COVID-19 Update: Madrid System

Remedies available against failure to meet a time limit for a communication addressed to WIPO

In certain parts of the world, access to mail and delivery services, as well as to electronic communication might be impracticable due to measures taken in connection with the COVID-19 outbreak, such as, for example, lockdown, quarantine or self-isolation.

In such a situation, under Rule 5(1), (2) and (3) of the Regulations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the Regulations), applicants, holders and IP offices who have failed to meet a time limit for a communication addressed to WIPO may be excused if they send that communication within five days after regaining access to mail or delivery services or to electronic communication. In any event, WIPO must receive the communication no later than six months from the date on which the time limit concerned expired.

WIPO will treat favorably any request made under Rule 5 of the Regulations citing COVID-19 related issues and not require that applicants, holders or IP Offices submit evidence in respect thereof.

Rule 5 of the Regulations applies to any communication addressed to WIPO for which there is a time limit under the Regulations or the treaty. For example, a communication:

• in which an IP Office transmits an international application or a subsequent designation
• in which an IP Office notifies a provisional refusal
• or in which an applicant, a holder or an IP Office remedies an irregularity in an international application or in a request for recording.

Rule 5 of the Regulations also covers the time limit to pay any fee to WIPO, including the period of grace to pay the fees for the renewal of an international registration. Accordingly, this will apply to communications addressed to WIPO for acceptable modes of payment under the Madrid System (e.g. instructions to debit from a Current Account at WIPO or a payment by transfer to a WIPO bank or postal account).

Applicants, holders and IP offices are encouraged to take prompt action so that WIPO receives the communication, instruction or payment no later than six months from the expiry of the time limit concerned.

Users can present requests and send communications to WIPO via our online services or Contact Madrid.

Continued processing

Holders or applicants who have failed to meet the time limits specified or referred to in Rules 11(2) and (3), 20bis(2), 24(5)(b), 26(2), 34(3)(c)(iii) and 39(1) of the Regulations¹ may request that WIPO continue processing the international application, subsequent designation, payment or request concerned. They may request continued processing without giving any reason or providing any evidence.

Applicants or holders must request continued processing by presenting official form MM20 to WIPO within two months from the date on which the aforementioned time limits expired and meet all the prescribed requirements.

Closure of the IP Office of a Contracting Party

IP Offices of Contracting Parties should inform WIPO that they are not open to the public and indicate the dates on which they will remain closed, either in the same communication or as soon as those dates are known, and specify the date on which they will reopen.

Under Rule 4(4) of the Regulations, a period that expires on a day on which an IP Office is not open to the public would expire on the first subsequent day on which that IP Office reopened. All time limits under the Madrid System that concern that IP Office (e.g., the time limit to send a provisional refusal), including the time limit for the holder to respond to a notification sent by the IP Office (e.g., the time limit to respond to a notification of provisional refusal), would be extended accordingly.

IP offices are strongly encouraged to include information on further flexibilities or remedies available to holders of international registrations in connection with time limits afforded by those IP Offices.

WIPO has made publicly available all relevant information officially received from IP Offices of the Contracting Parties.

WIPO has resumed sending out all communications in paper format to users who have not yet provided an email address. In addition, the backlog of all notifications which WIPO could not send to users in paper format due to the postal interruptions since March 2020 has been sent by postal mail.

For users who have provided email addresses, all communications are sent and will continue to be sent electronically as usual. For users who have received certified documents and extracts as well as certificates in electronic format and additionally requested hard copies from WIPO, the hard copies in question are being sent by postal mail.

Communications addressed to applicants, holders or to their representatives and certified documents during the disruption of postal services

Applicants, holders and their representatives are advised to send communications under the Madrid System to WIPO by electronic means. They may present requests to WIPO using the upload function in Madrid Portfolio Manager or through Contact Madrid. Use of our online services is also strongly recommended. More online services will be offered over the coming months.

How to provide an email address to WIPO

In view of the current circumstances, WIPO urges applicants, holders and representatives to provide an email address to receive electronic communications under the Madrid System if they have not already done so. Applicants may indicate an email address in their international applications. Applicants, holders or representatives who have not yet provided an email address may do so through Contact Madrid.

It is now also possible to verify in Madrid Monitor whether an email address is on record at WIPO in respect of any international registration.

As of July 13, WIPO will deliver the following documents and services:

• certified copies of certificates of international registration and renewal;
• attestations; and,
• detailed certified extracts
• simple certified extracts
• legalization of documents; and
• expedited services.

WIPO will send paper copies of the documents previously delivered in electronic version by email (PDF) between March 31 and July 12, 2020 as soon as possible.

Holders of international registrations with a date later than January 1, 2011, and their representatives may download, free of charge, simple copies of their certificates of international registration and renewal using the Madrid Portfolio Manager.

Reopening of IP Offices

• Intellectual Property Agency of the Republic of Azerbaijan
• Cuban Industrial Property Office (OCPI)
• Madagascar Office of Industrial Property (OMAPI)
• State Agency on Intellectual Property (AGEPI) of the Republic of Moldova
• Slovenian Intellectual Property Office (SIPO)
• Spanish Patent and Trademark Office (OEPM)
• Directorate of Industrial and Commercial Property Protection (DCIP) of the Ministry of Internal Trade and Consumer Protection of the Syrian Arab Republic
• National Office of Intellectual Property of Viet Nam

Closure of IP offices

• Antigua and Barbuda Intellectual Property and Commerce Office (ABIPCO)
• Superintendence of Industry and Commerce (SIC) of Colombia
• Greek Trademark Office
• Office of the Controller-General of Patents, Designs and Trademarks of India
• Italian Patent and Trademark Office (UIBM)
• Mexican Institute of Industrial Property (IMPI)
• Intellectual Property Office of the Philippines (IPOPHL)
• National Institute for Standardization and Industrial Property (INNORPI) of Tunisia

Extensions, suspensions and other temporary measures

• African Intellectual Property Organization (OAPI)
• Austrian Patent Office (APO)
• Italian Patent and Trademark Office (UIBM)
• Spanish Patent and Trademark Office (OEPM)
• United States Patent and Trademark Office (USPTO)

Users can access detailed information on the laws and practices of IP offices of the Madrid System members in our Madrid Member Profiles Database.