March 20, 2020
We are mindful that possible disruptions might affect users of the Madrid System due to measures taken against the Coronavirus disease (Covid-19) outbreak. Consequently, we wish to inform you of the remedies available against a failure to meet a time limit under the Madrid System.
We also would like to remind you of the automatic extension of time limits in case an intellectual property (IP) office is not open to the public, and to suggest measures you can take against possible disruptions in mail or delivery services.
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), users of the Madrid System 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, the World Intellectual Property Organization (WIPO) must receive the communication no later than six months from the date on which the time limit concerned expired.
Users must provide sufficient evidence of the reason why WIPO should excuse the above-mentioned failure. Evidence could be, for example, an official announcement or an attestation by a certified physician.
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 above-mentioned 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.
In the communication mentioned in paragraph 7, above, 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 will make publicly available all relevant information received from IP Offices of the Contracting Parties on the Madrid Member Profiles Database.
Measures against possible disruptions in mail or delivery services
WIPO strongly encourages applicants, holders, their representatives and IP Offices, to use electronic communication to mitigate the negative effects of possible disruptions in mail or delivery services.
Applicants, holders and representatives may present requests to the WIPO using the upload function in Madrid Portfolio Manager or through Contact Madrid. They are also strongly advised to use e-Payment, e-Renewal and e-Subsequent designation.
Most importantly, applicants, holders and representatives are strongly encouraged to provide an e-mail address to receive electronic communications from WIPO. Those who have not yet provided an e-mail address may do so through Contact Madrid. WIPO will continue to send a communication by postal services where a communication sent by electronic means fails to reach its intended recipient.
Questions or comments
Send us your questions with Contact Madrid.
- Information Notice No. 7/2020
- Madrid online services to search before filing, file, monitor and manage international applications and registrations.