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In an information notice (information notice No. 26/2023), WIPO has announced a number of amendments to the Regulations under the Protocol Relating to the Madrid Agreement concerning the International Registration of Marks.
These amendments, which have been in force since 1 November 2023, provide clarity for right holders and their representatives.
- Indication of the start and end date of the period for replying to a provisional refusal
Although an international trademark is registered through a one-stop shop, once the international phase has been completed, the application is forwarded to the offices of the designated countries for examination in accordance with their national legislation. It is during this examination that any objections or provisional refusals are issued.
Until recently, the deadlines for responding to provisional refusals could lead to confusion, as many national or regional offices did not indicate either the deadline for responding or the dates on which said deadline was calculated.
To overcome this issue, national or regional trademark offices will now be required, when issuing a provisional refusal, to indicate the deadline for response, as well as the start and end dates of the deadline, unless the time limit starts to run on the date on which WIPO transmits the provisional refusal to the holder. In this case, it will be up to WIPO to indicate the start and end dates of the period in its notification.
As a security measure, in the rare event that an electronic communication does not reach the intended recipient (due to a faulty e-mail address or a full inbox, for example), WIPO will also send a copy of the notification of provisional refusal by post.
- Introduction of a minimum time limit for responding to provisional refusals
Until recently, WIPO did not impose any minimum time limit for examining and responding to provisional refusals. These deadlines, determined by the national/regional intellectual property offices, ranged from 15 days to 15 months.
Sometimes very brief, they were therefore a real source of difficulties for trademark right holders and their representatives.
To alleviate this problem, a minimum period of two months (or 60 consecutive or calendar days) is now allowed for filing a request for review, an appeal or a response to a provisional refusal.
In addition to this minimum two-month period, WIPO will calculate and communicate to right holders a specific date for responding to provisional refusals.
While the initial deadline for compliance with this new requirement is February 1st, 2025, Contracting Parties that require additional time, especially to adjust their legal framework, can choose to further postpone the implementation of this obligation.
These changes, which industrial property law practitioners have been advocating for several years, are to be greeted with applause.
A positive development, which shows that WIPO is listening to the voice of its users.