The World Intellectual Property Organisation (WIPO) has announced some important changes to international trade marks filed by the Madrid System which come into effect from 1 November 2023 and 1 November 2024.

Changes effective from 1 November 2023

1. Obligations of national offices to notify time limits and the calculation of dates

When provisional refusals are issued by national trade mark offices, the office must state the start and end date of the time limit for the applicant to respond, unless:

• The time limit begins on the date on which the provisional refusal is transmitted to the holder of the international trade mark registration by WIPO, or
• The time limit begins on the date on which the holder of the international trade mark registration receives the provisional refusal from WIPO.

In these last two circumstances, it will be WIPO, rather than the national office, who indicates the start and end dates for the applicant to respond to the provisional refusal.

2. A minimum time limit of two months or 60 calendar days to respond to a provisional refusal

With no existing provisions obliging national trade mark offices on the length of the time limit required to respond to a provisional refusal, which is usually dictated by national legislation and practice, time limits for responding can range anywhere from 15 days up to 15 months, depending on the national trade mark office in respect of which the provisional refusal has been issued.

The new change introduces a harmonised minimum time limit for applicants to respond to a provisional refusal, being two months or 60 calendar days.

However, this rule does not officially come into force until 1 February 2025 and Contracting member states can delay the effectiveness of this provision indefinitely (for now) by notifying WIPO.

3. Failure to meet the obligations – the consequences for national trade mark offices

Where there is failure to comply with the obligations, (1. and 2.) WIPO will refuse the provisional refusal and it shall not be recorded in the International Register.  A defective notice will be issued to the national trade mark office and the holder of the international trade mark registration.

However, if the national office sends a rectified notification, two months from the date on which they were informed of the defective notification by WIPO, this rectified notification will be regarded as having been sent on the date on which the defective notification was sent and shall be recorded in the International Register.

The rectified notification must, where domestic law allows, indicate a new time limit for the applicant to respond to the provisional refusal and provide the following information:

• The time limit for responding (which shall be no less than two months)
• An indication of the date on which the said time limit starts and ends
• The authority with which a request for review, appeal or response should be filed
• An indication, where applicable, that the response has to be filed through a representative whose address is within the national territory of the Contracting Party who issued the refusal

Instead of a rectified notification, a national trade mark office may file a corrected provisional refusal.

4. Names and addresses of proprietors of earlier trade mark rights and their representatives

Existing practice requires a provisional refusal based on an earlier trade mark right to indicate the name of the proprietor. From 01 November 2023, the provisional refusal must also indicate:

• The name of registered representative, if applicable
• An indication of their addresses but only ‘if possible’. Addresses may be omitted if they are not available

Changes effective from 1 November 2024

1. Communications from the national trade mark offices of Contracting Parties sent via WIPO

This concerns communications not covered by the Regulations.

Where the domestic law of a Contracting Party does not allow the national trade mark office to transmit a communication concerning an international registration directly to the proprietor of the trade mark right, the national trade mark office can ask WIPO to send the communication to the proprietor on its behalf.

WIPO determines the format of the communication and transmits the communication to the proprietor, without examining its contents or recording it in the International Register.

Full details can be found here: Madrid System – Upcoming Changes

If you have any questions about the upcoming changes or require further information on the benefits of the Madrid System as a strategy for international trade mark protection, please contact a member of our trade marks team.