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WIPO

Jul 08, 2024 (Newsletter Issue 6/24)
Saint Kitts and Nevis Accede to the Hague System
The Government of Saint Kitts and Nevis deposited its instrument of accession to the 1999 Geneva Act of the Hague Agreement on July 8, 2024. Saint Kitts and Nevis is the 74th Contracting Party to the 1999 Act and the 80th member of the Hague Union.

For more details click here.


Source: www.wipo.int

May 02, 2024 (Newsletter Issue 3/24)
World Intellectual Property Report 2024 Released
The WIPO Intellectual Property Report was released on May 2, 2024. It finds that the key to sustainable growth for countries is to focus policy making on developing local innovation capabilities and it explores how policymakers can make informed decisions on how to boost innovation and drive economic development.

For more details click here.


Source: www.wipo.int

Mar 05, 2024 (Newsletter Issue 2/24)
Madrid e-Filing Now Available in Gambia
The Gambia has signed up to WIPO’s Madrid e-Filing service! It’s a major milestone in the history of the international trademark system’s online filing solution – the Gambia is the first Madrid System Member in the African region to join.

Source: www.wipo.int

Nov 08, 2023 (Newsletter Issue 9/23)
Cuban IP Office Becomes Depositing and Accessing Office
The Cuban Industrial Property Office (OCPI) notified the International Bureau in accordance with paragraphs 10 and 12 of the Framework Provisions that it would commence operation as a depositing and accessing office of the WIPO Digital Access Service with effect from January 1, 2024.

For more details click here.


Source: www.wipo.int

Oct 27, 2023 (Newsletter Issue 8/23)
Significant Changes Coming to the Madrid Systems
Significant amendments are on the horizon for the Regulations under the Madrid Protocol. The changes will take effect from 1st November 2023 and 2024. They aim to enhance transparency and efficiency in the international trade mark protection process and provide users of the System with clear time limits in defending their applications.

As of November 1, 2023, national trade mark offices must indicate the start and end dates of the time limit to respond to provisional refusals. This is mandatory unless the time limit begins on the date on which the WIPO transmits the provisional refusal to the applicant for international registration, or the time limit begins on the date on which the applicant receives it. In such cases, the WIPO will provide the start and end dates in its notification to respond to provisional refusals.

As of November 1, 2024, national trade mark offices may ask the WIPO to send to international registration holders any communication not covered under the Regulations, for example, regarding possible actions, reminders to meet certain requirements, or any other information of a particular interest to the holder. This will enable international registration holders to remain informed about relevant developments and take appropriate action where needed.

By the 1st of February 2025, national trade mark offices are required to provide holders of international registration a minimum of two months to respond to provisional refusal. This will potentially provide trade mark holders with reduced pressure in preparing and submitting their responses.

For more details click here.


Source: www.frkelly.com

Oct 18, 2023 (Newsletter Issue 8/23)
Portugal Joins the Geneva Act of the Lisbon Agreement
On October 18, 2023, the Government of Portugal deposited its instrument of ratification to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indication (“Geneva Act”).

With this ratification, the Geneva Act now offers protection in 21 Contracting Parties covering up to 57 countries, while the Lisbon System covers up to 72 countries in total.

The ratification will allow Portugal to protect both its appellations of origin and geographical indications under the Geneva Act, including those in the non-agricultural product category.

The Geneva Act will enter into force with respect to Portugal on January 18, 2024.


Source: www.wipo.int

Oct 15, 2023 (Newsletter Issue 8/23)
Madrid e-Filing Now Live in Mongolia
Mongolia is the latest Madrid System Member – and the first in East Asia – to sign up to the Madrid e-Filing service, bringing the number of intellectual property (IP) Offices using the platform to 21.

Starting October 15, 2023, trademark holders from Mongolia are able to file their applications for an international trademark registration online, directly via the website of the Intellectual Property Office of Mongolia (IPOM).

Madrid e-Filing will allow Mongolian trademark owners to expand the protection of their national trademark registrations in a secure and online environment. The biggest advantage for Mongolian users is to communicate directly with IPOM and receive and respond to irregularities issued by the WIPO online. It offers applicants a convenient and time saving process.


Source: www.wipo.int

May 01, 2023 (Newsletter Issue 5/23)
Tunisia Accedes to Geneva Act of the Lisbon Agreement
On April 6, 2023, the Government of Tunisia deposited its instrument of accession to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications (Geneva Act).

The Geneva Act of the Lisbon Agreement helps producers of quality products, linked to their geopgraphic origin, to protect the distinctive designations of their products in multiple jurisdictions, either as appellations of origin or geographical indications, through a single application filed with WIPO, and the payment of one set of fees.

It will enter into force with respect of the Republic of Tunisia on 6 July 2023.


Source: www.wipo.int

May 01, 2023 (Newsletter Issue 5/23)
Montenegro Accedes to Singapore Treaty on Trademarks
On 24 April 2023, the Government of Montenegro acceded to the Singapore Treaty on the Law of Trademarks by depositing its instrument of accession with the Director General of the World Intellectual Property Organization.

The objective of the Singapore Treaty is to create a modern and dynamic international framework for the harmonization of administrative trademark registration procedures.

The said Treaty will enter into force, with respect to Montenegro, on July 24, 2023.


Source: www.wipo.int

Mar 23, 2023 (Newsletter Issue 4/23)
UK's Ratification of Vienna Agreement Extended to Isle of Man
On 1 March 2023, WIPO notified the deposit by the Government of the United Kingdom of Great Britain and Northern Ireland of the following declaration:

The Government of the United Kingdom of Great Britain and Northern Ireland extends the application of United Kingdom's ratification of the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks, done at Vienna on June 12, 1973, as amended on October 1, 1985 ("Vienna Agreement") to the territory of the Isle of Man, for whose international relations the United Kingdom of Great Britain and Northern Ireland is responsible.

The United Kingdom of Great Britain and Northern Ireland also extends to the territory of the Isle of Man its declaration made under the provisions of Article 4(5) of the Agreement that it does not undertake to include the numbers of all or some of the sections in official documents and publications relating to registrations and renewals of marks.

The said declaration entered into force, with respect to the territory of the Isle of Man, on 1 March 2023.


Source: www.wipo.int

Mar 23, 2023 (Newsletter Issue 4/23)
Withdrawal of Notification on Division of International Registrations by Norway
As of 1 March 2023, the Office of Norway has withdrawn the notification made under Rule 40(6) of the Regulations of the Madrid Protocol Concerning the International Registration of Marks.

Consequently, as from that date, the Office of Norway may present to WIPO requests for the division of an international registration under Rule 27bis(1) of the Regulations and requests for the merger of international registrations resulting from division under Rule 27ter(2)(a) of the Regulations.


Source: www.wipo.int

Mar 23, 2023 (Newsletter Issue 4/23)
Accession to Geneva Act of Hague Agreement by Brazil
On 13 February 2023, the Director General of WIPO notified the deposit by the Government of the Federative Republic of Brazil of its instrument of accession to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, adopted at Geneva on July 2, 1999 (the "Geneva Act").

The Geneva Act will enter into force, with respect to the Federative Republic of Brazil, on 1 August 2023.


Source: www.wipo.int

Feb 16, 2023 (Newsletter Issue 3/23)
Mauritius Joins the Madrid System and the Hague System
On 6 February 2023, Mauritius deposited its instrument with WIPO of accession to the Madrid Protocol. It also deposited its instrument of accession to the 1999 Geneva Act of the Hague Agreement.

The Madrid Protocol and the 1999 Act will enter into force in Mauritius on 6 May 2023.


Source: www.wipo.int

Feb 16, 2023 (Newsletter Issue 3/23)
New Version of e-Hague Renewal
On 7 February 2023, WIPO informs that it has launched a new version of eHague Renewal, the Hague System's online service for renewing international registrations. The changes include for example authentication, design, alerts, and improved display of reproductions.

IP right holders are required to use their WIPO account to renew their international registration(s) online.

For more information, please see here


Source: www.wipo.int

Jan 12, 2023 (Newsletter Issue 1/23)
Accession to Geneva Act of the Lisbon Agreement on Appellations of Origin and GIs by OAPI
On 15 December 2022, WIPO notified the deposit by the African Intellectual Property Organization (OAPI) of its instrument of accession to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications.

The said instrument contained declarations according to which:
- in accordance with Article 28(1)(iii) of the Geneva Act of the Lisbon Agreement, OAPI has been duly authorized, in accordance with its internal procedures, to become party to the Geneva Act of the Lisbon Agreement and declares that, pursuant to the Bangui Agreement Instituting an African Intellectual Property Organization, Act of December 14, 2015, Annex VI, under which regional titles of protection can be obtained in respect of geographical indications, applies;
- OAPI avails itself of the possibility provided for in Article 29(4) of the Geneva Act of the Lisbon Agreement to extend by one year the time limit referred to in Article 15(1) of the Geneva Act of the Lisbon Agreement, and the periods referred to in Article 17 of the Geneva Act of the Lisbon Agreement, in accordance with the procedures specified in the Common Regulations; and
- In accordance with Article 7(4) of the Geneva Act of the Lisbon Agreement, OAPI wants to receive an individual fee to cover its costs of substantive examination of each international registration.

The Geneva Act of the Lisbon Agreement will enter into force with respect to OAPI on 15 March 2023.


Source: www.wipo.int

Dec 15, 2022 (Newsletter Issue 18/22)
Accession to Madrid Protocol by Belize
On 24 November 2022, the Government of Belize deposited its instrument of accession to the Madrid Protocol, containing the following:

- the declaration extending the refusal period to 18 months (Article 5(2)(b) of the Madrid Protocol);
- the declaration indicating that Belize wishes to receive an individual fee when it is designated in an international application, in a subsequent designation and in respect of the renewal of an international registration (Article 8(7)(a) of the Madrid Protocol). The amounts of that individual fee will be the subject of a separate information notice;
- the notification indicating that Belize requires, when it is designated under the Madrid Protocol, a declaration of intention to use the mark (Rule 7(2) of the Regulations under the Madrid Protocol);
- the notification indicating that the recording of licenses in the International Register shall have no effect in Belize (Rule 20bis(6)(b) of the Regulations under the Madrid Protocol);
- the notification indicating that the Office of Belize will not present to WIPO requests for the division of an international registration in respect of Belize because its law does not provide for the division of registrations of a mark (Rule 27bis(6) of the Regulations under the Madrid Protocol);
- the notification indicating that the Office of Belize will not present to WIPO requests for the merger of international registrations resulting from division because the law of Belize does not provide for the merger of registrations of a mark (Rule 27ter(2)(b) of the Regulations under the Madrid Protocol).

The Madrid Protocol will enter into force in Belize on 24 February 2023.

For more information, please click here


Source: www.wipo.int

Dec 01, 2022 (Newsletter Issue 17/22)
Monaco IP Office Participates in WIPO Digital Access Service
The Monaco Industrial Property Office of the Business Development Agency notified WIPO, in accordance with paragraphs 10 and 12 of the Framework Provisions for the WIPO Digital Access Service (DAS), that it will commence operation as both a Depositing Office and an Accessing Office of WIPO DAS with effect from 1 February 2023.

For more information, please see here


Source: www.wipo.int

Nov 17, 2022 (Newsletter Issue 16/22)
Changes to Regulations under Madrid Protocol
WIPO informs that a number of changes to the Regulations under the Madrid Protocol became effective on 1 November 2022.

Appointing representatives:
As of November 1, 2022, it will no longer be possible to appoint a representative through a signed letter. Applicants and holders must use the eMadrid online service or form MM12 for this purpose.

Renewals:
International registrations can now be renewed six months before the expiry date. WIPO will record the renewal of the international registration, issue the corresponding certificate of renewal, and notify the designated Contracting Parties as soon as it confirms that the holder has paid the required fees. The new period of validity of the international registration shall be 10 years from the expiry of the previous period.

For more information, please see Information Notice 30/2022 here


Source: www.wipo.int

Oct 20, 2022 (Newsletter Issue 15/22)
12th Edition of Nice Classification Enters into Force Soon
WIPO announces that the twelfth 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, 2023. It includes a number of changes compared to the previous edition.

WIPO will apply the twelfth edition of the Nice Classification to any application for international registration that is received by the Office of origin on or after January 1, 2023; and to any application for international registration that is received by WIPO on or after January 1, 2023, when the said application is received by WIPO after the two-month time limit referred to in Article 3(4) of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.

In conformity with its standing practice, WIPO will not reclassify, in accordance with the twelfth edition of the Nice Classification, the list of goods and services in international registrations with a date earlier than January 1, 2023.

This new edition is available on WIPO’s website here


Source: www.wipo.int

Oct 06, 2022 (Newsletter Issue 14/22)
14th Edition of Locarno Classification
WIPO announces that the fourteenth edition of the Locarno Classification, which is used to classify goods for the purpose of registering industrial designs, will enter into force on January 1, 2023.

Source: www.wipo.int

Oct 06, 2022 (Newsletter Issue 14/22)
Further Declarations of Intention to Use for Intl. Registrations Designating Cape Verde
On 21 September 2022, WIPO informs that the Office of Cabo Verde has provided information on the requirement to file further declarations of intention to use a mark that is the subject of an international registration designating Cabo Verde.

As indicated in Information Notice No. 22/2022, by designating Cabo Verde, the applicant or holder declares an intention to use the mark in this country, in connection with the goods and services identified in the international application or subsequent designation, as the case may be.

In addition, holders must submit further declarations of intention to use the mark directly to the Office of Cabo Verde 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 Cabo Verde.

Holders must present the declaration within five years from the date on which the Office of Cabo Verde granted protection to the mark in the international registration, that is, from the date of the statement that grants protection to the mark, issued by the Office of Cabo Verde in accordance with Rule 18ter of the Regulations under the Madrid Protocol. Holders must present additional declarations every five years thereafter.

Holders may file such declaration six months before the above-mentioned anniversaries, but no later than six months after the said anniversaries.

For more information, please click here


Source: www.wipo.int

Sep 22, 2022 (Newsletter Issue 13/22)
Polish IP Office Participates in WIPO Digital Access Service
The Patent Office of the Republic of Poland has notified WIPO, in accordance with paragraphs 10 and 12 of the Framework Provisions for the WIPO Digital Access Service (DAS), that it will act as an Accessing Office of WIPO DAS with effect from 1 September 2022.

The Office accepts all priority documents exchanged via WIPO DAS, including national and international patent applications, utility model applications, national and international design applications, and national trademark applications. Further, colour documents in PDF format are accepted.

For more information, please click here


Source: www.wipo.int; www.uprp.gov.pl

Aug 25, 2022 (Newsletter Issue 12/22)
New Online Service – Correcting Errors in International Register
WIPO informs about the new online service to correct errors in the International Register through eMadrid. This new online service replaces downloadable Madrid System Form MM21.

To access the eMadrid, click here


Source: www. madrid.wipo.int

Jul 27, 2022 (Newsletter Issue 10/22)
New Guide to the Madrid System Released
WIPO has released the new Guide to the International Registration of Marks under the Madrid Protocol. This guide is primarily intended for applicants and holders of international registrations of marks, as well as officials of the relevant administrations of the Madrid Union members. It covers the various steps of the international registration procedure and explains the essential provisions of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks and the Regulations under the Protocol.

The new edition of the guide can be downloaded here


Source: www.wipo.int

Jul 27, 2022 (Newsletter Issue 10/22)
Peru Accedes to Hague System and WIPO’s Classification Treaties Soon
On 18 July 2022, the Peruvian Trademark Office (INDECOPI) announced that it will deposit its accession to the Geneva Act of the Lisbon Agreement and to four WIPO’s classification treaties such as the Nice Agreement, the Vienna Agreement, the Locarno Agreement, and the Strasbourg Agreement.

The accession to the Madrid Agreement regarding the international registration of trademarks is still to be reviewed and analysed.

For more information, please click here


Source: www.andina.pe

Jul 14, 2022 (Newsletter Issue 9/22)
Declaration of Intention to Use for International Registrations Designating Cape Verde
On 5 July 2022, the Government of Cabo Verde has notified WIPO in accordance with Rules 7(2), 27bis(6) and 27ter(2)(b) of the Regulations under the Madrid Protocol.

When Cape Verde is designated under the Madrid Protocol, it requires a declaration of intention to use the mark.

Further, the Office of Cabo Verde will not present to the International Bureau of WIPO requests for the division of an international registration under Rule 27bis(1) nor requests for the merger of international registrations resulting from division under Rule 27ter(2)(a).

Cape Verde became a member of the Madrid Protocol on 6 July 2022.


Source: www.wipo.int

Jun 30, 2022 (Newsletter Issue 8/22)
Czech Republic Accedes to Geneva Act of Lisbon Agreement
On 2 June 2022, WIPO notified the deposit by the Government of the Czech Republic of its instrument of accession to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications.

The Act will enter into force with respect to the Czech Republic on 2 September 2022.

For more information, please check the notice here


Source: www.wipo.int

Jun 30, 2022 (Newsletter Issue 8/22)
Certified Documents Go Digital
On 15 June 2022, WIPO informs that they are now issuing all certified documents (attestations, copies of certificates, extracts) in digital format (PDF by email) with electronic signature. Paper copies can still be ordered.

For more information, please click here


Source: www.wipo.int

Jun 02, 2022 (Newsletter Issue 7/22)
Accession to Geneva Act of the Hague Agreement by Morocco
On 22 April 2022, the Government of Morocco deposited its instrument of accession to the 1999 Geneva Act. Morocco is the 69th contracting party to join the 1999 Act.

The Act will enter into force in Morocco on 22 July 2022.


Source: www.wipo.int

May 19, 2022 (Newsletter Issue 6/22)
New Gateway to Madrid System Online Services Introduced
On 26 April 2022, WIPO launched the new eMadrid digital Gateway for users of the Madrid System. The new gateway centralises and secures self-service access to all online services and tools of the Madrid System. It allows users to manage their international trademark registrations.

Users can now, for example, process transactions related to changes in ownership. With this new service, a full or partial change of ownership can be recorded entirely online using the electronic version of the MM5 form. Other online services to eMadrid will be added.

For more information, please click here and here


Source: www.wipo.int

May 19, 2022 (Newsletter Issue 6/22)
Additional Guidance on China’s Accession to Hague System
China's accession to the Hague System entered into force on 5 May 2022, as we have previously reported. WIPO now provides guidance for users who wish to designate China in international applications with regard to the Hague System. The following information is available:

- Information on specific views required for three-dimensional designs and graphical user interfaces
- Updated guidance on including multiple designs in an international application
- Updated guidance on preparing and providing reproductions
- Individual designation fees

For more information, please see here


Source: www.wipo.int

Apr 21, 2022 (Newsletter Issue 5/22)
Accession to Madrid Protocol by Chile
On April 4, 2022, WIPO notified the deposit by the Government of the Republic of Chile of its instrument of accession to the Madrid Protocol.

The said instrument contained the following declarations:
- in accordance with Article 5(2)(b) of the Madrid Protocol (1989), the time limit for a notification of refusal in respect of international registrations made under the Madrid Protocol will be 18 months and, under Article 5(2)(c) of the said Protocol, when a refusal of protection may result from an opposition to the granting of protection, such refusal may be notified to the International Bureau after the expiry of the 18-month time limit; and
- in accordance with Article 8(7)(a) of the Madrid Protocol (1989), the Government of the Republic of Chile, in connection with each international registration in which it is mentioned under Article 3ter of the said Protocol, and in connection with the renewal of any such international registration, wants to receive, instead of a share in the revenue produced by the supplementary and complementary fees, an individual fee.

The Madrid Protocol will enter into force, with respect to Chile, on July 4, 2022.


Source: www.wipo.int

Apr 21, 2022 (Newsletter Issue 5/22)
Accession to Madrid Protocol by Cape Verde
On April 6, 2022, the Government of Cape Verde deposited its instrument of accession to the Madrid Protocol.

The Protocol will enter into force for this country on July 6, 2022.

For more information, please click here


Source: www.wipo.int

Apr 21, 2022 (Newsletter Issue 5/22)
Declaration of Article 15(5) of Madrid Protocol Withdrawn by Namibia
WIPO informs that Namibia has deposited a notification on February 16, 2022, withdrawing the below-mentioned declaration:

"In accordance with Article 14(5) of the Madrid Protocol (1989), the protection resulting from any international registration effected under the said Protocol before the date of entry into force of the said Protocol with respect to the Republic of Namibia cannot be extended to it" (see Madrid (Marks) Notification No. 157 of March 31, 2004).

For more information, please click here


Source: www.wipo.int

Feb 24, 2022 (Newsletter Issue 3/22)
Amendments to Common Regulations of Hague System Effective
On January 1, 2022, amendments to the Hague System Common Regulations under the 1999 Act and the 1960 Act of the Hague Agreement came into force.

Amendments to Rule 5: Introduction of a general provision that can excuse a delay in meeting a time limit to perform a required action with WIPO due to a force majeure, e.g., COVID-19 pandemic.

Amendments to Rule 17: Extension of the standard publication period of an international registration from six to twelve months for all international applications filed on or after January 1, 2022. Further, introduction of the possibility to request earlier publication (any time) of an international registration.

Amendments to Rule 21: Request for recordal of change in ownership made easier

For further information, please click here


Source: www.wipo.int

Feb 10, 2022 (Newsletter Issue 2/22)
China Accedes to Hague System
On February 5, 2022, the Government of the People’s Republic of China deposited its instrument of accession to the 1999 Geneva Act of the Hague Agreement. The Act will enter into force in China on May 5, 2022.

It should be noted that the 1999 Act will not be applied in the Hong Kong Special Administrative Region or the Macao Special Administrative Region of the People’s Republic of China until otherwise notified by the Government of the People’s Republic of China.

China’s instrument of accession includes several declarations which can be seen here


Source: www.wipo.int

Feb 10, 2022 (Newsletter Issue 2/22)
UAE Accedes to Nice Agreement
On January 18, 2022, the Government of the United Arab Emirates joined the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.

The Agreement will enter into force,with respect to the United Arab Emirates on April 18, 2022.


Source: www.wipo.int

Jan 27, 2022 (Newsletter Issue 1/22)
Notification on Licence Recordal and Division/Merger of International Registrations by UAE
On January 6, 2022, the Office of the United Arab Emirates has notified WIPO in accordance with Rules 20bis(6)(b), 27bis(6) and 27ter(2)(b) of the Regulations under the Madrid Protocol.

As a result:
- a license shall, in order to have effect in that Contracting Party, be recorded in the Register of the Office of the United Arab Emirates;
- that Office of UAE will not present to the International Bureau of WIPO requests for the division of an international registration under Rule 27bis(1) nor requests for the merger of international registrations resulting from division under Rule 27ter(2)(a).

For further information, please refer to Information Notice No. 1/2022 here


Source: www.wipo.int

Jan 27, 2022 (Newsletter Issue 1/22)
Jamaica Accedes to the Madrid Protocol
On December 27, 2021, WIPO notified the deposit by the Government of Jamaica of its instrument of accession to the Madrid Protocol.

The said instrument contained the following declarations:
- The time limit for refusal of a trademark is extended to 18 months. Notifications of refusal based on opposition are possible after the expiry of this period.
- Jamaica wishes to receive an individual fee when it is designated in an international application, in a subsequent designation, and with respect to renewal of an international registration. The amount will be determined in a separate notice.
- Any provisional refusal notified to WIPO will be subject to a review by the Office of Jamaica, and the decision taken may be the subject of a further review or appeal before that Office (Rule 17(5)(d) of the Regulations under the Madrid Protocol).

The Madrid Protocol (1989) will enter into force, with respect to Jamaica, on March 27, 2022.


Source: www.wipo.int

Dec 16, 2021 (Newsletter Issue 18/21)
Guidance on Including Multiple Designs in International Applications
WIPO has issued a new guidance on including multiple designs in international applications. The new guidance helps to understand the different substantive requirements of the Hague System contracting parties, to avoid potential processing delays and refusals based on non-conformity of designs.

The guidance on multiple designs can be downloaded here


Source: www.wipo.int

Dec 02, 2021 (Newsletter Issue 17/21 )
Accession to Geneva Act of Lisbon Agreement on Appellations of Origin and GIs by Ghana
On November 3, 2021, the WIPO notified the deposit by Ghana of its instrument of accession to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications (Geneva Act of the Lisbon Agreement).

The Geneva Act of the Lisbon Agreement enters into force, with respect to the Republic of Ghana, on February 3, 2022.


Source: www.wipo.int

Dec 02, 2021 (Newsletter Issue 17/21 )
Streamlining Hague System Procedures when Designating Japan
On November 4, 2021, WIPO informs that applicants of international design applications designating Japan can now submit a supporting document in the case of exception to lack of novelty, and/or a copy of a priority document directly to WIPO through eHague.

Applicants may also use form DM/1, Annex II or V of the Hague System (see forms here). It is important that the documents must be sent at the time of filing the international design application to WIPO.

WIPO will then forward these documents to the Japan Patent Office (JPO).


Source: www.wipo.int

Dec 02, 2021 (Newsletter Issue 17/21 )
Jamaica Joins the Hague System
On November 10, 2021, WIPO notifes the deposit by Jamaica of its instrument of accession to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, adopted at Geneva on July 2, 1999 (the "Geneva Act").

The Geneva Act enters into force, with respect to Jamaica, on February 10, 2022.


Source: www.wipo.int

Dec 02, 2021 (Newsletter Issue 17/21 )
Accession to Paris Convention by Kiribati
WIPO notifies the accession of Kiribati to the Paris Convention for the Protection of Industrial Property of March 20, 1883, as revised at Stockholm on July 14, 1967, and as amended on September 28, 1979 (Paris Convention).

The Paris Convention will enter into force, with respect to the Republic of Kiribati, on February 5, 2022.


Source: www.wipo.int

Nov 18, 2021 (Newsletter Issue 16/21)
2022 Version of Nice Classification
WIPO informs that the new 2022 version of the eleventh edition of the International Classification of Goods and Services for the Purposes of the Registration of Marks (“Nice Classification”) enters into force on January 1, 2022. The 2022 version of the Nice Classification “NCL(11-2022)” includes a number of changes with regard to the previous version.

WIPO is going to apply the 2022 version of the eleventh edition of the Nice Classification to:
- any application for international registration that is received by the Office of origin on or after January 1, 2022;
- any application for international registration that is received by WIPO on or after January 1, 2022, when the said application is received by WIPO after the two-month time limit referred to in Article 3(4) of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.

WIPO isl not going to reclassify, in accordance with the 2022 version of the eleventh edition of the Nice Classification, the list of goods and services in international registrations with a date earlier than January 1, 2022.

The Madrid Goods & Services Manager is going to be updated to reflect the changes introduced by the 2022 version of the eleventh edition of the Nice Classification.


Source: www.wipo.int

Oct 20, 2021 (Newsletter Issue 15/21)
Accession to Geneva Act of Lisbon Agreement on Appellations of Origin and GIs by Switzerland
On August 31, 2021, the WIPO notified the deposit by Switzerland of its instrument of accession to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications (Geneva Act).

The Geneva Act of the Lisbon Agreement enters into force, with respect to Switzerland, on December 1, 2021.


Source: www.wipo.int

Oct 20, 2021 (Newsletter Issue 15/21)
Accession to Madrid Protocol by UAE
On September 28, 2021, the Government of the United Arab Emirates deposited with WIPO its instrument of accession to the Madrid Protocol, containing:
- the declaration extending the refusal period to 18 months and making it possible to notify refusals based on opposition after the expiry of that period (Article 5(2)(b) and (c) of the Madrid Protocol);
- the declaration indicating that the United Arab Emirates wish to receive an individual fee when they are designated in an international application, in a subsequent designation and in respect of the renewal of an international registration (Article 8(7)(a) of the Madrid Protocol). The amount of the individual fees shall be announced in a separate Information notice.

The Madrid Protocol enters into force, with respect to the United Arab Emirates, on December 28, 2021.

For further information, please refer to Information Notice No. 15/2021.


Source: www.wipo.int

Sep 09, 2021 (Newsletter Issue 14/21)
Withdrawal of Notification on Division of International Registrations by Belarus
On July 29, 2021, the Office of Belarus withdrew the notification made under Rule 40(6) of the Regulations under the Madrid Protocol with immediate effect.

Consequently, as from that date, the Office of Belarus can present to the International Bureau of WIPO requests for the division of an international registration under Rule 27bis(1) of the Regulations.


Source: www.wipo.int

Jul 01, 2021 (Newsletter Issue 13/21)
Ratification of Geneva Act of Lisbon Agreement on Appellations of Origin and GIs by Hungary
On June 10, 2021, Hungary deposited its instrument of ratification of the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications ("Geneva Act").

The Geneva Act of the Lisbon Agreement will enter into force, with respect to Hungary, on September 10, 2021.


Source: www.wipo.int

Jun 17, 2021 (Newsletter Issue 12/21)
Accession to Nice and Locarno Classification by Paraguay
On May 31, 2021, WIPO informed about the accession of Paraguay to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks and to the Locarno Agreement Establishing an International Classification for Industrial Designs.

Both agreements enter into force in Paraguay on August 31, 2021.


Source: www.wipo.int

Jun 17, 2021 (Newsletter Issue 12/21)
Statements of Grant of Protection for Hague Designs Designating Spain
As of April 5, 2021, the Spanish Patent and Trademark Office (OEPM) automatically issues statements of grant of protection concerning all, or some of, the designs included in Hague System international registrations in which Spain is designated. This is in accordance with Rule 18bis(1) of the Common Regulations.

The OEPM issues these statements at the end of the applicable refusal period if no opposition has been filed.


Source: www.wipo.int

May 06, 2021 (Newsletter Issue 9/21)
Accession to Nice Agreement by Saudi Arabia
On April 22, 2021, the Government of Saudi Arabia deposited its instruments of accession to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of June 15, 1957, as revised at Stockholm on July 14, 1967, and at Geneva on May 13, 1977, and as amended on September 28, 1979.

The Nice Agreement will enter into force, with respect to the Kingdom of Saudi Arabia, on July 22, 2021.


Source: www.wipo.int

Apr 22, 2021 (Newsletter Issue 8/21)
Ruanda Specifies Maximumum Duration of International Designs
On April 20, 2021, the WIPO received from the Office of the Registrar General, Rwanda Development Board (RDB), the declaration as required under Article 17(3)(c) of the Geneva Act (1999) of the Hague Agreement Concerning the International Registration of Industrial Designs, specifying that the maximum duration of protection provided for by the legislation of Rwanda in respect of industrial designs is 15 years.

The 15-year maximum duration of protection applies to all international registrations designating Rwanda, including those whose international registration date is before the date of this Information Notice.


Source: www.wipo.int

Apr 22, 2021 (Newsletter Issue 8/21)
Belarus Joins the Hague System
On April 19, 2021, the Government of Belarus deposited its instrument of accession to the 1999 Geneva Act of the Hague Agreement with WiPO.

As of July 19, 2021, companies and designers in Belarus can begin using the Hague System to protect their designs internationally by filing a single international application. Non-residents seeking design protection in Belarus will be able to designate the Hague System’s newest contracting party in their international applications as well.


Source: www.wipo.int

Apr 22, 2021 (Newsletter Issue 8/21)
Pakistan Joins Madrid Protocol
On February 24, 2021, Pakistan deposited with WIPO its instrument of accession to the Madrid Protocol, containing:
- the declaration extending the refusal period to 18 months and making it possible to notify refusals based on opposition after the expiry of that period (Article 5(2)(b) and (c) of the Madrid Protocol);
- the declaration indicating that Pakistan wishes to receive an individual fee when it is designated in an international application, in a subsequent designation and in respect of the renewal of an international registration (Article 8(7)(a) of the Madrid Protocol). The amounts of that individual fee will be the subject of a separate information notice;
- the notification indicating that Pakistan requires, when it is designated under the Madrid Protocol, a declaration of intention to use the mark (Rule 7(2) of the Regulations under the Madrid Protocol);
- the notification indicating that the recording of licenses in the International Register shall have no effect in Pakistan (Rule 20bis(6)(b) of the Regulations under the Madrid Protocol); and
- the notification indicating that the Office of Pakistan will not present to WIPO requests for the merger of international registrations resulting from division because the law of Pakistan does not provide for the merger of registrations of a mark (Rule 27ter(2)(b) of the Regulations under the Madrid Protocol).

The Madrid Protocol will enter into force on May 24, 2021.

For further Information can be seen in the Information Notice No. 4/2021 here


Source: www.wipo.int

Apr 08, 2021 (Newsletter Issue 7/21)
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

Apr 08, 2021 (Newsletter Issue 7/21)
Accession to Geneva Act of Lisbon Agreement on Appellations of Origin and GIs by Oman
On March 30, 2021, Oman deposited its instrument of accession to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications ("Geneva Act").

The Geneva Act of the Lisbon Agreement will enter into force, with respect to Oman, on June 30, 2021.


Source: www.wipo.int

Mar 25, 2021 (Newsletter Issue 6/21)
New Interfaces for Hague System Website
WIPO informs that they have launched a set of new web interfaces providing more in depth information about the Hague System and the procedures for filing international design applications, renewing / managing international registrations and searching existing designs. Furthermore, the navigation to the online services and resources from the Hague home page have been improved.

Source: www.wipo.int

Mar 25, 2021 (Newsletter Issue 6/21)
More Time to Download Hague System Electronic Notifications
WIPO informs that they have extended the validity of the secure download links included in the Hague System notification emails from three to six months. By this, the owner will receive twice as much time to access and download the Hague electronic notifications. This change became effective as of March 19, 2021.

Source: www.wipo.int

Mar 11, 2021 (Newsletter Issue 5/21)
E-Management of Transactions Relating to Representatives
On March 1, 2021, the WIPO informs that users of the Madrid System may now manage all transactions relating to representatives online, via the WIPO IP Portal.

This service allows users to appoint a representative to act on their behalf to manage international registrations before WIPO, request changes in the representative’s name and/or contact information and cancel the representative.

This electronic version of both the MM10 and MM12 forms can now be performed entirely online and follows a step-by-step process.


Source: www.wipo.int

Mar 11, 2021 (Newsletter Issue 5/21)
Pakistan Joins the Madrid System
On February 24, 2021, Pakistan deposited its instrument of accession to the Madrid Protocol with WIPO. The Protocol will enter into force for Pakistan on May 24, 2021.

Starting May 24, 2021, local brand owners in Pakistan can begin using the Madrid System to protect their trademarks in the 123 territories of the System’s other 107 members by filing a single international application and paying a single set of fees.

With its straightforward designation process, foreign companies and trademark owners can, from May 24, 2021, seek trademark protection through the Madrid System when selling their products and services in the Islamic Republic of Pakistan.


Source: www.wipo.int

Feb 25, 2021 (Newsletter Issue 4/21)
eHague Gateway Introduced
WIPO informs about a new online gateway eHague which provides centralized access to existing online services for filing international design applications and renewing registrations.

The new eHague gateway is directly accessible from the Hague System homepage here, replacing previous individual links to eFiling and eRenewal. User should be aware that individual links to eRenewal will shortly be removed from the Hague homepage.

The range of services offered through eHague will be gradually extended. Users will be able to
- manage their portfolio directly (e.g. update details, renew registrations, make payments);
- receive electronic alerts on design registration life-cycle events including renewals, payments and decisions by contracting parties;
- initiate actions, e.g. request extracts; and
- view and search official Hague notifications.


Source: www.wipo.int

Feb 11, 2021 (Newsletter Issue 3/21)
Ratification to Geneva Act of Lisbon Agreement on Appellations of Origin and GIs by France
On January 21, 2021, the WIPO notified the deposit by the Government of the French Republic of its instrument of ratification of the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications (Geneva Act of the Lisbon Agreement), adopted at Geneva on May 20, 2015.

The Geneva Act of the Lisbon Agreement will enter into force, with respect to the French Republic, on April 21, 2021.


Source: www.wipo.int

Feb 11, 2021 (Newsletter Issue 3/21)
Hague System Common Regulations Amended
The new February 2021 edition of the Hague System’s Common Regulations is now available.

The recent amendments establish a new requirement to provide WIPO with an email address when:
- filing an international application;
- requesting a change in ownership of an international registration; and
- appointing a representative in order for customers to benefit from Hague electronic communications.

The amendments are in force as of February 1, 2021.

More information on the notice, please click here


Source: www.wipo.int

Feb 11, 2021 (Newsletter Issue 3/21)
Communication Procedures by CIPO for International Registrations
The Canadian Intellectual Property Office (CIPO) has provided information to the International Bureau of WIPO on the communication procedures followed by CIPO in respect of international registrations designating Canada.

For more information, please click here. The notice can be accessed here


Source: www.wipo.int

Feb 11, 2021 (Newsletter Issue 3/21)
Ratification of Protocol on Protection of Industrial Designs of Several Countries
On January 12, 2021, Kazakhstan deposited the instrument of ratification of the Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention with WIPO. The Protocol shall enter into force three months after depositing its instrument of ratification in respect of Kazakhstan.

On January 11, 2021, Russia deposited the instrument of ratification of the Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention with WIPO. The Protocol shall enter into force three months after depositing its instrument of ratification in respect of the Russian Federation.

Armenia deposited the instrument of ratification of the Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention with WIPO on December 17, 2020, Azerbaijan on December 9, 2020, and Kyrgyzstan on October 15, 2020. The Protocol on the Protection of Industrial Designs shall enter into force on March 17, 2021, in respect to the first three states that have ratified it - the Kyrgyz Republic, the Republic of Azerbaijan and the Republic of Armenia.


Source: www.eapo.org

Jan 28, 2021 (Newsletter Issue 2/21)
Extension of Several Treaties and Agreeements to Guernsey and/or Isle of Man
On December 23, 2020, the United Kingdom of Great Britain (UK) and Northern Ireland deposited the following declarations with WIPO for the international relations of which the UK is responsible:

- in accordance with Article 62(3) of the Patent Cooperation Treaty (PCT), the United Kingdom's ratification of the PCT (see PCT Notification No. 13), shall be extended to Guernsey;

- the United Kingdom's ratification of the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (Geneva Act) (see Hague Notification No. 133), shall be extended to Guernsey;

- in accordance with Article 13 of the Locarno Agreement Establishing an International Classification for Industrial Designs (Locarno Agreement), the United Kingdom's accession to the Locarno Agreement (see Locarno Notification No. 55), shall be extended to the Isle of Man; and

- in accordance with Article 13 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Agreement), that the United Kingdom's ratification of the Nice Agreement (see Nice Notification No. 45), shall be extended to Guernsey and the Isle of Man.

The said declarations shall enter into force, with respect to the territories as stipulated in the respective declarations, on March 23, 2021.

More information on the notice, please click here


Source: www.wipo.int

Jan 28, 2021 (Newsletter Issue 2/21)
Official Forms Updated / New Accompanying Notes for Filing
WIPO informs that the official forms for international applications have been updated. In addition, new accompanying notes for filing for the most commonly used forms are available.

The following main changes have been introduced:
− removal of the cover page;
− update of the layout design to highlight the fields where applicants and holders must provide information;
− creation of one field for each applicant, each new holder and for the representative to indicate each his or her own e-mail address, in anticipation of changes to the Regulations that will enter into force on February 1, 2021, making e-mail address a prescribed indication; and
− introduction of a new continuation sheet to clarify how information should be indicated where there are joint applicants or joint new holders.

The new notes for filing will guide users when completing the official forms and help them avoid irregularities. Currently, the notes have been published in English and are available for the 10 most commonly used official forms. Other languages will follow.

More information on the notice, please click here


Source: www.wipo.int

Jan 14, 2021 (Newsletter Issue 1/21)
Indication of e-Mail Adress to be Required for Int. Registrations
The Madrid Union Assembly adopted amendments to Rules 3, 9, 21, 25 and 36 of the Regulations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Regulations) that will enter into force on February 1, 2021.

The amendments to Rules 3, 9, 25 and 36 of the Regulations will require that 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, indicate their electronic mail (e mail) address.

The International Bureau will send all communications to applicants, holders or representatives by electronic means to the e mail address on record or by postal services.

If the e-mail address is not indicated, there is an irregularity which the applicant may remedy within three months in order to avoid abandonment of the request by the applicant, holder or representative.

More information can be seen here


Source: www.wipo.int

Jan 14, 2021 (Newsletter Issue 1/21)
Extension of UK International Registrations to Gibraltar and Guernsey
On October 1, 2020, the United Kingdom of Great Britain and Northern Ireland deposited a declaration with WIPO stating that the United Kingdom’s ratification of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks shall be extended to the territories of Gibraltar and the Bailiwick of Guernsey, as from January 1, 2021.

Gibraltar
The Protocol will apply to Gibraltar in respect of designations of the United Kingdom in international registrations and in subsequent designations bearing a date of January 1, 2021, or later.

Guernsey
Applicants and holders may designate the Bailiwick of Guernsey in international applications and in subsequent designations bearing a date of January 1, 2021, or later. The IP Office of the Registrar in Guernsey will be the Office of the designated Contracting Party in respect of any designation of the Bailiwick of Guernsey recorded in the International Register. It will also be the Office of origin for international applications originating of Guernsey.

More information on the notice, please click here


Source: www.wipo.int

Jan 14, 2021 (Newsletter Issue 1/21)
Chile Undertakes First Steps Towards Ratification of Madrid Protocol
The Instituto Nacional de Propiedad Industrial (INAPI) informs the draft Agreement approving the Protocol concerning the Madrid Agreement on the international registration of trademarks was submitted to the first constitutional procedure for ratification on December 2, 2020.

For more information, please refer to INAPI's website here (in Spanish only).


Source: www.inapi.cl

Dec 03, 2020 (Newsletter Issue 20/20)
A Single Format for Exchange with Offices
WIPO informs that structured data of international registrations, which are subject of exchange with Offices, are currently provided by the Office in both DTD and ST.96 format. This is also the case for international registrations published in the International Designs Bulletin (IDB).

As of March 31, 2021, the ST.96 format (version 4.0) will be the only authoritative and supported source of structured data. The change is to ensure accuracy and consistency of the data provided as the representation certain design-specific information in sufficient detail or scale to non-Latin languages is not possible with the DTD format.

The 12/2021 edition of the Bulletin, to be published on Friday, March 26, 2021, will be the last to use DTD as an authoritative format.

More information can be seen here


Source: www.wipo.int

Dec 03, 2020 (Newsletter Issue 20/20)
Accession to Geneva Act of Lisbon Agreement on Appellations of Origin and GIs by Laos
On November 20, 2020, the WIPO notified the deposit by the Government of the Lao People's Democratic Republic of its instrument of accession to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications (Geneva Act of the Lisbon Agreement), adopted at Geneva on May 20, 2015.

The Geneva Act of the Lisbon Agreement will enter into force, with respect to the Lao People's Democratic Republic, on February 20, 2021.


Source: www.wipo.int

Dec 03, 2020 (Newsletter Issue 20/20)
2021 Version of Nice Classification
WIPO informs that the new 2021 version of the eleventh 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, 2021. The 2021 version of the Nice Classification “NCL(11-2021)” includes a number of changes with regard to the previous version.

The Office will not reclassify the list of goods and services in international registrations with a date earlier than January 1, 2021.

The Madrid Goods & Services Manager will be updated to reflect the changes introduced by the 2021 version which is available here

For more information on the notice, please click here


Source: www.wipo.int

Nov 19, 2020 (Newsletter Issue 19/20)
New Online Service for Limitation Requests of Goods/Services of International Registrations
On November 9, 2020, WIPO inform that users of the Madrid System will now be able to submit requests for the recording of a limitation online, via the WIPO IP Portal.

This service allows users to restrict the list of goods and services for some or all of the designated Contracting Parties (countries/regions) in their international registration.

This electronic version of the MM6 form can be performed entirely online and follows a step-by-step process. Once completed, users are able to pay their fees and submit their request online.

For more information, please click here


Source: www.wipo.int

Nov 19, 2020 (Newsletter Issue 19/20)
Withdrawal of Notification on Division of Intl. Registrations by Colombia
On November 13, 2020, WIPO received a communication from the Office of Colombia withdrawing the notification made by Colombia under Rule 40(6) of the Regulations under the Madrid Protocol (“Regulations”).

Such withdrawal will become effective on January 4, 2021.

Consequently, as from January 4, 2021, the Office of Colombia will be able to present to the International Bureau of WIPO requests for the division of an international registration under Rule 27bis(1) of the Regulations.

For more information, please click here


Source: www.wipo.int

Nov 19, 2020 (Newsletter Issue 19/20)
Declarations on Accession to Madrid Protocol by Trinidad and Tobago
On October 12, 2020, the Government of Trinidad and Tobago deposited with WIPO its instrument of accession to the Madrid Protocol, containing:

- the declaration extending the refusal period to 18 months and making it possible to notify refusals based on opposition after the expiry of that period (Article 5(2)(b) and (c) of the Madrid Protocol);
- the declaration indicating that Trinidad and Tobago wishes to receive an individual fee when it is designated in an international application, in a subsequent designation and in respect of the renewal of an international registration (Article 8(7)(a) of the Madrid Protocol). The amounts of that individual fee will be the subject of a separate information notice;
- the notification indicating that Trinidad and Tobago requires, when it is designated under the Madrid Protocol, a declaration of intention to use the mark (Rule 7(2) of the Regulations under the Madrid Protocol);
- the notification indicating that the Office of Trinidad and Tobago will not present to WIPO requests for the merger of international registrations resulting from division because the law of Trinidad and Tobago does not provide for the merger of registrations of a mark (Rule 27ter(2)(b) of the Regulations under the Madrid Protocol).

The Madrid Protocol will enter into force, with respect to Trinidad and Tobago, on January 12, 2021.

For further information, please refer to Information Notice No. 63/2020 here


Source: www.wipo.int

Nov 05, 2020 (Newsletter Issue 18/20)
Brazilian IP Office Extents Scope as Depositing Office of WIPO DAS
On October 12, 2020, WIPO informs that the Brazil National Institute of Industrial Property (INPI) notified the International Bureau in accordance with paragraphs 10 of the Framework Provisions that it would extend its scope to Trademark and Industrial Design applications as a depositing office from August 3, 2020.

For more information, please click here


Source: www.wipo.int

Nov 05, 2020 (Newsletter Issue 18/20)
French IP Office to Commence Operations as Depositing Office of WIPO DAS Soon
The French National Institute of Industrial Property (INPI) notified WIPO in accordance with paragraphs 10 and 12 of the Framework Provisions for the WIPO Digital Access Service (DAS) that INPI would commence operation as a depositing Office of WIPO DAS with effect from December 1, 2020.

Technical and operational options adopted by INPI are:
- INPI as a depositing Office will deposit certified copies of patent and utility model applications as priority documents, including PCT applications filed at their Office on and after December 1, 2020, which the applicant specifically requests be made available to the service.
- All documents and information will be exchanged in greyscale or color and in PDF format through the WIPO DAS Office web portal and based on WIPO PCT-EDI.

For more information, please click here


Source: www.wipo.int

Nov 05, 2020 (Newsletter Issue 18/20)
Icelandic IP Office Provides Madrid e-Filing
Since October 7, 2020, the Icelandic Intellectual Property Office has given access to Madrid e-Filing service to trademark applicants via its website. Brand owners will have the possibility to file international applications online.

Conveniently nestled within the e-Filing service, users will have direct access to Madrid Goods & Services Manager to check the classification of terms in their list of goods and services.

The extension to Madrid e-Filing allows Icelandic brand owners to take advantage of its latest feature: the ability to communicate with their Office of origin and immediately receive and respond to irregularities issued by WIPO electronically. This feature is available to all participating Offices and helps to save a significant amount of time in the processing of international registrations.

For more information, please click here


Source: www.wipo.int

Oct 22, 2020 (Newsletter Issue 17/20)
Accession to Madrid Protocol by Trinidad and Tobago
On October 12, 2020, the Government of Trinidad and Tobago deposited its instrument of accession to the Madrid Protocol with WIPO’s Director General.

The Protocol will enter into force for Trinidad and Tobago on January 12, 2021.

After this date, local brand owners in Trinidad and Tobago can begin using the Madrid System to protect their trademarks in the 122 territories of the System’s other 106 members by filing a single international application and paying a single set of fees.


Source: www.wipo.int

Oct 22, 2020 (Newsletter Issue 17/20)
Declarations by UK and Northern Ireland on Several Treaties
On October 1, 2020, WIPO notifies the deposit by the Government of the United Kingdom of Great Britain and Northern Ireland of the following declarations:

- in accordance with Article 24(1) of the Paris Convention for the Protection of Industrial Property (Paris Convention), the Government of the United Kingdom of Great Britain and Northern Ireland declares that the United Kingdom's ratification of the Paris Convention (see Paris Notification No. 7), shall be extended to the territory of Gibraltar, for the international relations of which the United Kingdom is responsible;

- in accordance with Article 31(1) of the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention), the Government of the United Kingdom of Great Britain and Northern Ireland declares that the United Kingdom's ratification of the Berne Convention (see Berne Notification No. 125), shall be extended to the territory of Gibraltar, for the international relations of which the United Kingdom is responsible;

- the Government of the United Kingdom of Great Britain and Northern Ireland declares that the United Kingdom's ratification of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) (see Madrid (Marks) Notification No. 66), shall be extended to the territories of Gibraltar and the Bailiwick of Guernsey, for the international relations of which the United Kingdom of is responsible;

- in accordance with Article 13 of the Nice Agreement Concerning the Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Agreement), the Government of the United Kingdom of Great Britain and Northern Ireland declares that the United Kingdom's ratification of the Nice Agreement (see Nice Notification No. 45), shall be extended to the territory of Gibraltar, for the international relations of which the United Kingdom is responsible; and

- in accordance with Article 62(3) of the Patent Cooperation Treaty (PCT), the Government of the United Kingdom of Great Britain and Northern Ireland declares that the United Kingdom's ratification of the Treaty (see PCT Notification No. 13), shall be extended to the territory of Gibraltar, for the international relations of which the United Kingdom is responsible.

The respective declarations as stipulated above shall enter into force, with respect to the territories on January 1, 2021.

For more information, please click here


Source: www.wipo.int

Oct 08, 2020 (Newsletter Issue 16/20)
Vietnam No Longer Collects Fees under Madrid Protocol
WIPO informs that they received a communication from the Office of Viet Nam withdrawing the notification made by Viet Nam under Rule 34(2)(b) of the Regulations under the Madrid Protocol (“Regulations”).

Consequently, as from September 1, 2020, the Office of Viet Nam no longer collects and forwards to WIPO the fees due under the Madrid Protocol and its Regulations.

For more information, please click here


Source: www.wipo.int

Oct 08, 2020 (Newsletter Issue 16/20)
New Database of IP Judicial Decisions Launched
On September 24, 2020, WIPO launched WIPO Lex-Judgments, a new database providing free access to leading judicial decisions related to IP law from around the world.

The cases are selectively curated by the relevant authorities in participating member states. At launch it contained over 400 documents from 10 countries.

The new database can be accessed here


Source: www.wipolex.wipo.int

Oct 08, 2020 (Newsletter Issue 16/20)
Accession to Vienna Agreement by Saudi Arabia
On September 3, 2020, WIPO notified the deposit by Saudi Arabia of its instrument of accession to the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks.

The said instrument of accession contained the following declaration:
- In accordance with Article 16(2) of the Vienna Agreement, the Kingdom of Saudi Arabia does not consider itself bound by the provisions of paragraph (1) of Article 16 relating to the settlement of any dispute before the International Court of Justice.

The said Agreement will enter into force on December 3, 2020.


Source: www.wipo.int

Sep 24, 2020 (Newsletter Issue 15/20)
Thirteenth Edition of Locarno Classification Announced
WIPO informs that the thirteenth edition of the Locarno Classification which is used to classify goods for the purpose of the registration of industrial designs, will enter into force on January 1, 2021.

Source: www.wipo.int

Sep 24, 2020 (Newsletter Issue 15/20)
EUIPO Commenced Operations as Accessing Office of WIPO DAS
On July 28, 2020, the European Union Intellectual Property Office (EUIPO) notified the International Bureau that it would commence operation as an accessing office with effect from September 12, 2020.

As an Accessing Office, the technical and operational options adopted by the EUIPO are:
- recognize priority documents available to it through the service for the purposes of any application for which the WIPO DAS code has been supplied at the time of filing.
- accept color, grayscale black and white documents in PDF or JPEG format as deposited by the Depositing Office.

For more information, please click here


Source: www.wipo.int

Sep 24, 2020 (Newsletter Issue 15/20)
Mexican IP Office to Commence Operations as Depositing & Accessing Office of WIPO DAS Soon
The Mexican Institute of Industrial Property (IMPI) notified WIPO in accordance with paragraphs 10 and 12 of the Framework Provisions for the WIPO Digital Access Service (DAS) that IMPI would commence operation as both a depositing Office and an accessing Office of WIPO DAS with effect from November 3, 2020.

Technical and operational options adopted by IMPI are:
- IMPI as a depositing Office will deposit certified copies of patent, utility model and industrial design applications as priority documents, including PCT applications filed at our Office on and after November 3, 2020, which the applicant specifically requests be made available to the service.
- IMPI as an accessing Office will recognize priority documents available to it through the service for the purposes of any application for which the time for furnishing the priority document has not expired by November 3, 2020.
- All documents and information will be exchanged in greyscale or color and in PDF format through the WIPO DAS Office web portal and based on WIPO PCT-EDI; As an Accessing Office, the Office will accept color, greyscale black and white documents in PDF format as deposited by depositing Office, namely The Hague International applications, PCT International applications, national industrial design applications, national patent applications and national utility model applications.

For more information, please click here


Source: www.wipo.int

Aug 06, 2020 (Newsletter Issue 13/20)
Brexit Agreement / Implications after Transition Period for Users
The Agreement on the Withdrawal of the United Kingdom (UK) from the European Union (EU) provides for a transition period ending on December 31, 2020. The Government of the UK has indicated the steps that it will take to deliver continued protection in the UK to marks in international registrations with effect in the EU before the end of the transition period.

International registrations under the Madrid System that EUIPO has neither refused nor protected on January 1, 2021
Holders of an international registration designating the EU that the EUIPO has neither refused nor protected on January 1, 2021, will be able to apply for a national trademark registration with the Office of the United Kingdom (UKIPO) in the nine months after January 1, 2021. The initial date of the designation of the EU will be preserved.

The same applies for holders whose international registration or subsequent designation of the EU, as the case may be, is inscribed in the International Register after the end of the transition period, but with a date earlier than January 1, 2021. In this case, the said nine-month period will be counted from the date on which the international registration or subsequent designation of the EU is inscribed in the International Register.

International registrations under the Madrid System protected in the EU before January 1, 2021
Following the end of the transition period, a comparable national trademark, recorded on the UK Register, will be created for every international registration protected in the EU before the end of the said period.

Where protection results from multiple designations of the EU in one international registration (e.g. a designation made in the international application and a subsequent designation) one comparable national trademark will be created for each designation.

These newly created comparable UK trademarks will be independent from the international registration and governed by UK law. Holders will have to manage them directly with the UKIPO.

Rights of holders of existing international registrations
The end of the transition period will not negatively affect the rights of holders of existing international registrations for which the EU is the Contracting Party of the holder and who are nationals of or domiciled in the UK or have a real and effective industrial or commercial establishment in this country. The same will apply to international applications filed with the EUIPO by UK nationals or entities before the end of the transition period.

After the end of the transition period, the holder may subsequently designate the United Kingdom in the international registration that prompted the creation of a comparable United Kingdom trademark.

For further information, please click here


Source: www.wipo.int

Aug 06, 2020 (Newsletter Issue 13/20)
New Service WIPO PROOF in French and Spanish Available
WIPO PROOF, the newest digital business service for safeguarding intellectual assets, is now available in French and Spanish. By the end of the year, the new service will be available in nine languages.

Source: www.wipo.int

Jul 23, 2020 (Newsletter Issue 12/20)
Measures on Certified Documents and Extracts Services
As from July 13, 2020, WIPO informs that the Office will resume legalization of documents and expedited services again. Previously, the service was suspended by Information Notice No. 12/2020, published on March 31, 2020.

Further, WIPO will deliver certified copies of certificates of international registration and renewal, attestations and simple as well as detailed certified extracts by electronic means only, as portable document format (PDF) files as from July 13, 2020. The Office will send by postal mail print copies of the above mentioned documents upon express request only. WIPO will continue to send all legalized documents by postal mail.

More information can be seen here


Source: www.wipo.int

Jul 23, 2020 (Newsletter Issue 12/20)
New Online Service ‘Madrid Application Assistant’ Launched
On July 20, 2020, WIPO informs that the Office has launched the Madrid Application Assistant, which automatically records all the information required to complete an international application.

The Madrid Application Assistant helps users to generate high-quality application files. Through the data import from the Office of origin’s national/regional trademarks database, the application is automatically pre-populated with the relevant information for a Madrid international application from contact details to a full list of goods and services. Built-in features also include the automatic verification of the classification of the list of goods and services, as well as its translation. This reduces user effort while also lessening the risk of irregularities, thus making the process of filing an international application more efficient and accurate.

More information and to access the Madrid Application Assistent, please click here


Source: www.wipo.int

Jul 23, 2020 (Newsletter Issue 12/20)
Austria Becoming Depositing and Accessing Office for WIPO DAS
The Austrian Patent Office (APO) notified WIPO in accordance with paragraphs 10 and 12 of the Framework Provisions for the Digital Access Service for Priority Documents (DAS) that it would commence operation as a depositing and accessing office with effect from October 1, 2020.

Technical and operational options adopted by APO are:
- APO as a depositing Office will deposit certified copies of patent, utility model, industrial design and trademark applications as priority documents, including PCT applications filed with the Office on and after October 1, 2020, which the applicant specifically requests be made available to the service
- APO as an accessing Office will recognize priority documents available to it through the service for the purposes of any application for which the time for furnishing the priority document has not expired by October 1, 2020.
- All documents and information will be exchanged in black and white or color and in PDF format through the WIPO DAS Office web portal and based on WIPO PCT-EDI;
- As an Accessing Office, the Office will accept color, greyscale black and white documents in PDF format as deposited by the depositing

More information can be seen here


Source: www.wipo.int

Jul 09, 2020 (Newsletter Issue 11/20)
EUIPO Becomes Depositing Office for WIPO DAS
EUIPO notified the International Bureau in accordance with paragraphs 10 and 12 of the Framework Provisions for the Digital Access Service for Priority Documents (DAS) that it would commence operation as a depositing office with effect from July 11, 2020.

EUIPO as a depositing Office will deposit certified copies of Industrial Design applications as priority documents, filed at the EUIPO from July 11, 2020 onwards, which the applicant specifically requests be made available to the service.

All documents and information will be exchanged in black and white or color and in PDF format through the WIPO DAS Office web portal and based on WIPO DAS.

More information can be seen here


Source: www.wipo.int

Jul 09, 2020 (Newsletter Issue 11/20)
Declarations by UA on Hague Agreement of Industrial Designs on Protection Term
On May 30, 2020, WIPO received from the Ministry for Development of Economy, Trade and Agriculture of Ukraine, the declarations as required under Article 17(3)(c) of the Geneva Act (1999) of the Hague Agreement Concerning the International Registration of Industrial Designs, and Rule 36(2) of the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement, specifying that the maximum duration of protection provided for by the legislation of Ukraine in respect of industrial designs is 25 years.

Source: www.wipo.int

Jun 25, 2020 (Newsletter Issue 10/20)
Locarno Classification 13th Edition Available Now
WIPO informs that an advance electronic publication of the Locarno Classification 13th edition is now available on LOCPUB. The 13th edition of the Locarno Classification will enter into force on January 1, 2021.

Source: www.wipo.int

Jun 25, 2020 (Newsletter Issue 10/20)
Accession to Geneva Act of the Hague Agreement by Suriname
On June 10, 2020, 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 the Republic of Suriname of its instrument of accession to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs.

The Act will enter into force, with respect to the Republic of Suriname, on September 10, 2020.


Source: www.wipo.int

Jun 11, 2020 (Newsletter Issue 9/20)
New Service WIPO PROOF Launched
On May 27, 2020, WIPO launched a new online business service called WIPO PROOF, that provides tamper-proof evidence of the existence at a point in time of any digital file, including data sets, in any format.

By creating a date- and time-stamped fingerprint of a digital file, WIPO PROOF provides a sort of digital notary service by helping innovators and creators take verifiable actions to safeguard the many outputs of their work on the journey from concept to development to commercialization.

For more information, please click here


Source: www.wipo.int

May 28, 2020 (Newsletter Issue 8/20)
COVID-19 IP Policy Tracker
WIPO's COVID-19 IP Policy Tracker provides information on the current measures taken by intellectual property offices in response to the COVID-19 pandemic. It includes information on legislative and regulatory measures such as extension of deadlines and voluntary actions.

Since WIPO's tracker provides a very good overview of the measures, we are terminating our contribution to COVID-19 on our website.


Source: www.wipo.int

May 14, 2020 (Newsletter Issue 7/20)
COVID-19 IP Policy Tracker
WIPO introduced a COVID-19 IP Policy Tracker which provides information on measures adopted by IP offices in response to the COVID-19 pandemic, such as the extension of deadlines. In addition, the policy tracker provides information on legislative and regulatory measures for access and voluntary actions.

The COVID-19 IP Policy Tracker can be accessed here


Source: www.wipo.int

Apr 30, 2020 (Newsletter Issue 6/20)
Accession to Hague Agreement on International Registration of Industrial Designs by Mexico
On March 6, 2020, the Government of the United Mexican States deposited with WIPO its instrument of accession to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, adopted at Geneva on July 2, 1999 (the "Geneva Act").

The Geneva Act will enter into force, with respect to the United Mexican States, on June 6, 2020.


Source: www.wipo.int

Apr 02, 2020 (Newsletter Issue 5/20)
Remedies against Failure to Meet Time Limits
WIPO informs that the Office is continuing operations under the Madrid System for the International Registration of Marks and informs about the remedies and extension of time limits available for Madrid System users.

Further, WIPO reminds of the automatic extension of time limits in case an IP office is not open to the public, and to suggest measures Madrid System users can take against possible disruptions in mail or delivery services.

For more information, please check notice 7/2020 here


Source: www.wipo.int

Mar 19, 2020 (Newsletter Issue 4/20)
IP Service Operations Continuing
WIPO announced that processing applications filed via WIPO’s Global IP Services has not been affected by the Covid-19 outbreak.

So far, WIPO has been able to continue to process applications filed through the Patent Cooperation Treaty (PCT), the Madrid System for the International Registration of Marks, the Hague System for the International Registration of Industrial Designs, as well as administer other IP and related systems, including the WIPO Arbitration and Mediation Center.


Source: www.wipo.int

Mar 05, 2020 (Newsletter Issue 3/20)
Geneva Act of WIPO’s Lisbon Agreement Entered into Force
The Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications has entered into force.

The Geneva Act of the Lisbon Agreement allows now the international registration of geographical indications in addition to appellations of origin through a single registration procedure with WIPO. It also permits the accession to the Act by certain intergovernmental organizations, including the European Union and the African Intellectual Property Organization (OAPI).

For more information, please click here


Source: www.wipo.int

Mar 05, 2020 (Newsletter Issue 3/20)
New Regulations / New Schedule of Fees / New Administrative Instructions
WiPO informs about changes with regard to new Regulations, new Schedule of Fees and new Administrative Instructions.

As of February 1, 2020, the Common Regulations are renamed the Regulations under the Protocol, which indicate that the Protocol is the sole treaty governing international applications and registrations under the Madrid System.

As a result, there are amendments to the Administrative Instructions and to the Schedule of Fees.

Amendments to Rule 30 of the Regulations under the Protocol simplify renewals considerably.

For Contracting Parties that have declared for an individual fee per class, the renewal fee will be calculated taking into account only the number of classes for which protection has been granted. The simplification means that holders of international registrations who have been granted partial protection and are appealing such decision will no longer be required to pay individual fees for classes that are not protected upon renewal.

Consequently, item 4 of the renewal form MM11 and the corresponding option in e-Renewal will be removed. The new MM11 form will be available for download as from February 1, 2020.

Where a designated Contracting Party, which has declared for an individual fee per class, informs in a further statement of a change in the goods and services protected, the next renewal fee in respect of that Contracting Party will be calculated in accordance with this further statement.

For full details, please check Notice No. 1/2020


Source: www.wipo.int

Mar 05, 2020 (Newsletter Issue 3/20)
Notice of Depositing and Accessing Office by Norway
The Norwegian Industrial Property Office (NIPO) notified the International Bureau in accordance with paragraphs 10 and 12 of the Framework Provisions that it would commence operation as both a depositing office and an accessing office with effect from January 1, 2020.

- NIPO as a depositing Office will deposit certified copies of Patent, Trademark and National Industrial Design applications and PCT international applications filed with the office on and after 01.01.2018, where applicant specifically requests services to be available;
- NIPO as an accessing Office will recognize priority documents available to it through the service for the purposes of any application for which the time for furnishing the priority document has not expired by January 1, 2019.
- As an Accessing Office, the Office will accept color, greyscale black and white documents in PDF format as deposited by depositing Office.
- For patent applications, all documents and information will be exchanged in black and white and in PDF format through the WIPO DAS Office web portal and based on WIPO PCT-EDI.

For more information, please click here


Source: www.wipo.int

Feb 20, 2020 (Newsletter Issue 2/20)
Withdrawal of Notification on Division of Intl. Registrations by Bulgaria
On 17 January 2020, WIPO received a communication from the Office of Bulgaria withdrawing the notification made by Bulgaria under Rule 27bis(6) of the Common Regulations under the Madrid Agreement and the Madrid Protocol (“Common Regulations”), with immediate effect.

Consequently, as from the above-mentioned date, the Office of Bulgaria can present to the International Bureau of WIPO requests for the division of an international registration under Rule 27bis(1) of the Common Regulations.

For more information, please click here


Source: www.wipo.int

Feb 06, 2020 (Newsletter Issue 1/20)
Impact of Brexit Agreement on Users of Madrid and Hague System
The Agreement on the Withdrawal of the United Kingdom (UK) from the European Union (EU) provides for a transition period starting on February 1, 2020, the date on which the UK will leave the EU and ending on December 31, 2020.

International registrations under the Madrid System for the International Registration of Marks designating the European Union, including those designations made during the above-mentioned transition period, will continue to have effect in the United Kingdom during this period.

Nationals of the United Kingdom and those who are domiciled or have a real and effective industrial or commercial establishment in the United Kingdom and in whose name stands an application or registration with the Office of the European Union, may continue to file international applications with this Office, as Office of origin, during the transition period.

Furthermore, international registrations under the Hague System designating the European Union, including such international registrations made during the above-mentioned transition period, will continue to have effect in the United Kingdom during this period.

For further information on Madrid System, please check Information Notice No. 2/2020 and on Hague System Information Notice No. 2/2020


Source: www.wipo.int

Dec 05, 2019 (Newsletter Issue 17/19)
Accession to Hague Agreement on International Registration of Industrial Designs by Some Countries

Accession to Hague Agreement on International Registration of Industrial Designs by Israel

On October 3, 2019, Israel deposited with WIPO its instrument of accession to the Geneva (1999) Act of the Hague Agreement Concerning the International Registration of Industrial Designs.

The instrument of accession was accompanied by the following declarations:
– the declaration referred to in Article 4(1)(b) of the 1999 Act, whereby international applications may not be filed through its Office;
– the declaration referred to in Article 7(2) of the 1999 Act, whereby, in connection with an international application in which Israel is designated, and in connection with the renewal of any international registration resulting from such an international application, the prescribed designation fee shall be replaced by an individual designation fee. The details of the declaration and the amount of the individual designation fee will be the subject of a further information notice;
– the declaration referred to in Article 11(1)(a) of the 1999 Act, whereby the maximum period for the deferment of the publication of an industrial design provided for by the legislation of Israel is six months from the filing date;
– the declaration as required under Article 17(3)(c) of the 1999 Act, specifying that the maximum duration of protection provided for by the legislation of Israel for industrial designs is 25 years; and
– the declaration referred to in Rule 18(1)(b) of the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement, whereby where Israel is designated, the prescribed period of six months for notifying a refusal of the effects of an international registration is replaced by a period of 12 months.

In accordance with Article 28(3)(b) of the 1999 Act, the 1999 Act and the declarations made will enter into force with respect to Israel on January 3, 2020.

For further information, please check here

Source: www.wipo.int


Accession to Hague Agreement on International Registration of Industrial Designs by Samoa

On October 2, 2019, the Government of Samoa deposited with WIPO its instrument of accession to the Geneva (1999) Act of the Hague Agreement Concerning the International Registration of Industrial Designs.

The instrument of accession was accompanied by the following declarations:
– the declaration referred to in Article 11(1)(a) of the 1999 Act, whereby the maximum period for the deferment of the publication of an industrial design provided for by the legislation of Samoa is 12 months from the filing date or, where priority is claimed, from the priority date; and
– the declaration as required under Article 17(3)(c) of the 1999 Act, specifying that the maximum duration of protection provided for by the legislation of Samoa in respect of industrial designs is 15 years.

In accordance with Article 28(3)(b) of the 1999 Act, the 1999 Act and the declarations made will enter into force, in respect of Samoa, on January 2, 2020.

For further information, please check here

Source: www.wipo.int


Accession to Hague Agreement on International Registration of Industrial Designs by Vietnam

On September 30, 2019, Vietnam deposited with WIPO its instrument of accession to the Geneva (1999) Act of the Hague Agreement Concerning the International Registration of Industrial Designs.

The instrument of accession was accompanied by the following declarations:
– the declaration referred to in Article 5(2)(a) of the 1999 Act, whereby an international application designating Viet Nam shall contain a brief description of the characteristic features of the design, pursuant to Article 5(2)(b)(ii);
– the declaration referred to in Article 5(2)(a) of the 1999 Act, whereby an international application designating Viet Nam shall contain a claim for protection of the design, pursuant to Article 5(2)(b)(iii), in compliance with the common form: “Application for overall protection for industrial design(s) as shown and described”;
– the declaration referred to in Article 11(1)(b) of the 1999 Act, whereby the legislation of Viet Nam does not provide for the deferment of the publication of an industrial design;
– the declaration referred to in Article 13(1) of the 1999 Act, whereby, in accordance with the legislation of Viet Nam, only one independent and distinct design may be claimed in a single international application, except that:
(i) designs that are the subject of the same international application must belong to the same set of composition of items and conform to a requirement of unity of design, unity of use or accompaniment of each other in use, or
(ii) a design may be accompanied by single or multiple options that are variations of that design and which must conform to a requirement of unity of design and be insignificantly different from that design;
– the declaration as required under Article 17(3)(c) of the 1999 Act, specifying that the maximum duration of protection provided for by the legislation of Viet Nam in respect of industrial designs is 15 years;
– the declaration referred to in Rule 9(3) of the Common Regulations under the 1999 Act and the 1960 Act of the Hague Agreement, whereby, where the product which constitutes the industrial design is three-dimensional, a perspective view of the industrial design is required; and
– the declaration for the application of level three of the standard designation fee, under Rule 12(1)(c)(i) of the Common Regulations.

In accordance with Article 28(3)(b) of the 1999 Act, the 1999 Act and the declarations made will enter into force, in respect of Vietnam, on December 30, 2019.

For further information, please check here

Source: www.wipo.int


Dec 05, 2019 (Newsletter Issue 17/19)
Accession to Geneva Act of the Lisbon Agreement on Appellations of Origin and GIs
The European Union (EU) joined the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications, an international registration system that provides protection for names identifying the geographic origin of products such as coffee, tea, fruits, wine, pottery, glass and cloth.

With the EU’s accession, the Geneva Act of the Lisbon Agreement will enter into force for all its contracting parties on February 26, 2020.

For further information, please check here


Source: www.wipo.int

Nov 19, 2019 (Newsletter Issue 16/19)
Syria Will Not Accept Division or Merger Requests of Intl. Registration
Syria has notified WIPO in accordance with Rules 27ter(2)(b) and 40(6) of the Common Regulations.

As a result, the Office of the Syrian Arab Republic will not present to the International Bureau of WIPO requests for the division of an international registration under Rule 27bis(1) nor requests for the merger of international registrations resulting from division under Rule 27ter(2)(a).

For further information, please check Information Notice No. 55/2019 here


Source: www.wipo.int

Nov 19, 2019 (Newsletter Issue 16/19)
New Guide for Country Code Top-Level Domain Registries
WIPO announces its new guide to their services for country code top-level domain registries.

The guide presents country code top-level domain (ccTLD) registry operators and national authorities with information on how to resolve third-party domain name disputes in a cost- and time-saving manner.

It explains the main policy design features of a successful Alternative Dispute Resolution (ADR) system and provides information on the WIPO-created Uniform Domain Name Dispute Resolution Policy (UDRP), including the possibility to tailor the UDRP for specific ccTLD requirements.

To access the guide, please click here


Source: www.wipo.int

Nov 19, 2019 (Newsletter Issue 16/19)
Accession to Several Treaties by Various Countries

Accession to Lisbon Agreement by Dominican Republic

On October 17, 2019, WIPO notified the accession to the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration of October 31, 1958, as revised at Stockholm on July 14, 1967, and amended on September 28, 1979 ("Lisbon Agreement") by the Dominican Republic.

The said instrument contained the following declarations:
- that for the purposes of the application of the Lisbon Agreement in the Dominican Republic, "… the applicable guiding principle shall be that priority for the national registration of a prior trademark shall confer rights enforceable against the application for registration of a subsequent Appellation of International Origin using the same trademark. Similarly, terms that have become generic may not be eligible for registration as Appellations of International Origin under the Lisbon Agreement; and
- likewise, Appellations of International Origin composed of compound terms for which registration is sought under the Lisbon Agreement may be registered either in their entirety, or registration may be granted for only one term, having due regard to the prior existence of similar terms in the national register…".

The said Agreement will enter into force, with respect to the Republic of Albania, January 17, 2020.

Source: www.wipo.int


Accession to Geneva Act of Lisbon Agreement by North Korea

WIPO informed that North Korea has accessed to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications ("Geneva Act") on October 8, 2019.

The Geneva Act will enter into force three months after the accession of five eligible parties.

For more information, please click here

Source: www.wipo.int


Accession to Singapore Treaty by Trinidad and Tobago

WIPO notifies the accession of Trinidad and Tobago to the Singapore Treaty on the Law of Trademarks, adopted at Singapore on March 27, 2006.

In conformity with Article 28(3), the said Treaty will enter into force, with respect to the Republic of Trinidad and Tobago, on January 4, 2020.

Source: www.wipo.int


Accession to Hague Agreement on International Registration of Industrial Designs by Israel

On October 3, 2019, the Government of Israel deposited with WIPO its instrument of accession to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, adopted at Geneva on July 2, 1999 (the "Geneva Act").

The Geneva Act will enter into force, with respect to the State of Israel, on January 3, 2020.

Source: www.wipo.int


Oct 21, 2019 (Newsletter Issue 15/19)
2020 Version of Nice Classification
WIPO informs that the new 2020 version of the eleventh 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, 2020. The 2020 version of the Nice Classification “NCL(11-2020)” includes a number of changes with regard to the previous version.

WIPO will apply the 2020 version of the Nice Classification to
- any application for international registration that is received by the Office of origin on or after January 1, 2020;
- any application for international registration that is received by the International Bureau of WIPO on or after January 1, 2020, when the said application is received by WIPO after the two-month time limit referred to in Article 3(4) of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.

Further, WIPO will insert the abbreviation “NCL(11-2020)” next to the list of goods and services in the notifications sent to designated Contracting Parties, registration certificates and publications.

The Office will not reclassify the list of goods and services in international registrations with a date earlier than January 1, 2020.

The Madrid Goods & Services Manager will be updated to reflect the changes introduced by the 2020 version which is available here

For more information on the notice, please click here


Source: www.wipo.int

Oct 21, 2019 (Newsletter Issue 15/19)
Accession to Madrid Protocol by Malaysia
On September 27, 2019, the Government of Malaysia deposited its instrument of accession to the Madrid Protocol.

By this, local brand owners in Malaysia can begin using the Madrid System to protect their marks in the 121 territories of the System’s other 105 members by filing a single international application.

The deposit includes declarations under Articles 5(2)(b) and (c) of the Protocol (extension of the refusal period to 18 months and beyond for oppositions), Article 8(7)(a) of the Protocol (individual fees), and under Rules 7(2) (intent to use) and 20bis(6)(b) (recording of licenses in the International Register has no effect in Malaysia), of the Common Regulations.

The Protocol will enter into force for Malaysia on December 27, 2019.


Source: www.wipo.int

Oct 10, 2019 (Newsletter Issue 14/19)
Notification by Germany on Recording of a License in the International Register
On August 8, 2019, the Office of Germany withdrew, with immediate effect, the notification made under Rule 20bis(6)(a) of the Common Regulations.

Consequently, as from that date, the recording in the International Register of a license granted in respect of Germany relating to an international registration of a mark has the same effect as if it had been made directly in the national Register of the Office of this Contracting Party.

For further information, please check Information Notice No. 55/2019 here


Source: www.wipo.int

Sep 05, 2019 (Newsletter Issue 12/19)
Launch of New IP Portal Soon
WIPO informs on its website that a new IP Portal will be launched in the next several months. The full range of online intellectual property services will be integrated into a single and simple portal. Some of the key features are a unified navigation, a single sign in and messaging system.

For more information, please click here


Source: www.wipo.int

Aug 22, 2019 (Newsletter Issue 11/19)
Progress in Electronic Communication of Madrid Trademark Registration in China
According to the Trademark Office (TMO) of China National Intellectual Property Administration (CNIPA), China's self-developed electronic document-sending system for the post-registration formalities of the Madrid Trademark International Registrations is now comfortably transmitting during its first-month operation, having successfully delivered 124 documents to the World Intellectual Property Organization (WIPO) as of now. The IT system is another key milestone in electronic communication between China and the Madrid system since the online debut of the Madrid filing system on June 21, 2018.

Source: www.english.sipo.gov.cn

Aug 07, 2019 (Newsletter Issue 10/19)
New Madrid e-Renewal Service Available Now
WIPO informs that the new and improved Madrid e-Renewal service has replaced the former service as of August 1, 2019. The new service gives a greater clarity as it is easier to select Contracting Parties and goods and services, as well as all renewal scenarios are covered. Further, an instant tracking is provided by a reference number send in a confirmation email and a printable summary to check the renewal status quickly and easily in Madrid Monitor.

Source: www.wipo.int

Aug 07, 2019 (Newsletter Issue 10/19)
No Local U.S. Agent Required before WIPO
WIPO announced that the new requirement of the USPTO to be represented by a U.S. licensed attorney to conduct business before the USPTO, does not apply before the International Bureau of WIPO.

Users of the Madrid System are not required to be represented by a U.S. licensed attorney when conducting business with WIPO, such as, for example, when designating the United States of America, in an international application or subsequent to the international registration, when renewing an international registration or when filing requests for recording in the International Register in respect of this Contracting Party.

For further information, please refer to Information Notice No. 52/2019 here


Source: www.wipo.int

Jul 11, 2019 (Newsletter Issue 9/19)
New Zealand Accepts Division or Merger Requests of Intl. Registrations
The Office of New Zealand has withdrawn the notification made under Rule 40(6) of the Common Regulations, with effect as from March 21, 2019.

Consequently, as from that date, the Office of New Zealand can present to the International Bureau of WIPO requests for the division of an international registration under Rule 27bis(1) of the Common Regulations and requests for the merger of international registrations resulting from division under Rule 27ter(2)(a) of the Common Regulations.

This means that international trade mark owners are able to divide goods and/or services out of their International Registration into a divisional registration. In cases where the application is undergoing examination, this will allow acceptable goods and/or services to proceed to acceptance. This also allows trade mark owners to merge records that have previously been partially assigned or divided, back into a single International Registration.

For more details on New Zealand's current process for the division or merger of international trade mark registrations, please click here.


Source: www.wipo.int, www.iponz.govt.nz

Jul 11, 2019 (Newsletter Issue 9/19)
Sint Maarten Will Not Accept Division or Merger Requests of Intl. Registration
Sint Maarten (Dutch Part) has notified WIPO in accordance with Rules 27bis(6) and 27ter(2)(b) of the Common Regulations.

In the said notification, it is indicated that the law applicable in Sint Maarten does not provide for the division of registrations of a mark nor for the merger of registrations of a mark. As a result, the Office will not present to WIPO requests for the division of an international registration under Rule 27bis(1) nor requests for the merger of international registrations resulting from division under Rule 27ter(2)(a).


Source: www.wipo.int

Jul 11, 2019 (Newsletter Issue 9/19)
Accession to Madrid Protocol by Brazil
WIPO has received Brazil’s accession document to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. The Madrid System will enter into force for Brazil three months after the deposit of the accession instrument, on October 2, 2019.

For more Information, please click here


Source: www.wipo.int

Jun 06, 2019 (Newsletter Issue 7/19)
India Will Not Accept Division or Merger of Request of Intl. Registration
The Government of India has notified the Director General of WIPO in accordance with new Rules 27ter(2)(b) and 40(6) of the Common Regulations, which entered into force on February 1, 2019.

As a result, the Office of India will not present to the International Bureau of WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).

For further information, please refer to Information Notice No. 46/2019


Source: www.wipo.int

Jun 06, 2019 (Newsletter Issue 7/19)
Madrid e-Renewal Service Launched
WIPO informs that trademark users will be able to file renewal requests completely online by accessing the Madrid e-Renewal service via their WIPO Account. The e-Renewal Service will guide trademark users step-by-step through the renewal process.

For further information, click here


Source: www.wipo.int

Jun 06, 2019 (Newsletter Issue 7/19)
Accession to Nice Agreement by Antigua and Barbuda
On March 25, 2019, WIPO notifies the deposit by the Government of Antigua and Barbuda of its instrument of accession to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of June 15, 1957, as revised at Stockholm on July 14, 1967, and at Geneva on May 13, 1977, and as amended on September 28, 1979.

The Nice Agreement will enter into force, with respect to Antigua and Barbuda, on June 25, 2019.


Source: www.wipo.int

Jun 06, 2019 (Newsletter Issue 7/19)
Brazil to Join Madrid Protocol
On May 22, 2019, the Brazilian Senate approved the Draft Legislative Decree No. 98/2019, which allows Brazil adhesion to the Madrid Protocol, the International Trademark System. The system is expected to start operating in October 2019 at the National Institute of Industrial Property (INPI).

With Brazil’s upcoming adhesion to the Madrid Protocol, the INPI needs to overcome a series of obstacles such as the backlog of applications, the language issue and the inability to accept applications in multiple trademark classes for a smooth integration into the Protocol requirements.

More information can be found here


Source: www.moellerip.com

Apr 25, 2019 (Newsletter Issue 6/19)
Accession to WIPO Convention by Solomon Islands
WIPO notifies the deposit by the Government of Solomon Islands of its instrument of accession to the Convention Establishing the World Intellectual Property Organization (WIPO Convention).

The said Convention will enter into force, with respect to Solomon Islands, on July 4, 2019.


Source: www.wipo.int

Apr 25, 2019 (Newsletter Issue 6/19)
Several Countries Will Not Accept Division or Merger of Request of Intl. Registration
BY, DE, IS, IR, KR, SE, US and VN will not Accept Division or Merger of Request of Intl. Registration
Belarus, Germany, Iceland, Ireland, the Republic of Korea, Sweden, the United States of America and Viet Nam have notified WIPO in accordance with new Rules 27ter(2)(b) and 40(6) of the Common Regulations, which entered into force on February 1, 2019.

According to the said notification:
- new Rule 27bis(1) of the Common Regulations, providing for the possibility to file a request for division, is not compatible with the laws of those Contracting Parties and does not apply to them; and,
- the laws of those Contracting Parties do not provide for the merger of registrations of a mark.

As a result, their respective Offices will not present to WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).

For further information, please refer to Information Notices Nos. 37/2019 to 44/2019


AG, BH, BG, CN, CW, FR, GE, ID, LR, MX, SM, TH and UA will not Accept Division or Merger of Request of Intl. Registration
Antigua and Barbuda, Bahrain, Bulgaria, China, the territorial entity of Curaçao, France, Georgia, Indonesia, Liberia, Mexico, San Marino, Thailand and Ukraine have notified WIPO in accordance with new Rules 27bis(6) and 27ter(2)(b) of the Common Regulations, which entered into force on February 1, 2019.

Accordingly, new Rules 27bis(1) and 27ter(2)(a) of the Common Regulations do not apply to Antigua and Barbuda, Bahrain, Bulgaria, China, the territorial entity of Curaçao, France, Georgia, Indonesia, Liberia, Mexico, San Marino, Thailand and Ukraine. As a result, their respective Offices will not present WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).

For further information, please refer to Information Notices Nos. 24/2019 to 36/2019


Source: www.wipo.int

Apr 25, 2019 (Newsletter Issue 6/19)
Artificial Intelligence-Based Image Search Tool Launched
WIPO has launched a new artificial intelligence (AI)-powered image search technology. The Office informs that by using the new technology it will be faster and easier to establish the distinctiveness of a trademark in a target market.

To access the search tool, click here. For more information on the artificial intelligence (AI)-powered image search technology, please click here


Source: www.wipo.int

Apr 04, 2019 (Newsletter Issue 5/19)
Accession to Madrid Protocol / Nice Agreement / Singapore Treaty by Canada
WIPO presents his compliments and has the honor to notify the deposit by the Government of Canada, on March 17, 2019, of its instrument of accession to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, adopted at Madrid on June 27, 1989 ("Madrid Protocol (1989)"), as amended on October 3, 2006, and on November 12, 2007. The said instrument contained the following declarations:

- in accordance with Article 5(2)(b) of the Madrid Protocol (1989), the time limit for a notification of refusal in respect of international registrations made under the Madrid Protocol will be 18 months and, under Article 5(2)(c) of the said Protocol, when a refusal of protection may result from an opposition to the granting of protection, such refusal may be notified to the International Bureau after the expiry of the 18-month time limit; and

- in accordance with Article 8(7)(a) of the Madrid Protocol (1989), the Government of Canada, in connection with each international registration in which it is mentioned under Article 3ter of the said Protocol, and in connection with the renewal of any such international registration, wants to receive, instead of a share in the revenue produced by the supplementary and complementary fees, an individual fee.

The Madrid Protocol will enter into force, with respect to Canada, on June 17, 2019.

Also, Canada joined the Nice Agreement and the Singapore Treaty which will enter into force on June 17, 2019.

For more information, please click on the respective links of the notices regarding the Madrid Protocol, Nice Agreement, and Singapore Treaty. Additional to that, the Canadian Intellectual Property Office provides a very good overview page of all the joined treaties which can be accessed here


Source: www.wipo.int

Apr 04, 2019 (Newsletter Issue 5/19)
Several Countries will not Accept Division or Merger of Request of Intl. Registration

NZ, NO and SG will not Accept Division or Merger of Request of Intl. Registration
New Zealand, Norway and Singapore have notified WIPO in accordance with new Rule 40(6) of the Common Regulations, which entered into force on February 1, 2019.

Accordingly, new Rules 27bis(1) and 27ter(2)(a) of the Common Regulations are not compatible with the laws of New Zealand, Norway and Singapore and do not apply in respect of those Contracting Parties. As a result, the Offices of those Contracting Parties will not present to the International Bureau of WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).

For further information, please refer to Information Notices Nos. 7/2019, 8/2019 and 9/2019

Notification by CU under new Rule 40(6) of the Common Regulations
Cuba has notified WIPO in accordance with new Rule 40(6) of the Common Regulations, which entered into force on February 1, 2019.

According to the said notification, new Rule 27ter(2)(a) of the Common Regulations is not compatible with the law of Cuba and does not apply in respect of Cuba. As a result, the Office of Cuba will not present to the International Bureau of WIPO requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).

For further information, please click here

AU, BX, CZ, EE, EU, GR, HU, PL, RO, RU, ES, TN Will Not Accept the Request for Merger of Intl. Registration
Austria, Benelux, the Czech Republic, Estonia, the European Union, Greece, Hungary, Poland, Romania, the Russian Federation, Spain and Tunisia have notified WIPO in accordance with new Rule 27ter(2)(b) of the Common Regulations, which entered into force on February 1, 2019.

In accordance with new Rule 27ter(2)(b) of the Common Regulations, Austria, Benelux, the Czech Republic, Estonia, the European Union, Greece, Hungary, Poland, Romania, the Russian Federation, Spain and Tunisia have declared that new Rule 27ter(2)(a) of the Common Regulations does not apply to them. As a result, their respective Offices will not present to the International Bureau of WIPO requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).

For further information, please refer to Information Notices Nos. 11/2019 to 22/2019


Source: www.wipo.int

Mar 21, 2019 (Newsletter Issue 4/19)
Accession to Lisbon Agreement by Albania
On February 8, 2019, WIPO notified the accession to the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration of October 31, 1958, as revised at Stockholm on July 14, 1967, and amended on September 28, 1979 ("Lisbon Agreement") by Albania.

The said Agreement will enter into force, with respect to the Republic of Albania, on May 8, 2019.


Source: www.wipo.int

Mar 21, 2019 (Newsletter Issue 4/19)
Belarus Will Not Accept Division or Merger Requests of Intl. Registrations
The Belarusian Intellectual Property Office (IPO)has recently notified WIPO that it will not accept applications for divisions or mergers of International trademark registrations, because Blearusion trademark legislation does not provides for the division or subsequent merger of registrations.

Namely, new Rules 27bis, 27ter and 40(6) of the Common Regulations under the Madrid Agreement entered into force on February 1, 2019, introducing the possibility for international registration holders to request the division and merger of international trademark registrations. According to the amendments, requests for division must be filed with the local IPO, and not directly with WIPO. The local IPO may examine the request to ensure that it meets the requirements in the applicable national or regional law before notifying the International Bureau of WIPO. However, contracting states are entitled to notify WIPO that they will not present division requests to WIPO if their local legislation does not provide for the division of trademark applications.


Source: www.petosevic.com

Feb 28, 2019 (Newsletter Issue 3/19)
Division and Merger of International Registrations Possible Now
WIPO informs that international registrations may be divided and merged as of February 1, 2019.

Divisions may be useful where, for example, the Office of a designated Contracting Party refuses an International Registration for only some of the classes of goods or services (or refuses only some of the goods or services within one class) covered by the International Registration.

The merger of International Registrations can be requested if they were seperated through
- the recording of a partial change of ownership
- the recording of division.

Full details of the amendments to the Common Regulations under the Madrid Agreement and Protocol concerning the division and merger of international registrations can be seen in our earlier update or at the WIPO’s website


Source: www.wipo.int

Feb 28, 2019 (Newsletter Issue 3/19)
New Terms in Goods and Services Manager
WIPO informs that there have been many changes to the Madrid Goods & Services (MGS) Manager since the beginning of 2019.

The update includes the following:
- The database is now aligned with the 2019 eleventh edition of the Nice Classification of Goods and Services, which includes 215 new terms.
- The Georgian Intellectual Property Office is a new participant. Goods and services lists can now be translated into Georgian.

For more information, please check here


Source: www.wipo.int

Jan 31, 2019 (Newsletter Issue 1/19)
Notification by SK on Common Regulations on Division/Merger of International Registrations
The Government of Slovakia has notified WIPO with new Rule 27ter(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), which will enter into force on February 1, 2019.

Slovakia has declared that new Rule 27ter(2)(a) of the Common Regulations will not apply in Slovakia. As a result, its Office will not present to WIPO requests for the merger of international registrations resulting from division under this new Rule.

More information on the notification is available here


Source: www.wipo.int

Dec 13, 2018 (Newsletter Issue 21/18)
Accession to Madrid Protocol by Samoa
On December 4, 2018, the Government of Samoa deposited its instrument of accession to the Madrid Protocol.

The deposit includes declarations under Articles 5(2)(b) and (c) of the Protocol (extension of the refusal period to 18 months and beyond for oppositions), Article 8(7) of the Protocol (individual fees), and Rule 20bis(6)(b) (recording of licenses in the International Register has no effect in Samoa), of the Common Regulations.

Furthermore, Samoa has made notifications, in accordance with new Rule 40(6) of the Common Regulations, concerning new Rules 27bis(1) (division of international registrations) and 27ter(2) (merger of international registrations resulting from the recording of the division of an international registration).

The Protocol will enter into force for Samoa on March 4, 2019.


Source: www.wipo.int

Dec 13, 2018 (Newsletter Issue 21/18)
Accession to Hague Agreement on International Registration of Industrial Designs by Belize
On November 9, 2018, the Government of Belize deposited with WIPO its instrument of accession to the Geneva (1999) Act of the Hague Agreement Concerning the International Registration of Industrial Designs.

The instrument of accession was accompanied by the following declarations:
– the declaration referred to in Article 4(1)(b) of the 1999 Act, whereby international applications may not be filed through its Office;
– the declaration referred to in Article 11(1)(a) of the 1999 Act, whereby the maximum period for the deferment of the publication of an industrial design provided for by the legislation of Belize is 12 months; and
– the declaration as required under Article 17(3)(c) of the 1999 Act, specifying that the maximum duration of protection provided for by the legislation of Belize in respect of industrial designs is 15 years.

The 1999 Act and the declarations made will enter into force with respect to Belize on February 9, 2019.

For further information, please check here


Source: www.wipo.int

Dec 13, 2018 (Newsletter Issue 21/18)
Administrative Instructions of Hague Agreement Changed Soon
The Administrative Instructions of the Hague Agreement for the International Registration of Industrial Designs have been amended by WIPO.

The amendments concern Sections 203 and 801 of the Administrative Instructions and involve the discontinuation of the use of telefacsimile(fax) and the possibility of online payment.

The Administrative Instructions will come into force on January 1, 2019. More information can be seen here


Source: www.wipo.int

Dec 13, 2018 (Newsletter Issue 21/18)
Notification by CO on Common Regulations on Division/Merger of International Registrations
The Government of Colombia has notified WIPO in accordance with new Rules 27ter(2)(b) and 40(6) of the Common Regulations, which will enter into force on February 1, 2019.

In accordance with new Rule 27ter(2)(b), Colombia has declared that its Office will not present to WIPO's requests for the merger of international registrations resulting from division, under paragraph (2)(a) of this new Rule, because the Andean Community Decision Number 486 Establishing the Common Industrial Property Regime (Decision 486) does not provide for the merger of registrations of a mark.

In addition, in accordance with new Rule 40(6), Colombia has notified that new Rule 27bis(1) of the Common Regulations is not compatible with Decision 486 and shall not apply in respect of Colombia. As a result, Colombia will not present to WIPO requests for the division of an international registration in respect of Colombia under this new Rule.

More information on the notification is available here


Source: www.wipo.int

Dec 13, 2018 (Newsletter Issue 21/18)
Declarations by BX on Hague Agreement of Industrial Designs
On June 7, 2013, September 3, 2013, and September 18, 2018, respectively, the Government of Belgium, the Government of Luxembourg and the Government of the Netherlands (for the European part of the Netherlands), deposited with WIPO their instruments of ratification/accession to the Geneva (1999) Act of the Hague Agreement Concerning the International Registration of Industrial Designs.

The said instruments were accompanied by the following declarations:
– the declaration referred to in Article 4(1)(b) of the 1999 Act, whereby international applications may not be filed through the Benelux Office for Intellectual Property (BOIP);
– the declaration referred to in Article 11(1)(a) of the 1999 Act, whereby the maximum period for the deferment of the publication of an industrial design provided for by the legislation of Benelux is 12 months;
– the declaration required under Article 17(3)(c) of the 1999 Act, specifying that the maximum duration of protection provided for by the legislation of Benelux in respect of industrial designs is 25 years; and
– the declaration referred to in Article 19(1) of the 1999 Act, according to which the BOIP is designated as the common Office to the three Benelux countries and the territories of the three countries to which the Benelux Convention on Intellectual Property (trademarks and designs) applies are considered as one single Contracting Party for the application of Articles 1, 3 to 18 and 31 of the 1999 Act.

Therefore, in accordance with Articles 27(3)(c), 28(3)(b), 30(1)(i) and 30(2) of the 1999 Act, the 1999 Act and the declarations made under Articles 4(1)(b), 11(1)(a) and 17(3)(c) of the same Act, will enter into force, with respect to Benelux, on December 18, 2018.

More information on the declarations is available here


Source: www.wipo.int

Nov 30, 2018 (Newsletter Issue 20/18)
Accession to Vienna Agreement by Albania
On October 16, 2018, WIPO notified the deposit by Albania of its instrument of accession to the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks.

The said Agreement will enter into force on January 16, 2019.


Source: www.wipo.int

Nov 30, 2018 (Newsletter Issue 20/18)
Accession to Hague Agreement on International Registration of Industrial Designs by San Marino
On October 26, 2018, the Government of San Marino deposited with WIPO its instrument of accession to the Geneva (1999) Act of the Hague Agreement Concerning the International Registration of Industrial Designs.

The following declarations have been communicated:
– international applications may not be filed through the national Office;
– the maximum duration of protection provided for by the legislation of San Marino in respect of industrial designs is 25 years.

The Act and the declarations made will enter into force with respect to San Marino on January 26, 2019.

For further information, please check here


Source: www.wipo.int

Nov 30, 2018 (Newsletter Issue 20/18)
Notification by MG on Common Regulations on Division/Merger of International Registrations
Madagascar notified WIPO that its Office will not present to WIPO requests in accordance with new Rules 27bis(6) and 27ter(2)(b) of the Common Regulations because the legislation of Madagascar does not provide for the division of registrations of a mark.

Further, Madagascar declared that its Office will not present to WIPO requests in accordance with new Rule 27ter(2)(b) of the Common Regulations because the legislation of Madagascar does not provide for the merger of registrations of a mark.

More information on the notification is available here


Source: www.wipo.int

Nov 30, 2018 (Newsletter Issue 20/18)
Madrid E-Filing for China and Georgia Available Now
WIPO informs that trademark holders from China and Georgia can now apply online to protect and manage their marks abroad through the Madrid e-filing service.

On October 26, 2018, WIPO informs that the trademark office of China National Intellectual Property Administration (CNIPA) provides online filing services for international applications (Madrid).

On November 12, 2018, National Intellectual Property Center of Georgia – Sakpatenti joined the Madrid e-filing service.

The e-filing is available via the IP Offices' websites.


Source: www.wipo.int; www.sakpatenti.gov.ge

Nov 30, 2018 (Newsletter Issue 20/18)
New Interface for Hague E-filing Launched
On November 19, 2018, the new interface for e-filing of International Registration of Industrial Designs has been launched.

The new interface represents a significant change in enhancing usability, adding modern features, and simplifying the process for filing and managing international design applications online.

It should be noted that the old e-filing version will no longer be available for use.

For more information, please click here


Source: www.wipo.int

Nov 15, 2018 (Newsletter Issue 19/18)
Declaration of Maximum Duration of International Registrations of Industrial Designs by Morocco
On June 14, 2018, the Moroccan Industrial and Commercial Property Office (OMPIC) provided to WIPO a declaration as required under Rule 36(2) of the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement, specifying that the maximum duration of protection provided for by the legislation of Morocco in respect of industrial designs is 25 years.

The declaration states that the duration of protection is provided for in Article 122 of Law No. 17-97 on the Protection of Industrial Property (as amended by Law No. 23-13) that came into effect on December 18, 2014.

For further details concerning the applicability of the new duration of protection to an international registration designating Morocco, please contact OMPIC directly at: dmi@ompic.ma


Source: www.wipo.int

Nov 15, 2018 (Newsletter Issue 19/18)
Common Regulations on Division / Merger of International Registrations Amended
WIPO informs that there will be amendments to the Common Regulations under the Madrid Agreement and Protocol with regard on division and merger of International Registrations in respect of a designated Contracting Party. The amendments will be in force as from February 1, 2019.

New Rules 27bis, 27ter, 40(6), consequential amendments to Rules 22 and 32, and the deletion of Rule 27(3) of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement (the “Common Regulations”), as well as a new item 7.7 of the Schedule of Fees will enter into force on February 1, 2019.

The amendments will include:
- Division of an international registration in respect of a designated Contracting Party (new Rule 27bis, new item 7.7)
- Merger of international registrations (new Rule 27ter)
- Cancellation of an international registration resulting from division due to the ceasing of effect of the basic mark (Rule 22(2)(b))
- Possible notifications under New Rules 27bis, 27ter and 40(6) of the Common Regulations
- Publication in the WIPO Gazette of International Marks (Rule 32)

For further information, please check here


Source: www.wipo.int

Nov 15, 2018 (Newsletter Issue 19/18)
Amendments to the Common Regulations under Hague
WIPO informs that Rule 3 of the Common Regulations under the 1999 Act and the 1960 Act of the Hague Agreement has been amended.

As of January 1, 2019, it is no longer required to submit a power of attorney at the time of filing the international application for appointing a representative before the International Bureau.

For further information, please check here


Source: www.wipo.int

Nov 15, 2018 (Newsletter Issue 19/18)
Notifications by TR & AU on Common Regulations on Division/Merger of International Registrations
Turkey informed WIPO that its Office will not present to WIPO requests in accordance with new Rules 27bis(6) and 27ter(2)(b) of the Common Regulations because the Industrial Property Code of Turkey does not provide for the division or for the merger of registrations of a mark.

Australia informed WIPO that its Office will not present to WIPO requests in accordance with new Rules 27ter(2)(b) of the Common Regulations because the Australian Trade Marks Act 1995 does not provide for the merger of registrations of a mark. In addition, in accordance with new Rule 40 of the Common Regulations, the Government of Australia has notified that new Rule 27bis(1) of the Common Regulations is not compatible with the Australian Trade Marks Act 1995 and shall not apply in respect to Australia.

More information on the notification of Turkey is available here and on the notification on Australia here


Source: www.wipo.int

Oct 30, 2018 (Newsletter Issue 18/18)
Hague Agreement for Industrial Designs Ratified by NL
The Kingdom of the Netherlands (for the European part of the Netherlands) has deposited the instrument of ratification of the Hague System for the international registration of industrial designs on September 18, 2018.

The instrument was accompanied by a declaration under Article 19, according to which:
"The Benelux Office for Intellectual Property has been designated as the common office for the three Benelux countries. The territories of the three countries to which the Benelux Convention on Intellectual Property (trademarks and designs) applies are, as a whole, considered to be one single Contracting Party for the purposes of Articles 1, 3 to 18 and 31 of the Geneva Act".

WIPO reminds that the Kingdom of Belgium deposited, on June 7, 2013, its instrument of ratification of the Geneva Act, and the Grand Duchy of Luxembourg deposited its instrument of accession to the said Act, on September 3, 2013.

The Geneva Act will enter into force, with respect to the Kingdom of Belgium, the Grand Duchy of Luxembourg and the Kingdom of the Netherlands, on December 18, 2018.

For more information on The Hague Notification No. 135, please click here


Source: www.wipo.int

Oct 30, 2018 (Newsletter Issue 18/18)
Recent Accessions to Key Legal IP Instruments

Malawi: Accession to Madrid Protocol
On September 25, 2018, the Government of Malawi deposited with WIPO its instrument of accession to the Madrid Protocol, containing:

- the declaration extending the refusal period to 18 months and making it possible to notify refusals based on opposition after the expiry of that period (Article 5(2)(b) and (c) of the Madrid Protocol);
- the notification indicating that Malawi requires a declaration of intention to use the mark when Malawi is designated in an international application or a subsequent designation (Rule 7(2) of the Common Regulations under the Madrid Agreement and the Madrid Protocol);
- the notification indicating that the recording of licenses in the International Register shall have no effect in Malawi (Rule 20bis(6)(b) of the Common Regulations under the Madrid Agreement and the Madrid Protocol). Consequently, a license relating to an international registration shall be recorded in the national Register of the Office of Malawi in order to have effect in that Contracting Party.

The Madrid Protocol, this declaration and these notifications will enter into force, with respect to Malawi, on December 25, 2018.

Ivory Coast: Accession to Geneva Act of Lisbon Agreement
WIPO informed that the Ivory Coast has accessed to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications ("Geneva Act of Lisbon Agreement") on September 28, 2018.

The date of entry into force of the Geneva Act of the Lisbon Agreement will be notified when the required number of ratifications or accessions is reached in accordance with Article 29 of the said Treaty.

Peru: Accession to Singapore Treaty
WIPO notifies the accession of Peru to the Singapore Treaty on the Law of Trademarks, adopted at Singapore on March 27, 2006.

In conformity with Article 28(3), the said Treaty will enter into force, with respect to the Republic of Peru, on December 27, 2018.


Source: www.wipo.int

Oct 11, 2018 (Newsletter Issue 17/18)
Twelfth Edition of Locarno Classification in Force Soon
WIPO informs 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 January 1, 2019.

WIPO does not reclassify the products, which constitute an industrial design or in relation to which an industrial design is to be used, in the international registrations classified according to a previous edition.

WIPO will apply the twelfth edition of the Locarno Classification to all international applications that have a filing date on or after January 1, 2019.

The twelfth edition of the Locarno Classification is available here


Source: www.wipo.int

Oct 11, 2018 (Newsletter Issue 17/18)
Declaration of Use for IRs Designating Mexico Required
WIPO informs that the Mexican Institute of Industrial Property (IMPI) has provided information regarding amendments to the Mexican Industrial Property Law which entered into force on August 10, 2018.

Holders of international registrations containing the designation of Mexico must file now a declaration of actual and effective use of the mark. Such declaration shall be filed directly with IMPI in the appropriate official format, as prescribed by the applicable laws and regulations and upon payment of a fee:

- within a three-month period, following three years counted from the date
on which protection was granted in Mexico, as specified in the declaration sent by IMPI to the International Bureau of WIPO pursuant to 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 three months from the notification of the renewal of the
international registration by the International Bureau of WIPO as from August 10, 2018.

The declaration of actual and effective use of the mark must be filed by the holder’s authorized representative with a local address, or by a legal representative in Mexico. A local address is required for purposes of notification.

On failure to file the declaration of actual and effective use within the prescribed time limits, IMPI shall declare, ex officio, the cancellation of the mark that is the subject of an international registration containing a designation of Mexico. IMPI can be contacted for further information.

For further information on the notice, please click here


Source: www.wipo.int

Sep 20, 2018 (Newsletter Issue 16/18)
Accession to Hague Agreement for Industrial Designs by Canada
WIPO notifies the deposit by the Government of Canada, on July 16, 2018, of its instrument of accession to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, adopted at Geneva on July 2, 1999 (the "Geneva Act").

The Geneva Act will enter into force on November 5, 2018.


Source: www.wipo.int

Sep 06, 2018 (Newsletter Issue 15/18)
Hague Member Profiles Database Launched
On August 31, 2018 WIPO launched the a new Hague Member Profiles Database for the Hague system. This e-service offers a portal to the practices and procedures of Hague System members around the world.

For more information, please click here


Source: www.wipo.int

Aug 22, 2018 (Newsletter Issue 14/18)
Recording of Licenses in International Register no Effect in Afghanistan
WIPO informed that the recording of licenses in the International Register has no effect in Afghanistan.

A license relating to an international registration of a mark needs to be recorded in the national Register of Afghanistan. The formalities required for such recording must be completed directly with the Office of Afghanistan and according to the conditions laid down by the legislation of that Contracting Party.

The declaration entered into force on June 26, 2018.

To access the WIPO notification, please click here


Source: www.wipo.int

Aug 22, 2018 (Newsletter Issue 14/18)
Accession to Madrid Protocol by Canada Soon
The Director General for Trademarks at the Canadian Intellectual Property Office announced the future accession of Canada to the Madrid Protocol. It is expected to join the treaty in early 2019.

Source: www.wipo.int

Aug 22, 2018 (Newsletter Issue 14/18)
2019 Version of 11th Edition of Nice Classification Available Now
WIPO informs that a new version of the 11th edition of the Nice Classification NCL(11-2019) will enter into force on January 1, 2019. The 2019 version includes a number of changes with regard to the previous version and can be accessed here

WIPO will apply the 2019 version to
- any application for international registration that is received by the Office of origin on or after January 1, 2019;
- to any application for international registration that is received by WIPO on or after January 1, 2019, when the said application is received by the WIPO after the two-month time limit referred to in Article 3(4) of the Protocol Relating to the Madrid Agreement Concerning the International Registration
of Marks.

Further, WIPO will not reclassify the list of goods and services of an international registration that is the subject, after December 31, 2018, of a renewal, subsequent designation or any other change affecting the said list.

The Madrid Goods and Services Manager (MGS) will be updated to reflect the changes introduced accordingly.


Source: www.wipo.int

Jul 24, 2018 (Newsletter Issue 13/18)
2018 Edition of Classification Guidelines Available Now
WIPO informs that the 2018 edition of the Examination Guidelines concerning the Classification of Goods and Services in International Applications under the Madrid System are now available.

The guidelines offer information on the most current examination principles applied by Madrid Registry examiners.

The latest edition is divided into three sections. The first section provides an overview of the Madrid System and the International Classification of Goods and Services, while the sections two and three explain the key classification principles applied by WIPO and provide practical tips and formatting help.


Source: www.wipo.int

Jul 24, 2018 (Newsletter Issue 13/18)
Hague Agreement on Industrial Designs in UK in Force
As of June 13, 2018, Hague System users can now designate the United Kingdom in an international design application.

Source: www.wipo.int

Jun 28, 2018 (Newsletter Issue 12/18)
12th Edition of Locarno Classification Download in Advance Possible
WIPO informs that an advance electronic publication of the Locarno Classification 12th edition (LOC (12)) is now available on LOCPUB. The official data of the Locarno Classification consists of the Class and Subclass Headings, the Explanatory Notes, the List of Goods, the General Remarks and the Recommendations Concerning the Application of the Locarno Classification.

It should be noted that the 12th edition of the Locarno Classification will enter into force on January 1, 2019.


Source: www.wipo.int

Apr 26, 2018 (Newsletter Issue 8/18)
Accession to Madrid Protocol by Afghanistan
On March 26, 2018, the Government of the Islamic Republic of Afghanistan deposited its instrument of accession to the Madrid Protocol, making Afghanistan the 101st member of the Madrid System. The Protocol will enter into force for Afghanistan on June 26, 2018.

Starting June 26, local brand owners in Afghanistan can begin using the Madrid System to protect their marks in the 116 territories of the System’s other 100 members by filing a single international application and paying a single set of fees.


Source: www.wipo.int

Apr 26, 2018 (Newsletter Issue 8/18)
Accession of Geneva Act of Lisbon Agreement by Cambodia
WIPO informed that Cambodia is the first state party to join the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications ("Geneva Act"). The Government of Cambodia deposited its instrument of accession to the Geneva Act on March 9, 2018.

The Geneva Act is designed to help ensure that producers of quality products linked to origin are able protect the distinctive designations of their products in multiple jurisdictions, either as appellations of origin or geographical indications, through a single application with WIPO and the payment of one set of fees.

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


Source: www.wipo.int

Apr 26, 2018 (Newsletter Issue 8/18)
Official Forms on WIPO’s Website / No Fax Accepted
WIPO has amended the Administrative Instructions for the Application of the International Registration of Marks.

As of April 1, 2018, WIPO publishes now the complete list of all available prescribed and optional forms on its website.

Further, communications under the the Madrid System may no longer be addressed to the International Bureau of WIPO by fax.

For additional information, please see the notice of WIPO here


Source: www.wipo.int

Mar 29, 2018 (Newsletter Issue 6/18)
Hague Agreement for Industrial Designs Ratified by UK
The United Kingdom has deposited the instrument of ratification needed to join the Hague System for the international registration of industrial designs.

The Agreement will come into effect on June 13, 2018.


Source: www.gov.uk

Jan 30, 2018 (Newsletter Issue 2/18)
Withdrawal of Declaration of Hague Agreement by Spain
On December 26, 2017, the Spanish Patent and Trademark Office (OEPM) withdrew from the declaration for the application of level three of the standard designation fee made on January 1, 2008, under Rule 12(1)(c)(i) of the Common Regulations under the 1999 Act and the 1960 Act of the Hague Agreement (refer to Information Notice No. 4/2008).

The said withdrawal shall take effect one month after the receipt, namely on January 26, 2018. As a consequence, level one of the standard designation fee shall apply where Spain is designated in an international application filed on and after the said date.
January 24, 2018.

Source: www.wipo.int


Jan 16, 2018 (Newsletter Issue 1/18)
Madrid Monitor Launched
On January 1, 2018, Madrid Monitor became WIPO's only tool for tracking the status of international trademark applications and registrations under the Madrid System.

WIPO's original monitoring tools ROMARIN, Madrid e-Alert and Madrid Realtime Status, have been discontinued and replaced by the simpler and more streamlined Monitor.

Madrid Monitor allows to track the current status of all international applications and registrations under the Madrid System, and provides access to the WIPO Gazette of International Marks, the official publication of the Madrid System.

It also introduces a number of new features making it simpler to browse, filter, save and share over 900,000 trademark records. Email alerts can be set up for updates on trademarks of interest for tracking.

More information on features and benefits are available here. Also, video tutorials of the Madrid Monitor can be seen here.

Source: www.wipo.int


Jan 16, 2018 (Newsletter Issue 1/18)
Hague Agreement on Industrial Designs in Russia
On November 30, 2017, Russia ratified the Geneva Act of the Hague Agreement on International Registration of Industrial Designs by depositing its instrument of ratification with the World Intellectual Property Organization (WIPO). The Geneva Act will enter into force in Russia on February 28, 2018.

The Hague Agreement, administered by WIPO, regulates the international registration of industrial designs. Accession allows interested parties to obtain design protection with a single application in all the countries that are members of the Geneva Act, which now counts a total of 53 contracting parties.

Source: www.petosevic.com


Jan 16, 2018 (Newsletter Issue 1/18)
New Online Publication of Locarno Classification Available
WIPO informs that the new online publication of the Locarno Classification (LOCPUB) is now available to the public.

For further information please check here


Source: Source: www.wipo.int

Dec 05, 2017 (Newsletter Issue 21/17)
2018 Version of Nice Classification in Force Soon
A new version of the eleventh 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, 2018.

The 2018 version of the eleventh edition of the Nice Classification includes a number of changes with regard to the previous version. WIPO will apply the 2018 version of the eleventh edition of the Nice Classification to:
– any application for international registration that is received by the Office of origin on or after January 1, 2018;
– any application for international registration that is received by WIPO on or after January 1, 2018, when the said application is received by WIPO after the two-month time limit referred to in Article 3(4) of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.

WIPO will not reclassify, in accordance with the 2018 version of the eleventh edition of the Nice Classification, the list of goods and services of an international registration that is the subject, after December 31, 2017, of a renewal, subsequent designation or any other change affecting the said list.

WIPO will insert the abbreviation "NCL(11 2018)" next to the list of goods and services in the notifications sent to designated Contracting Parties, registration certificates and publications.

The Madrid Goods and Services Manager (MGS) will be updated to reflect the changes introduced by the 2018 version of the eleventh edition of the Nice Classification.

This new version will be available on the website of the World Intellectual Property Organization (WIPO), at the following address http://www.wipo.int/classifications/nice/en/

Changes to NCL(11-2017) can be seen here

Source: www.wipo.int


Dec 05, 2017 (Newsletter Issue 21/17)
Non-Working Days in 2018
WIPO informs about its non-working days next to Saturdays and Sundays. The days on which WIPO is not scheduled to be open to the public during 2018, are the following:

NEW YEAR: Monday, January 1, 2018
EASTER: Friday, March 30, 2018 and Monday, April 2, 2018
ASCENSION: Thursday, May 10, 2018
WHITSUN: Monday, May 21, 2018
JEÛNE GENEVOIS: Thursday, September 6, 2018
CHRISTMAS: Tuesday, December 25, 2018
NEW YEAR: Monday, December 31, 2018

Furthermore, the International Bureau is not scheduled to be open to the public on Monday, December 25, 2017, and Friday, December 29, 2017.

Source: www.wipo.int


Nov 22, 2017 (Newsletter Issue 20/17)
Amendments to Common Regulations
A number of amendments to the Common Regulations under the Madrid Agreement and Protocol entered into force on November 1, 2017.

The amendments cover a wide range of topics. Trademark owners and users of the Madrid System benefit from three key changes:

1. Voluntary description of a mark (Rule 9)

Certain countries (such as the United States and India) require applicants to provide a description of the mark in an international trademark application (Form MM2). This may be the case where the trademark is represented in “non-standard” or non-Latin characters. Applicants who fail to provide the required description can face an unexpected provisional refusal.

To help avoid the risk of this type of provisional refusal, applicants have now the opportunity to include a voluntary description of the mark in an international application or subsequent designation.

This means that, from November 1, 2017, an international application:
- must include, if required by the Office of origin, the same description of the mark contained in the basic application or registration (i.e., in the “basic mark”); and
- may also contain any other description of the mark (a “voluntary description”).

International application Form MM2 and subsequent designation Form MM4 have been modified to allow including up to two descriptions for trademarks. More information on this can be found in the Member Profiles Database.

2. Appointment or cancellation of a representative (Rules 3, 25 and 32)

As from November 1, 2017, each time when a representative is officially appointed or cancelled in connection with the international trademark registration, WIPO will notify the IP Offices in the countries/regions covered by the registration, and publish the appointment or cancellation in the WIPO Gazette.

3. Cancellation of subsequent designation of the United States caused by irregularities with Form MM18 (Rule 24(5)(c))

From November 1, 2017, unremedied irregularities involving Form MM18 (Declaration of intention to use the mark in the United States) will no longer lead to the abandonment of the subsequent designation request in other target markets.

If an irregularity that relates only to Form MM18 is found during WIPO’s examination, and this irregularity is not remedied within three months, only the designation of the United States will be cancelled. Any other countries/regions included in the request will no longer be affected.

For more information, please click here

Source: www.wipo.int


Nov 07, 2017 (Newsletter Issue 19/17)
Madrid Monitor Launched Soon
Starting December 1, 2017, the Madrid Monitor will be launched by WIPO. It will replace services such as ROMARIN, Madrid e-Alert and Madrid Realtime Status.

Madrid Monitor is WIPO’s customized tool for following the latest developments on all trademarks registered through the Madrid System and for tracking the status of your international application or registration. The WIPO Gazette of International Marks can be accessed as well.

Source: www.wipo.int


Oct 05, 2017 (Newsletter Issue 17/17)
Accession to Madrid Protocol by Indonesia
On October 2, 2017, the Government of Indonesia deposited its instrument of accession to the Madrid Protocol with WIPO’s Director General, making Indonesia the 100th member of the Madrid Union.

The Protocol will enter into force for Indonesia on January 2, 2018.

Source: www.wipo.int


Oct 05, 2017 (Newsletter Issue 17/17)
Accession to WIPO Convention by Marshall Islands and Timor-Leste
WIPO notifies the deposit by the Government of the Republic of the Marshall Islands and by the Government of the Democratic Republic of Timor-Leste of their instrument of accession to the Convention Establishing the World Intellectual Property Organization (WIPO Convention).

The said Convention will enter into force with respect to the Marshall Islands on December 11, 2017, and to Timor-Leste on December 12, 2017.

Source: www.wipo.int


Sep 05, 2017 (Newsletter Issue 15/17)
Accession to Madrid Protocol by Thailand
On August 7, 2017, the Director General of WIPO notified the deposit by the Kingdom of Thailand, of its instrument of accession to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.

The said instrument contained the following declarations:
- in accordance with Article 5(2)(b) of the Madrid Protocol, the time limit for a notification of refusal in respect of international registrations made under the Madrid Protocol will be 18 months and, under Article 5(2)(c) of the said Protocol, when a refusal of protection may result from an opposition to the granting of protection, such refusal may be notified to the International Bureau after the expiry of the 18-month time limit.
- in in accordance with Article 8(7)(a) of the Madrid Protocol, the Government of the Kingdom of Thailand, in connection with each international registration in which it is mentioned under Article 3ter of the said Protocol, and in connection with the renewal of any such international registration, wants to receive, instead of a share in the revenue produced by the supplementary and complementary fees, an individual fee.

The Madrid Protocol (1989) will enter into force, with respect to the Kingdom of Thailand, on November 7, 2017.

Source: www.wipo.int


Jul 25, 2017 (Newsletter Issue 14/17)
Simplified Procedure for Changes in Legal Nature
WIPO informs that the first of several important amendments to the Madrid System’s Common Regulations has taken place.

Starting from July 1, 2017, holders of an international registrationare now able to introduce or change information concerning their legal nature, as well as request changes to the name and address on record with WIPO, using a single Form MM9.

In the past, a holder’s legal nature and the territory under which this (legal entity) holder is organized could only be indicated in an international application, subsequent designation or in a request for change in ownership (Form MM5).

Source: www.wipo.int


Jul 25, 2017 (Newsletter Issue 14/17)
Jurisprudential Overview 3.0 Published
WIPO has updated its WIPO Jurisprudential Overview 3.0 of WIPO Panel Views on Selected UDRP Questions.

The WIPO Overview is a collection of Uniform Domain Name Dispute Resolution Policy (UDRP) jurisprudence summarising consensus panel views on a range of common and important substantive and procedural issues.

The WIPO Jurisprudential Overview 3.0 is available here

Source: www.wipo.int


Jul 11, 2017 (Newsletter Issue 13/17)
Madrid e-Renewal system Improved
WIPO informs that the e-Renewal system has been improved. The service allows to renew the international registration of a mark, including during the grace period.

Online requests for renewal are now available three months prior to the expiry of the international trademark registration. After paying through the e-Renewal system, requests will not be affected by any subsequent fee changes. By this improvement cost of renewal can be predicted with greater accuracy and certainty.

For further information, please click here

Source: www.wipo.int


Jul 11, 2017 (Newsletter Issue 13/17)
Effect Date of Protection of IR of Industrial Designs in Spain Changed
On May 30, 2017, WIPO received from the Spanish Patent and Trademark Office (OEPM) an official letter indicating that Patent Law No. 24/2015, of July 24, 2015, which came into force on April 1, 2017, introduced modifications to paragraphs 4 and 5 of Article 76 of the Law 20/2003 of July 7, 2003, on the Legal Protection of Industrial Designs.

As a consequence of those modifications, the protection conferred by the international registration of a design shall take effect in Spain from the date of its publication by the International Bureau, provided that said registration is not the subject of a refusal of protection.

The previous communication from OEPM concerning the declaration under Rule 18(1)(c) of the Common Regulations under the 1999 Act and the 1960 Act of the Hague Agreement is withdrawn (please refer to Information Notice No. 12/2011).

The said withdrawal took effect on May 30, 2017.

For further information, please click here

Source: www.wipo.int


Jun 28, 2017 (Newsletter Issue 12/17)
Member Profiles Database Introduced
On May 21, 2017 WIPO launched a new e-service the Member Profiles Database which offers a portal to the trademark rules and examination procedures of Madrid System members.

The Member Profiles Database is useful when preparing an international trademark application to uncover details about trademark offices in the target markets, including which types of trademarks can be protected and how to file an international application through the ‘home’ Office of origin.

After the trademark has been registered through the Madrid System, the database’s interface gives access to key procedures and time limits applicable in the countries or regions of Madrid System members which have been designated under the international registration.

Source: www.wipo.int


Jun 14, 2017 (Newsletter Issue 11/17)
Common Regulations under Madrid Agreement and Protocol Amended
WIPO informs that the amendments to Rules 12, 25, 26, 27 and 32 of the Common Regulations under Madrid Agreement and Protocol and item 7.4 of the Schedule of Fees will enter into force on July 1, 2017.

- Control by the International Bureau of WIPO of the classification of limitations to the list of goods and services made in international applications (Rule 12).
- New requirement to list the goods and services in a request for the recording of a limitation according to the numbers of the classes contained in the international registration (Rules 25 to 27).
- New recording to introduce in the international registration indications concerning the legal nature of the holder or to change those indications (Rules 25 to 27, 32 and item 7.4 of the Schedule of Fees).

For further information, please click here

Source: www.wipo.int


May 17, 2017 (Newsletter Issue 9/17)
Requirement for Declaration of Intention to Use When Designating Lesotho
On March 31, 2017, the Government of Lesotho notified the Director General of WIPO of the requirement for a declaration of intention to use the mark when Lesotho is designated in an international application or subsequently.

The notification made by Lesotho will become effective on June 30, 2017.

WIPO will modify the form MM2 and form MM4 accordingly.

Source: www.wipo.int


May 17, 2017 (Newsletter Issue 9/17)
Designation of Zimbabwe in International Registration Possible Now
The Trade Marks (Madrid Protocol) Regulations, 2017 were published in the Government Gazette of April 13, 2017. Both Houses of Parliament passed the resolutions approving the Trade Marks (Madrid Protocol) Regulations. The Regulations came into force on April 13, 2017. By this it is now possible to designate Zimbabwe in an International Registration.

The opposition period for international registrations designating Zimbabwe is 2 months from the date of publication in the Zimbabwe Industrial Property Journal.

Source: Honey & Blanckenberg, Zimbabwe


May 17, 2017 (Newsletter Issue 9/17)
Individual Fee when Designating BN
On April 3, 2017, Brunei Darussalam has deposited the declaration to receive an individual fee instead of a share in the revenue produced by the supplementary and complementary fees when Brunei is designated in the international registration or with the renewal of any such international registration.

The declaration will enter into force on July 3, 2017.

Source: www.wipo.int


Apr 26, 2017 (Newsletter Issue 8/17)
Phase II of DesignClass
The second European design convergence initiative reaches completion.

With this launch, Phase II of DesignClass builds on the earlier achievements to include:

1. The extended product indications classification – taxonomisation of the harmonised database of product indications, which divides Locarno sub-classes into groups and sub-groups to improve the intuitiveness of searches.
2. The association of images to product indications – enabling users to visualise the product indications and hence select the most appropriate to their needs.
3. The pairing of non-accepted with accepted product indications – ensuring that users are directed to the harmonised product indications that correspond to their design.
4. Validated translations of all product indications, variants and duplicates – translations have been thoroughly revised by IP Offices, EUIPO and external translation companies to minimise risk of disconformity in any EU language.
5. A harmonised workflow tool – an administrative module which allows all users of the application to propose updates to the harmonised database of product indications through a two-month long voting cycle.

Source: www.boip.int


Apr 12, 2017 (Newsletter Issue 7/17)
Examination Guidelines on Classification Published
WIPO has published Examination Guidelines concerning the Classification of goods and services in international applications to better communicate internal policies on classification. The document serves a guide to the goods and services examination principles applied by the WIPO trademark examiners.

The Classification Guidelines are divided into three sections:
1) General information on the Madrid System and the Nice Classification are provided
2) Classification principles applied by WIPO are outlined
3) Practical information and formatting guidelines are summarised

The Classification Guidelines can be accessed here

Source: www.wipo.int


Apr 12, 2017 (Newsletter Issue 7/17)
Legalised Extracts Provided for Non-Contracting Parties
WIPO informs that the Office provides legalisation services for customers who need to present extracts in countries that do not participate in the Madrid System where legalisation is not mandatory for extracts presented in a Contracting Party of the Madrid System.

Any person (not just the trademark owner) can request a legalised extract from the International Register. Upon request, WIPO will certify your extract with an official WIPO stamp and original signature, and then forward the document on your behalf to the Geneva State Chancellery. From there, it will be delivered to the relevant country’s consulate or embassy in Switzerland for legalisation. WIPO will send you the final legalised document by post.

In addition, WIPO offers certified attestations and simple or detailed extracts containing an analysis of the history of the mark, as well as expedited delivery of these services.

Source: www.wipo.int


Feb 22, 2017 (Newsletter Issue 4/17)
Madrid Goods & Services Manager with Latest Nice Classification Edition Aligned
WIPO announced that the Madrid Goods & Services Manager introduced several key updates which are summarised below:

Over 1,300 new terms
The Madrid Goods & Services Manager database includes the current Nice Classification, as well as other terms approved by WIPO and many IP Offices around the world. In addition to the 324 new terms introduced by the 11th edition of the Nice Classification, the updated database also contains over 1,000 additional new terms pre-approved by WIPO.
As a result of these updates, the database now offers over 61,000 English-language descriptions of goods and services for selection, as well as over 26,000 WIPO-approved English terms for those users who prefer to compile their list using the free-text entry function.

Modified class headings and explanatory notes
The new Madrid Goods & Services Manager fully integrates all modifications to 15 Class Headings and 22 Explanatory Notes introduced in the 11th edition of the Nice Classification, including the notable transfer to Class 21 of all types of serving utensils.

Class transfers
The transfer of serving utensils was just one of many class transfers introduced by the 11th edition of the Nice Classification, in conjunction with several additions, deletions and rephrased headings.

Participation by Canada
Madrid Goods & Services Manager now offers users the opportunity to check whether their list of terms (including those from the Nice Classification’s alphabetical list) will be accepted by the Canadian Intellectual Property Office, an Office that does not currently participate in the Madrid System but plans to join the System in the coming years.

For further information, please check here

Source: www.wipo.int


Feb 01, 2017 (Newsletter Issue 3/17)
Procedural Amendments for IR Designating AG
Antigua and Barbuda has deposited, on January 9, 2017, the following declaration:

- in accordance with Article 5(2)(b) of the Madrid Protocol (1989), the time limit of one year to exercise the right to notify a refusal of protection referred to in Article 5(2)(a) thereof is replaced by 18 months, and; under Article 5(2)(c) of the said Protocol, when a refusal of protection may result from an opposition to the granting of protection, such refusal may be notified to the International Bureau after the expiry of the 18-month time limit; and

- in accordance with Article 8(7)(a) of the Madrid Protocol (1989), Antigua and Barbuda, in connection with each international registration in which it is mentioned under Article 3ter of the said Protocol, and in connection with the renewal of any such international registration, wants to receive, instead of a share in the revenue produced by the supplementary and complementary fees, an individual fee.

The said declaration will enter into force on April 9, 2017.

Source: www.wipo.int


Jan 25, 2017 (Newsletter Issue 2/17)
Requirement for Declaration of Intention to Use When Designating BN
On December 19, 2016, the Government of Brunei Darussalam notified the Director General of WIPO of the requirement for a declaration of intention to use the mark when Brunei Darussalam is designated in an international application or subsequently.

The said notification will enter into force on March 19, 2017.

For further information, please see here

Source: www.wipo.int


Jan 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


Jan 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


Dec 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


Nov 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


Nov 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


Nov 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


Nov 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


Oct 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


Oct 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


Oct 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


Sep 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


Sep 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


Jul 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


Jun 28, 2016 (Newsletter Issue 12/16)
Accession to Hague Agreement by DPR 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


Jun 28, 2016 (Newsletter Issue 12/16)
Ratification to Singapore Treaty by DPR Korea
WIPO announced the ratification to the Singapore Treaty by DPR Korea.

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

Source: www.wipo.int


Jun 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


May 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


May 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


May 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


Apr 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


Apr 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


Apr 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


Apr 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


Apr 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


Mar 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


Mar 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


Mar 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


Mar 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


Feb 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


Feb 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


Feb 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


Jan 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


Jan 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


Jan 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


Jan 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


Dec 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


Nov 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


Nov 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


Nov 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


Nov 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


Nov 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


Oct 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


Oct 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


Oct 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


Sep 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


Jul 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


Jun 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


Jun 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


May 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


May 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


May 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


Mar 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


Mar 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


Mar 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


Mar 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


Feb 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


Jan 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


Jan 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


Dec 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


Dec 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


Nov 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


Nov 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


Nov 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


Nov 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


Oct 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


Jul 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


Jul 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


May 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


Apr 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


Jan 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


Jan 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


Dec 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


Dec 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


Dec 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


Oct 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


Sep 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


Jul 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


Jul 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


Jun 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


Jun 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


May 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


Apr 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


Apr 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


Feb 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


Jan 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


Dec 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


Dec 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


Dec 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


Nov 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


Sep 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


May 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


Apr 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


Mar 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


Feb 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


Nov 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

Oct 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


Oct 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



Sep 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


Sep 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

Sep 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


Mar 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


Jan 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


Nov 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


Nov 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


Oct 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

Jun 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 trademark rights in more than one jurisdiction. The centrally administered system offers trademarks protection in separate jurisdictions by filing a single international application.
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 or residence or domicile 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 through WIPO. The owner is allowed to extend the request for protection to one or more or even all member states of the Madrid System without further national applications. This process is known as “designation”.
The system for international registration of marks was 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. It should be noted that the Madrid Agreement and the Madrid Protocol are two different treaties. Some countries were party to the Madrid Agreement only, others were party to the Madrid Protocol only, with consequences in different procedures of registration and fees. Nowadays, all countries that are members of the Madrid Agreement are also parties to the Madrid 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, Eswatini, France, Germany, Hungary, Iran, Italy, Kazakhstan, Kenya, Kyrgyzstan, Latvia, Lesotho, Liberia, Liechtenstein, Luxembourg, Moldova, Monaco, Mongolia, Montenegro, Morocco, Mozambique, Namibia, Netherlands, North Korea, North Macedonia, Poland, Portugal, Romania, Russian Federation, San Marino, Serbia, Sierra Leone, Slovakia, Slovenia, Spain, Sudan, Switzerland, Tajikistan, Ukraine and Viet Nam (status: Aug. 2022)

Members of the Madrid Protocol are AIPO/OAPI, Afghanistan, Albania, Algeria, Antigua and Barbuda, Armenia, Australia, Austria, Azerbaijan, Bahrain, Belarus, Belgium, Belize, Bhutan, Bosnia and Herzegovina, Botswana, Brazil, Brunei, Bulgaria, Cambodia, Canada, Cabo Verde (Cape Verde), Chile, China, Colombia, Croatia, Cuba, Cyprus, Czech Republic, Denmark, Egypt, Estonia, Eswatini, European Union, Finland, France, Gambia, Georgia, Germany, Ghana, Greece, Hungary, Iceland, India, Indonesia, Iran, Ireland, Israel, Italy, Jamaica, Japan, Kazakhstan, Kenya, Kyrgyzstan, Laos, Latvia, Lesotho, Liberia, Liechtenstein, Lithuania, Luxembourg, Madagascar, Malawi, Malaysia, Mauritius (as of 6 May 2023), Mexico, Moldova, Monaco, Mongolia, Montenegro, Morocco, Mozambique, Namibia, Netherlands, New Zealand, North Korea, North Macedonia, Norway, Oman, Pakistan, Philippines, Poland, Portugal, Romania, Russian Federation, Rwanda, Samoa, San Marino, Sao Tomé and Principe, Serbia, Sierra Leone, Singapore, Slovakia, Slovenia, South Korea, Spain, Sudan, Sweden, Switzerland, Syria, Tajikistan, Thailand, Trinidad and Tobago, Tunisia, Turkey, Turkmenistan, Ukraine, United Arab Emirates, United Kingdom, USA, Uzbekistan, Viet Nam, Zambia and Zimbabwe (status: March 2023)
Nice classification, 11th 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 colours used as distinguishing features.
The following trademark categories are registrable: trademarks, service marks, collective marks and certification marks. It should be noted that each member party may have its own rules.
An international application must be presented to the International Bureau of WIPO through the industrial property office of the country of origin. Any application sent directly to the International Bureau will not be considered as such. A WIPO form has to be filed in English, French or Spanish The applicant has to pay a national and an international fee at the time of application.
Multiple-class applications are possible.
An application can include goods in any number of classes, but with additional fees 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 residence/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 WIPO will be registered and published in the bulletin “Gazette des Marques”.
The approximate time frame for completing the registration process of a trademark at a local level 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 law of the respective countries.
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.
Practical details on grace periods for trademark renewals are available in our publication here
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 where no reproduction of the mark is in colour and CHF 903 where any reproduction of the mark is in colour.
The supplementary fee is CHF 100 per class of goods and services exceeding three. The complementary fee is CHF 100 per Contracting State. Individual country fees may substitute complementary fees if designated country has so decided under the Protocol. 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 these 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 to maintain the date of the international registration.
Recordal of assignment may be filed directly through WIPO. Recordal of licence is also filed centrally but it is necessary to check country by country if the recordal through WIPO is locally effective. Otherwise, it is necessary to record directly in the country.
Country Index provides information on the following member states:
Afghanistan (AF), Albania (AL), Algeria (DZ), Antigua and Barbuda (AG), Armenia (AM), Australia (AU), Austria (AT), Azerbaijan (AZ), Bahrain (BH), Belarus (BY), Belgium (BE), Belize (BZ), Benelux (BX), Bhutan (BT), Bosnia and Herzegovina (BA), Brazil (BR), Brunei (BN), Bulgaria (BG), Cambodia (KH), Canada (CA), Cape Verde (CV), China (CN), Colombia (CO), Croatia (HR), Cuba (CU), Cyprus (CY), Czech Republic (CZ), Denmark (DK), DPR Korea (KP), Egypt (EG), Estonia (EE), Eswatini (SZ), Finland (FI), France (FR), Georgia (GE), Germany (DE), Ghana (GH), Greece (GR), Hungary (HU), Iceland (IS), India (IN), Indonesia (ID), Iran (IR), Ireland (IE), Israel (IL), Italy (IT), Jamaica (JM), Japan (JP), Kazakhstan (KZ), Kenya (KE), Kyrgyzstan (KG), Laos (LA), Latvia (LV), Lesotho (LS), Liechtenstein (LI), Lithuania (LT), Luxembourg (LU), Madagascar (MG), Malaysia (MY), Mexico (MX), Moldova (MD), Monaco (MC), Mongolia (MN), Montenegro (ME), Morocco (MA), Mozambique (MZ), Namibia (NA), Netherlands (NL), New Zealand (NZ), North Macedonia (MK), Norway (NO), Oman (OM), Pakistan (PK), Philippines (PH), Poland (PL), Portugal (PT), Romania (RO), Russian Federation (RU), Rwanda (RW), San Marino (SM), Sao Tome and Principe (ST), Serbia (RS), Singapore (SG), Slovakia (SK), Slovenia (SI), South Korea (KR), Spain (ES), Sudan (SD), Sweden (SE), Switzerland (CH), Syria (SY), Tajikistan (TJ), Thailand (TH), Trinidad and Tobago (TT), Tunisia (TN), Turkey (TR), Turkmenistan (TM), Ukraine (UA), United Arab Emirates (AE), United Kingdom (UK), USA (US), Uzbekistan (UZ), Vietnam (VN), Zimbabwe (ZW)
SMD Group thanks the following law firms for their assictance in updating the information provided.

Aug 11, 2022
Cantaluppi & Partners, Rome, Italy


Saxinger Rechtsanwalts GmbH





Edisonstraße 1
4600 Wels
Austria (AT)
Tel +43 7242 65290-305
Fax +43 7242 65290-339
marken@saxinger.com
www.saxinger.com

TRADEMARK, COPYRIGHT, UNFAIR COMPETITION & DOMAIN LAW, DESIGN

Saxinger is an Austrian commercial law firm with Offices in Graz, Linz, Wels and Vienna.

We support you with pleasure in defending your intellectual property rights judicial and extrajudicial. We issue warning notices and enforce claims for injunctive relief, information, removal and damages, also in preliminary injunction proceedings.

In trademark law, we assist in the development of your brand strategies and implement them nationally and/or internationally.

With Trademark collisions, we conclude delimitation and prior rights agreements with the counter party or defend your labelling rights, also in court/official proceedings. The commercial exploitation of your trademark rights with trademark acquisition and trademark license agreements is also one of our core competencies.

We will carry out trademark applications for you at the competent trademark offices (ÖPA/EUIPO/WIPO). If a foreign national trademark is to be registered, we can also call on our alliance partners in the SCHINDHELM Alliance (Europe and Asia).

World Intellectual Property Organization (WIPO)
34, Chemin des Colombettes
1211 Geneva 20
Switzerland
Tel +41 22 33 89 11 1
Fax +41 22 73 35 42 8
www.wipo.int