Amendments to the Common Regulations under the Madrid Agreement

11/22/2018

The State Agency on Intellectual Property (AGEPI) announces that some amendments to the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Arrangement (Common Regulations) will enter into force on 1 February 2019.

Amendments consist in introducing the possibilities of:

  • Division of an international registration in respect of a designated Contracting Party (Reg. 27bis);
  • Merger of international registrations (Reg. 27ter), resulting from both the recording of a partial change in ownership and the recording of division.

At the same time, the following amendments were made to ensure the application of the new Rules 27bis and 27ter:

  • The text of Rule 22(2) (b) of the Common Regulations has been adjusted to regulate the application of the provisions regarding the cancellation of international registrations resulting from divisional international registrations;
  • A new Rule 40(6) has been introduced into the Common Regulations which refers to the possibility for the Contracting Party to notify before the date the new Rules 27bis (1) and 27ter (2)(a) enter into force or the date on which it becomes a Contracting Party to the Madrid Protocol, that the new Rules 27bis (1) and/or 27ter (2)(a) of the Common Regulations are not compatible with the applicable national or regional laws, as the case may be;
  • A new CHF 177 fee has been introduced for the division of an international registration (item 7.7 of the Schedule of Fees applicable to applications for international registration of marks).

With the entry into force of these amendments, the following standard forms will also be introduced:

  • MM22-request for the division of an international registration
  • MM23-request for the merger of international registrations resulting from the recording of a partial change in ownership

MM24-request for the merger of an international registration resulting from the recording of a division.