Amendments to the Regulations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks in force as from February 1, 2021

1. At its fifty-third (23rd ordinary) and fifty fourth (31st extraordinary) sessions, the Madrid Union Assembly adopted amendments to Rules 3, 9, 21, 25 and 36 of the Regulations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (hereinafter referred to as “the Regulations”) that will enter into force on February 1, 2021.

2. The amended text of the Regulations is available in the Annex to the present Information Notice.
E-mail address as a prescribed indication (amendments to Rules 3, 9, 25 and 36 of the Regulations)

3. Amendments to Rules 3, 9, 25 and 36 of the Regulations will require that applicants, in the international application, new holders, in a request for the recording of a change in ownership, and representatives, appointed as such in the international application, in a request for recording or in a separate communication, indicate their electronic mail (e-mail) address.

4. The International Bureau will send all communications to applicants, holders or representatives by electronic means to the e-mail address on record. The International Bureau will continue to send communications by postal services to applicants, holders or representatives who have not indicated an e-mail address because they were not required to do so before the entry into force of the above-mentioned amendments. It will also send communications by postal services when an electronic communication fails to reach its intended recipient.

5. Failure to indicate the e-mail address of the applicant in an international application will result in an irregularity that, in accordance with Rule 11(2) of the Regulations, the applicant may remedy within three months from the date of the notification of the irregularity by the International Bureau. The international application will be considered abandoned if the applicant does not remedy the irregularity within that period. If remedied, this irregularity will not affect the date of the international registration. The new requirement applies to international applications received by the Office of origin on or after February 1, 2021.

6. Failure to indicate the e-mail address of the new holder in a request for the recording of a change in ownership will result in an irregularity that, in accordance with Rule 26 of the Regulations, the new holder may remedy within three months from the date of the notification of the irregularity by the International Bureau. The request will be considered abandoned if the new holder does not remedy the irregularity within that period. The new requirement applies to requests for recording received by the International Bureau or by the Office concerned, when presented through an Office, on or after February 1, 2021.

7. Failure to indicate the e-mail address of the representative, appointed as such in the international application, in a request for recording or in a separate communication, will result in an irregular appointment. In accordance with Rule 3(3) of the Regulations, the International Bureau will inform the applicant or holder, the purported representative and the Office concerned, if any, of this fact and will send all relevant communications only to the applicant or holder until a representative is appointed. The applicant or holder may appoint a representative in a new communication meeting the requirements prescribed in Rule 3(2) of the Regulations.

8. The new requirement applies to appointments made on or after February 1, 2021, in an international application, request for recording or as in a separate communication. An irregular appointment made in an international application or in a request for recording, while preventing the recording of the appointment, will not prevent the registration of the mark or the requested recording, as the case may be, from being effected in the International Register.
Principles governing replacement (amendments to Rule 21 of the Regulations)

9. Amendments to Rule 21 of the Regulations will specify the principles that govern the replacement of a national or regional registration by an international registration, as provided for in Article 4bis(1) of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (hereinafter referred to as “the Protocol”).

10. For replacement to occur, the national or regional registration and the international registration that is replacing it must be for the same mark and in the name of the same person. Further, the international registration must cover all the goods and services concerned with replacement in the national or regional registration and the designation of the Contracting Party concerned must take effect after the date of the said national or regional registration. The amendments acknowledge the fact that an international registration may replace more than one national or regional registration.

11. An amended paragraph (1) of Rule 21 indicates that holders may present, directly to the Office concerned, a request for this Office to take note under Article 4bis(2) of the Protocol as from the date of the notification by the International Bureau of the international registration or subsequent designation, as the case may be.

12. An amended paragraph (2) of Rule 21 indicates that Offices of designated Contracting Parties may not refuse protection to the mark in an international registration based on the national or regional registration that the former has replaced; and, acknowledges that both, the national or regional registration and the international registration that has replaced it, may coexist. The amended paragraph also requires that the Office concerned examine requests made under Article 4bis(2) of the Protocol to determine whether the conditions in paragraph (1) of the same Article have been met; and, states that the goods and services concerned with replacement in the national or regional registration must be covered by those in the international registration. Finally, the amended paragraph clarifies that replacement is deemed to take place when the international registration takes effect in the designated Contracting Party concerned, in accordance with Article 4(1)(a) of the Protocol.

Source: Wipo.int