Upcoming changes to the Madrid System

On 1 November 2023 and 1 November 2024 important changes to the Madrid System will enter into force.

The most significant changes entering into force on 1 November 2023 are: 

• Obligation to notify time limits and their calculation.
• Minimum time limit to respond to a provisional refusal.
• Consequences of failure of national trade mark offices to meet the new requirements concerning notifications of time limits.
• Names and addresses of owners of earlier rights and their representatives.

An important change entering into force on 1 November 2024 concerns the communications from national trade mark offices not covered under the Regulations under the Madrid Protocol (“Regulations”).

WIPO’s information notice no. 26/2023 on these changes containing a redline version of the amended Regulations is available here.

Here are the changes in detail:

Changes entering into force on 1 November 2023

Start and end dates of the time limit to respond to a provisional refusal

When issuing a provisional refusal, the national trade mark office must indicate the start and end date of the time limit to react (i.e. respond, file a review or appeal) to the refusal, unless the time limit begins on the date on which WIPO transmits the provisional refusal to the holder of the International Registration (‘IR’) or the date on which the IR holder receives the provisional refusal (Rule 17(2)(viii) Regulations). In the latter cases, WIPO will indicate the start and end dates in its notification.

Minimum time limit to respond to a provisional refusal

Holders of IRs will have a minimum time limit of two months or 60 calendar days to react to a refusal (Rule 17(2)(vii) Regulations).

Unfortunately, this rule will come into effect only on 1 February 2025. Further, member states of the Madrid Protocol can delay the effectiveness by notifying WIPO and there is no ultimate deadline (Rule 40(8) Regulations). I.e. member states could delay the effectiveness of this provision to the year 2525 if they so desire.

Failure to meet the new requirements in provisional refusals

If a national trade mark office does not indicate the start and end dates or does not comply with the minimum time limit to react to a provisional refusal, WIPO will not accept the provisional refusal and inform both the national trade mark office and the IR holder of this fact (‘defective notice’, Rule 18(1)(d) Regulations).

The national trade mark office has two options:

1. It can send a rectified notification. If the rectified notification is sent to WIPO within two months after receiving the defective notice from WIPO, it is considered to have been sent on the date on which the defective notice was sent. This is important because the national office’s deadline to issue a provisional refusal is not interrupted by a defective notice. Only if the national law permits, the rectified notice shall indicate a new time limit to react (Rule 18(1)(e) Regulations).

2. Instead of a rectified notification, the national office can send a new corrected provisional refusal (provided that the time limit to issue a provisional refusal has not expired in the meantime).

As positive as the clarification of the exact deadlines is, we will have to see how the national offices handle it in practice and particularly how they deal with defective notices. It is advisable to react to the provisional refusal as soon as possible, regardless of whether WIPO accepts it or not. In the end, it is not WIPO that decides whether an IR is refused but the national trade mark office.

Names and addresses of the owners of earlier rights and their representative

A provisional refusal based on earlier rights has to indicate the name of the earlier rights owner (as before) and (this is new) the name of the registered representative (if any). Their addresses, however, must only be indicated “if possible”. That means that the addresses can be omitted if, e.g., data protection laws do not allow their publication or if they are not available (Rule 17(2)(v) Regulations).

Change entering into force on 1 November 2024

Communications from national trade mark offices not covered under the Regulations

National trade mark offices can ask WIPO to send communication not covered under the Regulations to the IR holder (Rule 23bis Regulations), e.g. renewal reminders or notices of potentially conflicting third party applications.

Picture is by EVG Kowalievska and licensed under the licensing terms of Pexels.com.