As of February 1, 2021, amendments to the Regulations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks entered into forc

Requirement of an email address

As of February 1, it is now mandatory for:

• 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, to indicate their email address.

World Intellectual Property (WIPO) will send all communications to the representative or, if a representative is not appointed, to the applicant or holder by electronic means to the email address on record.

Principles governing replacement

The replacement feature would allow the holder of an international registration designating a Contracting Party, in which the holder already has a national or regional right, to benefit from the earlier date of protection under certain conditions.

The amendments to Rule 21 of the Regulations now clearly set out in the Rule itself the principles that govern the replacement, more specifically:

• Notification to the Office concerned to take note
• Coexistence, list of goods and services, and entry into effect

Details of the amendments to the Regulations under the Protocol are mentioned in Information Notice No. 78/2020: https://www.wipo.int/edocs/madrdocs/en/2020/madrid_2020_78.pdf.

Detailed information can be found on the WIPO website: https://www.wipo.int/madrid/en/news/2021/news_0003.html.