Madrid – A System for BusinessesMadrid Seminar

Washington23 October 2013

Rodrigo Garcia-CondeExaminer

Main points

Using the system efficiently International Application Management of International Registration Renewal of International Registration Refusal

The most frequent problems 12 useful examples

WIPO’s E-services MPM, MRS, MEA Madrid Goods & Services Manager E-Renewal and E-Payment Pilot Project: E-Subsequent Designation

Date of the International Registration()

Reception of the request by the OO

Reception of the request by the IB

*

Reception of the request by the OO

Reception of the request by the IB

*

Reception by the IB of the last missing mandatory element

Reception of the request by the OO

*

2 months

2 months

2 months

3

Using the system efficiently – avoiding irregularities

There are different kinds of irregularity, and different rules for remedying them.

Irregularities with respect to the classification of goods and services (Rule 12)

Irregularities with respect to the indication of goods and services (Rule 13)

Irregularities with respect to the fees (Rule 11(3))

Other related irregularities (Rule 11(4))

How to avoid Rule 12 and 13 irregularities

Use proper punctuation so that the products and services in a class are clearly delimited by a semi-colonsemi-colon (;).Avoid colons (:), commas (,) and inverted commas (“ ”) whenever possible.Use a spell checker to avoid spelling mistakes or clerical errors.Use American spelling.Use nouns in the plural where possible.Use the Madrid Goods & Services Manager (MGS) tool.

How to avoid Rule 11 and other irregularities

Read the instructions carefully on http://www.wipo.int/madrid/en/forms/

Using the system efficiently

The most frequent problems12 useful examples

• Before registration• After registration• Other issues

WIPO’s E-services

1/12 Request for changes before International Registration

Examples: added designations, modified list of goods and services, changes to the mark

In principle this is not possible

There are exceptional cases, however, not directly with the IB

2/12 Color claim

Difference between word and/or designs in color vs. a “color mark.”

Difference between item 7(d) and item 8 in MM2.

Black and white: color or not?

Basic fee: 653 or 903 CHF?

3/12 Correction requests

Rule 28 of the Common Regulations

Error by the International Bureau

Error by the Office of Origin

Error by the applicant, to be considered on a case-by-case basis.

Time limit: 9 months

6/12 Another copy of the IR certificate

New procedure from 1 August 2013

Soon available online in Madrid Portofolio Manager

Request for postal delivery against charge

madrid.records@wipo.int

http://www.wipo.int/edocs/madrdocs/en/2013/madrid_2013_25.pdf

7/12 Second part fees of Japan, Cuba and Ghana

Following the grant of protection

Notification within 3-month deadline

Notification of payment sent directly to the National Office, not to the client

Japanese Certificate from

JPO after a few weeks

No certificate from CU and GH

8/12 Communication between us

• WIPO to User

o By mail

o By email

Option for e-communication on MM forms

Electronic Notification Service

• User to WIPO

o By mail, fax or email, see cover page of MM forms

o If by email, to intreg.mail@wipo.int

o Do not send directly to Madrid Team mailboxes

9/12 Refusal in another language that the user opted for

In English, French or Spanish, chosen by the Office

The International Bureau does not provide translations

10/12 Non-renewal after 6-month grace period

Scenario: The IR is renewed only for certain countries.

Question: Does the IB send a notification of non-renewal to those countries? If so, when?

Answer: Yes, we send a notification of non-renewal, but only after the 6-month grace period has ended

11/12 Declaration under Article 14 (5)

Subsequent designation is not possible if the date of international registration is earlier than the date of entering into force of Protocol with respect to the Contracting Party concerned.

Estonia, India, Namibia, Philippines and Turkey

12/12 Use of class headings

Class headings are allowed in the International Application

However, they do not bind Contracting Parties (Art. 4(1)(b))

Also, in some countries, a class heading is not deemed to include all the goods and services in that class.

More information: http://www.wipo.int/edocs/madrdocs/en/2012/madrid_2012_23.pdf

WIPO’s e-services – Pilot Project: E-Subsequent Designation

Data entry mistakes USPTO => WIPO 1/2

In New IA’s:

Mark color/description

The examiner has to amend it as follows:

Colors: Black, white, and green.

Parts: deleted

Description: The mark consists of the word "mobile" in black, then a green square which contains the word "app" in white and has three rounded green lines near its upper right hand corner, then the word "tracking" in black

Data entry mistakes USPTO => WIPO 2/2

Priority details.

The IB will delete all these terms from the screen, because they are entirely identical to the basic list of the international application.

Useful Linkshttp://www.wipo.int/madrid/en

Legal Texts and Guide http://www.wipo.int/madrid/en/legal_texts/

E-WIPO Gazette of International Marks http://www.wipo.int/madridgazette/en/

Fee Calculator http://www.wipo.int/madrid/en/fees/calculator.jsp

International Application Simulator http://www.wipo.int/madrid/en/madrid_simulator/

E-Renewal https://webaccess.wipo.int/trademarks_ren/erenewal_en.jsp

E-Payment https://webaccess.wipo.int/epayment/

ROMARIN (database of international marks) http://www.wipo.int/romarin

Global Brand Database http://www.wipo.int/branddb/en/index.jsp

Country Profiles http://www.wipo.int/madrid/en/members/ipoffices_info.html

Goods & Services Manager http://www.wipo.int/gsmanager/index.jsp?lang=en

Other Online Tools http://www.wipo.int/madrid/en/services/

Thank you!

Questions?

rodrigo.garciaconde@wipo.int