WIPO), located in Geneva, Switzerland, which maintains the International Register and publishes the “WIPO Gazette of International Marks.”
Trademark owners with office and residence in one of the member countries of the Madrid System who have an existing trademark application or registration (known as the “basic application” or “basic registration”) in a member jurisdiction may obtain an “international registration” for their trademark from the WIPO. The owner is allowed to extend the request for protection to one single or all member states of the Protocol or the Agreement without further national applications. This process is known as “designation”.
Please note that the Madrid Agreement and the Madrid Protocol are two different treaties. Some countries are party to the Madrid Agreement, others are party to the Madrid Protocol and many are party to both of these treaties. Although the same office is responsible for the international registration according to both, the Agreement and the Protocol, there are different forms, procedures of registration and fees. Trademarks registered in a member country of the Agreement can be protected solely in other states of the Agreement. The same applies to member countries of the Protocol. Owners of a trademark in a country which is a member of the Agreement as well as of the Protocol can protect their basic trademark in other countries of both the Agreement and of the Protocol.

Members of the Madrid Agreement are Albania, Algeria, Armenia, Austria, Azerbaijan, Belarus, Belgium, Bhutan, Bosnia and Herzegovina, Bulgaria, China, Croatia, Cuba, Cyprus, Czech Republic, Egypt, France, Germany, Hungary, Iran, Italy, Kazakhstan, Kenya, Kyrgyzstan, Latvia, Lesotho, Liberia, Liechtenstein, Luxembourg, Macedonia, Moldova, Monaco, Mongolia, Montenegro, Morocco, Mozambique, Namibia, Netherlands, North Korea, Poland, Portugal, Romania, Russian Federation, San Marino, Serbia, Sierra Leone, Slovakia, Slovenia, Spain, Sudan, Swaziland, Switzerland, Tajikistan, Ukraine and Viet Nam (status: April 1, 2016).

Members of the Madrid Protocol are AIPO/OAPI, Algeria, Albania, Antigua and Barbuda, Armenia, Australia, Austria, Azerbaijan, Bahrain, Belarus, Belgium, Bhutan, Bosnia and Herzegovina, Botswana, Brunei, Bulgaria, Cambodia, China, Colombia, Croatia, Cuba, Cyprus, Czech Republic, Denmark, Egypt, Estonia, European Union, Finland, France, Gambia, Georgia, Germany, Ghana, Greece, Hungary, Iceland, India, Iran, Ireland, Israel, Italy, Japan, Kazakhstan, Kenya, Kyrgyzstan, Laos, Latvia, Lesotho, Liberia, Liechtenstein, Lithuania, Luxembourg, Macedonia, Madagascar, Moldova, Mexico, Monaco, Mongolia, Montenegro, Morocco, Mozambique, Namibia, Netherlands, New Zealand, North Korea, Norway, Oman, Philippines, Poland, Portugal, Romania, Russian Federation, Rwanda, San Marino, Sao Tomé and Principe, Serbia, Sierra Leone, Singapore, Slovakia, Slovenia, Spain, South Korea, Sudan, Swaziland, Sweden, Switzerland, Syrian Arab Republic, Tajikistan, Tunisia, Turkey, Turkmenistan, Ukraine, United Kingdom, USA, Uzbekistan, Viet Nam, Zambia and Zimbabwe (status: January 6, 2017).
Nice classification, 10th edition
Registrable as a trademark is any distinctive sign capable of identifying certain goods or services as those produced or provided by a specific person or enterprise.
Trademarks may be one or a combination of words, letters, and numerals. They may consist of drawings, symbols, three-dimensional signs such as the shape and packaging of goods, audible signs such as music or vocal sounds, fragrances, or colors used as distinguishing features.
The following trademark catagories are registrable: trademarks, service marks, collective marks and certification marks.
An international application must be presented to the International Bureau of WIPO through the industrial property office of the applicant’s country. Any application sent directly to the International Bureau will not be considered as such. In English or French, a form of the international authority has to be filled for application in member countries of the Madrid Agreement, in member countries of the Madrid Protocol, or both. The applicant has to pay a national and international fee in advance.
Multiple-class applications are possible.
An application can include goods in any number of classes, but with additional charges for each additional class.
In order to apply for international registration of a trademark through the Madrid system, you have to be a national of a member State of the Madrid Union or to have either a real and effective industrial and commercial establishment or a domicile in that country. If you do not have such entitlement, you have to apply for registration of your mark separately with the industrial property office of each country in question.
The application process includes a formal examination by WIPO, followed by examination in each designated country according to local trademark law.
After the examination of the application, the trademark accepted by the Registrar will be registered and published in the bulletin “Gazette des Marques”.
The approximate time frame for completing the registration process of a trademark varies greatly according to the countries designated.
The trademark is dependent on the base trademark during the first five years after the date of registration. If – within these five years – the basic trademark is no more subject to protection, the international trademark will be no more subject to protection either.
The authorities of member countries may refuse protection in their country within one year (in many member countries of the Protocol within 18 months). If any problems arise, local agents have to be used in the applicable jurisdictions.
The opposition period is based on the guidelines in the respective countries (see General Info/Iso Codes and Opposition Periods).
An international registration is effective for 10 years. It may be renewed for further periods of 10 years on payment of the prescribed fees. International registrations under the convention obtained before April 1st, 1996 can still have a 20 year validity, but will be renewed for 10 year periods at their next renewal date. The trademark protection may be renewed as often as demanded.
The international registration may be renewed in respect of all the designated Contracting Parties or in respect of only some of them. However, it may not be renewed in respect of only some of the goods and services recorded in the International Register; if therefore the holder wishes, at the time of renewal, to remove some of the goods and services from the international registration, he must separately request cancellation in respect of those goods and services.
The grace period for renewals is 6 months following the expiration date of the trademark. Modifications to goods and services cannot be made during the grace period.
The use requirements of the international trademark are ruled by the respective national law of the Contracting Parties.
The application fees consist of a basic fee, a supplementary fee for each class of goods and services beyond three classes and a complementary fee for the designation of each designated Contracting State.
The basic fee is CHF 653.00 where no reproduction of the mark is in colour and CHF 903.00 where any reproduction of the mark is in colour.
The supplementary fee is CHF 100.00 per class of goods and services exceeding three. The complementary fee is CHF 100.00 per Contracting State (applied conversion rate 1 CHF = 0.59646 EUR). Individual country fees may substitute complementary fees if the international application is governed exclusively by the Protocol or by both, the Protocol and the Agreement.
The WIPO fee calculator can be found here
Depending on basic registration for 5 years after registration, if, and to the extent that, the basic registration ceases to have effect within this 5 years, the international registration will no longer be protected. Under the Protocol, however, within 3 months the holder may file an application for registration with the national Offices of Contracting Parties so as to maintain the date of the international registration.
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Word Mark Search (availability) 150,00 € 35,00 €  
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