Madrid – A System for Businesses Madrid Seminar

1. Madrid – A System for BusinessesMadrid Seminar Washington 23 October 2013 Rodrigo Garcia-CondeExaminer

2. 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

3. Date of the International Registration(*) * 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 * Reception of the request by the OO Reception of the request by the IB 2 months

4. 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))

5. 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-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.

6. How to avoid Rule 11 and other irregularities Read the instructions carefully on http://www.wipo.int/madrid/en/forms/

7. Using the system efficiently The most frequent problems 12 useful examples Before registration After registration Other issues WIPO’s E-services

8. 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

9. 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?

10. 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

11. 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

12. 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

13. 8/12 Communication between us • WIPO to User • By mail • By email • Option for e-communication on MM forms • Electronic Notification Service • User to WIPO • By mail, fax or email, see cover page of MM forms • If by email, to intreg.mail@wipo.int • Do not send directly to Madrid Team mailboxes

14. 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

15. 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

16. 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

17. 12/12 Use of class headings Class headings are allowed in the International Application However, they do notbind 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

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

19. 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

20. 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.

21. 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/

22. Thank you! Questions? rodrigo.garciaconde@wipo.int