Latest Developments in the Functioning of the Madrid Agreement Concerning the International Registration of Marks

12/15/2016

In the framework of the 50th session of the Madrid Union convened by the General Assembly of WIPO Member States during the period 3-11 October 2016, there were taken several strategic decisions with regard to the evolution of the Madrid System.

Besides the historic decision to freeze the Madrid Agreement Concerning the International Registration of Marks by not allowing new accessions to the cited Agreement there were also voted changes that cover the procedures and legal provisions applicable to beneficiaries, designated states and the International Bureau in the process of registering marks by international route.

Thus, as from July 1, 2017, amendments will come into force that refer to Rule 12 of the Common Regulations of the Madrid Agreement and the Protocol Relating to that Agreement, by inserting a new item 8(bis), which will refer to the examination by the International Bureau of limitations proposed by the applicant/office of the country of origin.

Also, as from July 1, 2017, amendments will come into force with reference to Rule 25 (1)(IV) of the Common Regulations on the possibility of introducing changes in the legal nature of the holder and the State under the law of which the said legal entity has been organized and respectively a change to the amount of applicable fees especially item 7.4

Also, within the Madrid Union there were adopted certain amendments that will take effect on November 1, 2017. These relate in particular to certain procedures that the International Bureau will follow in terms of communication of different information. In particular, clarifications were introduced with reference to the communications from the Offices of the designated Contracting Parties sent through the International Bureau (Rule 23bis) .

Important changes that will produce effect from February 1, 2019, were approved by the Madrid Union with regard to granting the possibility for beneficiaries to seek the division of an international registration being also set the basic rules applicable to the procedure for the division of the international registration (Rule 27bis) .

So, as from February 1, 2019, the holders of international registrations will be able to divide the goods/services from an international registration into several registrations by division. Divisional registrations will bear the number of the international registration accompanied by a capital letter (e.g. 1222567A).

Also, as from February 1, 2019, rules will be applied expressly refer to the merger of international registrations (Rule 27ter) .

Details in the documents:

MM/A/50/4

MM/A/50/5