The reader will be familiar with the many factors to be explained to one’s clients to help them decide whether to use Madrid Protocol on the one hand, or ordinary Paris Convention national filings on the other hand, to accomplish foreign filings. Now, starting July 1, 2017, there will be one more factor to be taken into account. Madrid Protocol will have a convenient mechanism by which the holder of an International Registration may request a recording to introduce an indication concerning its legal nature or to change that indication once it has been recorded. Continue reading
Category Archives: Madrid Protocol
Time of day returns to normal for US filers filing at the International Bureau
Readers will recall my blog post of two weeks ago in which I described that an American filer would (for a limited time of two weeks) have an extra hour during which to file a same-day filing at the IB. Well, now it’s back to normal. Now the drop-dead time for e-filing (or fax filing) is the usual 4PM (Mountain Time).
So for your PCT filing at the RO/IB, or your direct filing of a Hague Agreement design application, or your payment of a renewal for a Madrid Protocol international trademark registration, or an Article 19 amendment, or a PCT Demand … it’s back to normal.
Filing at the International Bureau and Daylight Saving Time
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
Midnight at WIPO returns to normal
A week ago I blogged that filers filing things at WIPO would have an extra hour to get a same-day filing date. As of a week ago, you could file as late as 5 PM Mountain Time and still get a same-day filing date.
Now today things return to normal. To get a same-day filing date at WIPO, you will need to file by 4 PM.
For the next week, an extra hour available for WIPO filings
Experienced filers in the Patent Cooperation Treaty, Madrid Protocol, and Hague Agreement systems (utility patents, trademarks, and industrial designs) know that it is important to keep always in mind when midnight will arrive in Geneva, where WIPO is located.
For a PCT filer, this matters because to get a same-day filing date, a PCT application being filed in RO/IB will need to be filed by 4 PM Mountain Time. The same is true for filing an Article 19 amendment. The same is true if you are using ePCT to file a Demand and Article 34 amendment.
For a Madrid filer, this matters among other things for the payment of decade renewal fees.
For a Hague filer, this matters for the the filing of an international design application at the IB.
The point of today’s post is that starting today, and for the next week, you get an extra hour to get a same-day filing date. The reason is that Europe and the US carry out their daylight saving time transitions on different days that are a week apart.
This means that you could file as late as 5 PM Mountain Time (instead of the usual 4 PM) and still get a same-day filing date.
Things will return to normal a week from now, on November 6, 2016.
Brunei joins Madrid Protocol
Brunei has joined Madrid Protocol.
Brunei deposited its instrument of accession today, October 6, 2016.
The Protocol will enter into force for the purposes of Brunei on January 6, 2017.
This brings the number of members of the Madrid system to 98.
The two-letter code for Brunei is BN.
Algeria joins Madrid Protocol
This is a very important milestone for the Madrid Protocol.
Defective TEAS form — section 71 and 15
The TEAS system offers an online form called “Combined declaration of use & incontestability under Sections 71 & 15“. It turns out the form is defective — it sometimes forces the user to pay a grace period fee even if the would-be filing is not within the grace period. There are two possible workarounds. Continue reading
Amending a US application that Is the basis of an IR?
A member of the E-Trademarks listserv asked this:
I have never filed via the Madrid Protocol, but I am considering filing one based on a recently filed US application. If the listing of goods in the US application are amended, are the IR and the subsequent designations automatically amended so that the goods are always the same? It would seem weird to have an IR and national designations with a different listing of goods.
How Madrid ten-year trademark renewals work
US trademark practitioners are just now starting to get asked by foreign clients to do a ki
nd of filing that never existed before about September of 2014. The filing is a ten-year Statement of Use for a US Madrid registration. This blog article tries to explain such filings and how they are similar to and different from other US trademark maintenance and renewal filings. If you already understand everything about the figure at right, you can skip reading this blog article!