Recent changes to the Madrid System

On 1 February 2023, several important changes to the Madrid System came into effect. They concern the following:

  • The representation of colour marks;
  • Colour claims in international registrations;
  • Filing of non-traditional trade marks, such as sound, motion and multimedia marks;
  • Representation of earlier rights in provisional refusals; and
  • Communication with WIPO.

WIPO’s notice on these changes containing a redline version of the amended Regulations under the Madrid Protocol and the Administrative Instructions are available here.

Here are the changes in detail:

Representation of colour marks where the basic mark is in black and white

A second representation of the mark was required when the representation of the basic mark was in black and white, and the applicant claimed colour as a distinctive feature of the mark in the international application. This meant that two representations had to be provided: one in colour and one in black and white.

As of 1 February 2023, only the colour representation of the mark is required if colours are meant to be a distinctive feature of the mark (Rules 9(4)(a)(v),(vii), 32(1)(c) of the Regulations under the Madrid Protocol (“Regulations”)).

Colour claims

Under the new Rule 9(4)(a)(vii) of the Regulations, the applicant can claim colour as a distinctive feature of the mark also when the basic mark is protected or meant to be protected in colour, but a corresponding colour claim does not appear in the basic mark and the representation of the basic mark is not in colour. In this case, the colour claim of the basic mark must be certified by the office of origin.

Representation of marks

Owners of sound, motion and multimedia marks will rejoice. Until 31 January 2023, an international mark required a “reproduction” of the mark, i.e. a graphic representation of the sign that literally fit into the box of WIPO’s application form.

Under the new law, the applicant can provide a visual representation of the sign in or with the WIPO form, not exceeding 20 cm by 20 cm. Alternatively, the sign can also be submitted in a single digital file (Rules 9(4)(a)(v), 15(1)(iii), 17(2)(v) and 32(1)(b) of the Regulations and Section 11bis of the Administrative Instructions).

Allowed formats are:

  • JPEG, PNG or TIFF for pictures;
  • WAV or MP3 (not exceeding 5 MB) for sounds; and
  • MP4 (not exceeding 20 MB) for videos

Further information on the formats can be found in the WIPO standards ST.67, ST.68 and ST.69.

It is still up to the designated Member State of the Madrid Protocol and its national law whether it will accept sound, motion or multimedia marks. A great source to find out about the type of marks that are registerable in each Member State is the Member Profile online tool.

Representation of a mark in a notification of provisional refusal

Where a provisional refusal is based on an earlier mark, the national office does not have to provide a representation of the earlier mark in the notification but can indicate how to access such representation (Rule 17(2)(v) of the Regulations). This can be done, e.g., by way of a link to an online database or a generally accessible publication.

Electronic communication only

In this day and age, it is not surprising that WIPO limits communication to electronic means (Section 11 of the Administrative Instructions). All national trade mark offices and most users of the Madrid System have already been communicating with WIPO electronically.

Requests to WIPO must now be sent either through the Contact Madrid online platform or by using the e-Madrid online service. All holders and their representatives should check whether they have provided WIPO with an email address.

Picture is by Feyza Yıldırım and is used under licensing terms of Pexels.

Recent changes to the Madrid System Recent changes to the Madrid System Reviewed by Marcel Pemsel on Monday, February 06, 2023 Rating: 5

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