Category: Madrid Protocol

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Why you can’t always count on a subsequent designation being available?

A member of the Madrid Protocol listserv asked:

I would like to file an e-subsequent designation for India.  The country of origin is the EU and the owner is in an EU-member country.  A [Madrid Protocol] application was filed in 2011 designating countries other than India.  On the e-Subsequent Designation application page, a number of countries are listed from which to choose to designate protection.  India is NOT listed as one of those countries.  Am I missing something?  Does anyone know why India does not appear in the list of countries to designate subsequent protection to?

I was fascinated to learn why it is that India is a member of the Madrid Protocol and yet an owner of an International Trademark Registration might not be able to carry out a subsequent designation to India. The explanation also offers a reminder how important it is to use an e-validated filing tool from WIPO rather than filing on paper. Continue reading “Why you can’t always count on a subsequent designation being available?”

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Indonesia joins Madrid Protocol

H.E. Dr. Yasonna Laoly, Minister for Law and Human Rights, Indonesia, and Francis Gurry, Director General, WIPO (click to enlarge)

On October 2, 2017, Indonesia deposited its instrument of accession to the Madrid Protocol at the International Bureau of the World Intellectual Property Organization. The Madrid Protocol will thus enter into force for Indonesia on January 2, 2018.

This brings to 100 the number of members of the Madrid system. Continue reading “Indonesia joins Madrid Protocol”

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Why you probably can’t send international faxes any more

A couple of weeks ago I had the great honor to visit at WIPO with the heads of some of the PCT processing teams.  These are the people at the International Bureau who interact with callers (applicants and patent practitioners) who have questions and problems relating to PCT.  One of the things that they mentioned to me, that I found puzzling when I first heard it, is that in recent months they have received ever-increasing numbers of complaints from people who call to report that they try to send faxes to the International Bureau and are unable to do so.  Upon reflection I now realize the likely cause of this problem.  And it is definitely not that there is some recent malfunction in WIPO’s fax machines.

Continue reading “Why you probably can’t send international faxes any more”

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Thailand joins Madrid Protocol

(Left to right) Ms. Sunanta Kangvalkulkij, Ambassador, Permanent Representative, Permanent Mission of Thailand to the World Trade Organization; Mr. Thosapone Dansuputra, Director General, Department of Intellectual Property; Ms. Wiboonlasana Ruamraksa, Permanent Secretary, Ministry of Commerce; Mr. Francis Gurry (photo: WIPO/Berrod)

On August 7, 2017, Thailand deposited its instrument of accession to the Madrid Protocol at the International Bureau of the World Intellectual Property Organization.  The Madrid Protocol will thus enter into force for Thailand on November 7, 2017. Continue reading “Thailand joins Madrid Protocol”

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A new reason to consider Madrid Protocol


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 “A new reason to consider Madrid Protocol”

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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.

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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 “Filing at the International Bureau and Daylight Saving Time”

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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.dst

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For the next week, an extra hour available for WIPO filings

dstExperienced 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.

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Brunei joins Madrid Protocol

bruneiBrunei 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.