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Amendments to Trademark Laws

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Jan 11, 2017 (Newsletter Issue 1/17)
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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