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Amendments to Trademark Laws

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Apr 08, 2021 (Newsletter Issue 7/21)
WIPO
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Indication of Email Address Mandatory


WIPO informs that amendments to the Regulations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks entered into force as of February 1, 2021.

It is now mandatory to indicate an email address for
- applicants, in the international application,
- new holders, in a request for the recording of a change in ownership, and
- representatives, appointed as such in the international application, in a request for recording or in a separate communication

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

Important: It should be noted that applicants cannot indicate the email address of the representative as their own. The email address of the applicant and of the representative must be different. Where there is more than one applicant, each applicant must indicate their own email address, which must be different from each other, as well as to that of their representative.

WIPO will continue to send communications by postal services if no email address is available or if an electronic communication fails to reach its intended recipient. Verification whether an email address is on record at WIPO in respect of any international registration can be checked in the Madrid Monitor

Failure to provide an email address from February 1, 2021 onwards

For applicants: If the applicant fails to indicate an email address in an international application, this will result in an irregularity, which the applicant may remedy within three months from the date of the notification of the irregularity by WIPO. If the applicant fails to correct the irregularity within that period, the international application will be considered abandoned.

For new holders: If the new holder fails to indicate an email address in a request for the recording of a change in ownership, this will result in an irregularity, which the new holder may correct within three months from the date of the notification of the irregularity by WIPO. If the new holder fails to remedy to the irregularity within that period, the request will be considered abandoned.

For representatives: Failure to indicate the email address of the representative, appointed as such in the international application, in a request for recording or in a separate communication, will result in an irregular appointment. WIPO will inform the applicant or holder, the purported representative and the Office concerned, if any, of this fact and will send all relevant communications only to the applicant or holder until a representative is appointed.

For more information, please click here and here

Source: www.wipo.int