Category: Madrid Protocol

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Are you a user of Madrid Protocol? Will you be in Washington on October 27?

Are you a user of the Madrid Protocol? Will you be in Washington, DC on Saturday, October 27?

If so, then please consider helping the World Intellectual Property Organization (WIPO) — and yourself — by attending a focus group of US users of the Madrid system at 7AM on that day at the Washington Marriott Wardman Park hotel in Washington, DC.  Although WIPO’s focus group will be held in conjunction with the AIPLA Annual Meeting, you do not need to be registered for the Annual Meeting to participate in the focus group.
Continue reading “Are you a user of Madrid Protocol? Will you be in Washington on October 27?”

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Malawi joins Madrid Protocol

click to enlarge
On September 25, 2018, the Government of Malawi deposited its instrument of accession to the Madrid Protocol with WIPO’s Director General, making Malawi the 102nd member of the Madrid System, which now covers 118 countries. The Protocol will enter into force for Malawi on December 25, 2018.

Starting from December 25, a trademark owner in Malawi can file a Madrid Protocol application to pursue protection in one or more Offices outside of Malawi.  And starting from that date, a trademark owner outside of Malawi can file a Subsequent Designation to Malawi (or can file a new Madrid Protocol application designating Malawi).

It is recalled that the Patent Cooperation Treaty entered into force on January 24, 1978, initially with 18 contracting states.  But perhaps not all readers appreciate that Malawi was one of those initial 18 contracting states for the PCT!  Saying this differently, Malawi was more trendy, modern, and up-to-date about the PCT than most of the 152 present-day members of the PCT.  Nobody joined PCT sooner than Malawi!

The two-letter code for Malawi is “MW”.

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Should you be checking the “GB” box in addition to the “EM” box when filing Madrid applications?

When you are filing a Madrid Protocol application, it is possible to check the “GB” box in addition to checking the “EM” box.  With Brexit in progress, should you be checking both boxes?  A March 14 tentative agreement (link) between EU and UK makes it perhaps less urgent to check both boxes in the near term, as I will discuss.

Continue reading “Should you be checking the “GB” box in addition to the “EM” box when filing Madrid applications?”

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Time returns to normal for WIPO filings

As I reported a week ago, the usual autumn thing happened with time zones.  A week ago Europe “fell back” with daylight saving time.

Now today the US also “fell back”.

For the past week, US filers had an extra hour available to get a same-day filing date for filings at WIPO.  A US filer could file as late as 5PM (Mountain Time) instead of the usual 4PM, and get a same-day filing date.

Now it is back to normal.  The time of day to keep in mind is once again 4PM Mountain Time.

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

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 (usually) 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 yesterday, 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 5, 2016.

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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”