Category Archives: Madrid Protocol

A Madrid Protocol thing that USPTO needs to do as Office of Origin

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Hello, readers in the US.

You know those notifications that you receive from WIPO about your Madrid Protocol cases?  Those notifications from WIPO about your Madrid cases that do not tell you your attorney docket number?  

Don’t you wish that each such notice would tell you your attorney docket number?  Don’t you get very tired of having to go on a treasure hunt every time you receive such a Madrid notice from WIPO, to try to figure out what the attorney docket number is?

Maybe you wonder if there is some good reason why such notices do not tell you your attorney docket number.

There is a reason.  If you’d like to know, read on.  Continue reading →

The new Madrid Application Assistant

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(Update:  At the end of this article which I posted yesterday, I described a programming mistake in the newly released MAA software from WIPO.  I wondered how long it would take for WIPO to get it fixed.   Not even 24 hours have passed and already I received an email from a nice person at WIPO letting me know that they had fixed the problem.  I tested and indeed it has been fixed.)

WIPO has just announced its new Madrid Application Assistant.  Here is how WIPO describes it:

The World Intellectual Property Organization (WIPO) has launched the Madrid Application Assistant, which automatically records all the information required to complete an international application.

The Madrid Application Assistant is the latest improvement to the service level of the Madrid Registry as part of WIPO’s drive to enhance the creation and management of trademark rights under the Madrid System.

You can see Information Notice No. 53/2020 and you can see a “learn more” page about the Madrid Application Assistant.

What exactly is this new Madrid Application Assistant?  What is the problem, if any, for which the new Madrid Application Assistant is the solution?  Who can use this tool?  Is it a good idea to use this tool?  Can applicants in the United States use this tool?  How will this new tool affect US trademark practitioners?  I will try to answer these questions.  Continue reading →

Time of day at RO/IB returns to normal for US filers

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On March 8 I blogged that US filers filing documents at the International Bureau needed to pay extra close attention to what time it is in Switzerland.  The reason is that in the US, Daylight Saving Time happened on March 8.  But did not happen on that day in Switzerland.  This meant that for the past three weeks, a US-based filer in (for example) the Mountain Time zone would be able to e-file in the IB as late as 5PM and still get a same-day filing date.  This differed from the usual drop-dead time of 4PM.

Today (March 29, 2020) is the day that Daylight Saving Time happens in Switzerland. Continue reading →

Filing at the International Bureau and Daylight Saving Time

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It’s that time of year again.  The time of year when it is important to keep track of the fact that Daylight Saving Time is different in Switzerland from the way it is in the United States.  This is important because you might be in the US, and you might be e-filing (or fax-filing) some document with the International Bureau of WIPO. Continue reading →

Today is the day for Malaysia and the Madrid Protocol

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Today is the day.  As of today, a trademark owner in Malaysia can file a Madrid Protocol application to pursue protection in one or more Offices outside of Malaysia. Starting today, a trademark owner outside of Malaysia can file a Subsequent Designation to Malaysia (or can file a new Madrid Protocol application designating Malaysia).

The two-letter code for Malaysia is “MY”.

 

e-filing at WIPO — back to normal

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For the past week the situation for e-filing at WIPO, for most people in the US, has been that the local time to e-file so as to get a same-day filing date in Switzerland has been different from usual.  (The reason for this is that a week ago, people in Switzerland turned their clocks back.) But as of today, people in the US have turned their clocks back.  So things are back to normal.

For example if you are in the Mountain time zone, once again as of today you will be counting toward 4PM local time to get a same-day filing date in Switzerland.  (For the past week the answer was 5PM.)

Today is the day for Brazil and Madrid Protocol

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(Updated to reflect Article 14(5) Declaration.)

Starting today, a trademark owner in Brazil can file a Madrid Protocol application to pursue protection in one or more Offices outside of Brazil.

And starting from today, a trademark owner outside of Brazil can file a  new Madrid Protocol application designating Brazil.

I had previously posted that starting from today, a trademark owner outside of Brazil who already has an International Registration can file a Subsequent Designation to Brazil.  This is stated too broadly.  Brazil’s Instrument of Accession includes an Article 14(5) Declaration, which provides that a “sub des” can only be filed with respect to Brazil for an IR that was registered on or after today, that is, on or after October 2, 2019.   

The two-letter code for Brazil is “BR”.

 

 

Malaysia has joined the Madrid Protocol

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Malaysia has joined the Madrid Protocol. The Protocol will enter into force for Malaysia on December 27, 2019.

Malaysia deposited its Instrument of Accession on September 27, 2019. This brings to 122 the number of members of the Madrid system.

Malaysia joined the PCT on August 16, 2006. If Malaysia were to join the Hague Agreement, it would then achieve the trifecta for international filing systems.

The two-letter code for Malaysia is “MY”.

Starting from December 27, a trademark owner in Malaysia can file a Madrid Protocol application to pursue protection in one or more Offices outside of Malaysia. And starting from that date, a trademark owner outside of Malaysia can file a Subsequent Designation to Malaysia (or can file a new Madrid Protocol application designating Malaysia).