Working Group Recommends Changes to the Common Regulations

December 10, 2015

The latest session of the Working Group on the Legal Development of the Madrid System for the International Registration of Marks (the Working Group) took place on November 2 to 6, 2015. During this session, the Working Group recommended changes to the Common Regulations to clarify the examination of limitations conducted by WIPO and to introduce the recording of changes in indications concerning the legal nature of the holder. These recommendations will be discussed for their adoption at the next session of the Madrid Union Assembly, with effect as from July 2017.

Limitations in international applications

A new paragraph 8bis of Rule 12 would clarify that WIPO’s examination of limitations made in international applications is restricted to ensuring that goods and services listed in the limitation can be grouped under the classes included in the main list of the international application.   The new paragraph would further indicate that, when an irregularity concerning a limitation is not remedied, the limitation should be deemed not to contain the goods and services concerned.

Limitations requested as a recording of a change to the registration

A new paragraph (2)(d) of Rule 25 would explicitly require that goods and services listed in a request for the recording of a limitation be grouped according to the classes of the Nice Classification appearing in the international registration.   In addition, an amendment to paragraph (1) of Rule 26 would clarify that WIPO’s examination of limitations requested as a recording of a change would be restricted to confirming that numbers appearing in the request also appear in the main list of the international registration.

Recording of a change in the legal nature of the holder

The applicant, when it is a legal entity, may indicate its legal nature and state of organization in item (2)(f)(ii) of the international application form (form MM2). The indications are distinctively recorded, notified, published in the Gazette and made available in ROMARIN under INID Code 842.

An amendment to paragraph (1)(a)(iv) of Rule 25 would allow holders to request the recording of a change in indications concerning the legal nature and state of organization of the holder, by itself or along with the recording of a change in the name or address of the holder. Such request would be subject to the payment of a fee of 150 Swiss francs, irrespective of the number of international registrations for which the recording is requested. Form MM9 would be modified and used for this purpose.

Other advancements

The Working Group also made progress on a number of other proposals, including:

  • the introduction of the recording of division and merger of international registrations;
  • the adoption of a centralized procedure for seeking the Office of a designated Contracting Party to take note of an international registration in its register in the context of a replacement;
  • further analysis by the International Bureau of roles and responsibilities in the examination of limitations; and
  • the possibility for an Office of a designated Contracting Party to transmit to the holder, through the International Bureau, communications concerning actions that might affect protection already granted to the mark in an international registration.  

The Working Group will continue to discuss these matters in its next session.

Moreover, the Working Group recommended that entry into force of changes to Rule 24(5), which deal with the examination of limitations made in subsequent designations, be suspended subject to the requested review of limitations.

Finally, taking into account that no country remains bound exclusively by the Agreement, the Working Group recommended that the Madrid Union Assembly take necessary measures to prevent accessions to this treaty only.

Questions?