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?”

Gaining incontestability economically

The majority of US trademark registrations lack “incontestable” status, because the owner of the registration has not filed “Section 15” papers at the USPTO.  (I have blogged here about what “incontestable” status means and why a trademark owner might want to gain “incontestable” status.)  In this article I will talk about ways to gain “incontestable” status economically.

Continue reading “Gaining incontestability economically”

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”

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”

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”

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”

Meet the Bloggers XIII was a success

Meet the Bloggers XIII
(click to enlarge)
Meet the Bloggers XIII
(click to enlarge)

Meet the Bloggers XIII was a success!  The reception was on the beach in Barcelona.  The surf crashed on the sand.  Cruise ships and sailboats passed by on the ocean.  Tapas and beverages were consumed.  Over a hundred people attended.

One more event to attend and then you can feel you have accomplished nearly all of your INTA goals.  Yes, the e-Trademarks listserv reception lies ahead, tomorrow (Tuesday) evening.

The two receptions to attend in Barcelona redux

Hopefully everybody who is in Barcelona for the INTA meeting already has their ribbons to attend the two must-attend receptions:

The weather in Barcelona is delightful just now.  MTB XIII will be at Xup Xup which is a beachfront venue.  The e-Trademarks reception will be at Opera Samfina which is in the middle of La Rambla.

See you there!