Some recent procedural changes to the Regulations under the Madrid Protocol will provide welcome clarity for International Registration (IR) owners and their representatives, especially with a new requirement for any provisional refusal notification to specify the time limit for a response. The changes will come into force in two tranches: on 1 November 2023 and 1 November 2024 (unless specified otherwise).

The upcoming 2023 changes are:

• The provisional refusal notification will include the time limit (start and end dates) for filing a request for review or appealing against or responding to the refusal. No more guessing games! Either WIPO or the national IP offices (that have signed up to the Madrid Protocol) will be responsible for communicating these dates, dependent on when the start of the time limit falls. WIPO will use a tracking service for electronic notifications to ensure any email is delivered. Where such delivery fails, the provisional refusal will be sent by post.

• The minimum time limit to file a request for review or appeal against or respond to a provisional refusal is 2 months (or 60 consecutive or calendar days). While this change has been made as from 2023, it does not actually come into effect until 1 February 2025 and there is power for WIPO member states to delay it further still. 

• Where a national IP office fails to specify the start and end dates of the time limit above or the minimum time limit, WIPO will not accept the provisional refusal and will inform the national office and the IR holder of this fact by sending a "defective" notice. The national office can either send a rectified notification within two months of receiving the "defective" notice indicating a new time limit or new provisional refusal provided that the time limit for sending the provisional refusal has not expired. 

• The time limits will be published in the WIPO Gazette of International Marks, so users of the Madrid System and other parties can see them (national offices will be required to notify WIPO of such time limits).

• A provisional refusal based on earlier rights must indicate the name of the earlier rights holder (as always) and of their representatives (if any). Their addresses must also be included, if possible. 

From 1 November 2024 national IP offices can request that WIPO sends other communications concerning IRs to their owners or representatives, such as information about possible actions, reminders to meet requirements before national offices (such as renewal) or any information of particular interest to the IR holder.

To read the full notification about the above changes, please see here. 

You may also be interested in our article on the IP issues engendered by deepfakes here.

We also round up other developments this month here.