MM/LD/WG/18/2 REV.
ORIGINAL: ENGLISH
DATE: SEPTEMBER 29, 2020

Working Group on the Legal Development of the Madrid System for
the International Registration of Marks

Eighteenth Session
Geneva, October 12 to 16, 2020
PROPOSED AMENDMENTS TO THE REGULATIONS UNDER THE PROTOCOLRELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONALREGISTRATION OF MARKS
Document prepared by the International Bureau

INTRODUCTION
1.
This document proposes amendments to the Regulations under the Protocol Relating to
the Madrid Agreement Concerning the International Registration of Marks (hereinafter referred
to, respectively, as “the Regulations” and “the Protocol”). More specifically, these proposals
concern amendments to Rules 3, 5, 5bis, 22, 24 and 39 of the Regulations and consequential
amendments to the Schedule of Fees.
2.
The COVID-19 pandemic has resulted in severe disruptions for users of the Madrid
System for the International Registration of Marks (hereinafter referred to as “the Madrid
System”) due to measures taken in several countries to combat its spread. Those disruptions
have made evident that the safeguards provided for in the Regulations present a numberof deficiencies.
3.
To address the above-mentioned deficiencies, the proposed amendments to Rule 5 of theRegulations seek to provide users of the Madrid System with safeguards aligned with thosefound in the Regulations under the Patent Cooperation Treaty (hereinafter referred to as “theRegulations under the PCT”), which are broader in nature. The other proposals further support
the ongoing process of simplifying the Regulations, streamlining the processes under the
Madrid System and making it more user-friendly to its users, Offices of Contracting Parties andinterested third parties. The proposals are reproduced in the Annex to this document.

MM/LD/WG/18/2 Rev.
page 2
4.
It is to be noted that this document has been revised to take into account the fact that the
Madrid Union Assembly, at its fifty-fourth session held in Geneva from
September 21 to 25, 2020, adopted amendments to Rules 3, 9, 25 and 36 of the Regulations.
Those amendments will require that the applicant, in an international application, the newholder, in a request for the recording of a change in ownership, and a newly appointed
representative indicate each their electronic mail address to receive electronic communications
from the International Bureau. The said amendments will enter into force on February 1, 20211.
REPRESENTATION BEFORE THE INTERNATIONAL BUREAU(A)APPOINTMENT OF A REPRESENTATIVE

5.
The Regulations give holders the possibility to appoint a representative in a separate
communication to the International Bureau, in a subsequent designation or in any request
under Rule 25 of the Regulations.
6.
When holders appoint a representative in a separate communication, the International
Bureau records this appointment as a distinct transaction. However, when holders make theappointment in a subsequent designation or in a request, the International Bureau records
that appointment as part of the inscription concerned. As a result, the various Madrid System
information services available (e.g., Madrid Monitor, Madrid Real-Time Status) display
the recording of the appointment of a representative in a manner that is neither consistent
nor transparent.
7.
There are operational issues when holders appoint a representative in a subsequent
designation or in a request. Where the subsequent designation or request is irregular,
the recording of the appointment is unnecessarily delayed, which may inconvenience holders
and representatives, in particular, where the appointment concerns several international
registrations.
8.
Holders can now use the Contact Madrid online service to upload optional form MM12 toappoint a representative, which the International Bureau can process within the shortest delay.
In addition, the International Bureau plans to make available Web services that will provide
for the almost immediate recording of such appointment. To facilitate this development,
the Regulations could require that holders appoint a representative in a separate
communication. Therefore, it is proposed to amend Rule 3(2)(a) to eliminate the possibility that
holders appoint a representative in a subsequent designation or in a request under Rule 25,
other than the new holder in a request for the recording of a change in ownership.
The proposed amendment would not prevent the applicant from appointing a representativein the international application.
(B)

CANCELLATION OF THE APPOINTMENT OF A REPRESENTATIVE

9.
Rule 3(6)(d) of the Regulations requires that the International Bureau send applicantsor holders copies of all communications with a representative who has requested thatthe appointment be cancelled, exchanged within the six months preceding the date on which
the International Bureau notifies the applicant or holder of the said request.

1

See document MM/A/54/1 “COVID-19 Measures: Making E-mail a Required Indication”.

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10. The above-mentioned provision is unnecessary because applicants and holders can now
retrieve all communications concerning an international application or registration throughthe Madrid Portfolio Manager. In addition, documents concerning decisions sent by Offices areavailable on Madrid Monitor and bibliographical data and the status of all requests is available
on Madrid Real-Time Status. Therefore, it is proposed that Rule 3(6)(d) of the Regulations
be amended by deleting the requirement to send the above-mentioned communications.
EXCUSE IN DELAY IN MEETING TIME LIMITS
11. Rule 5(1) and (2) of the Regulations was first introduced in the Common Regulations
under the Madrid Agreement Concerning the International Registration of Marks and theProtocol Relating to that Agreement, which entered into force on April 1, 1996. That Rule wasmodeled on Rule 82 of the Regulations under the PCT, as in force from July 1, 19922.
12. Rule 82 of the Regulations under the PCT dealt separately with two distinct situations,
namely, delay or loss of a communication sent through mail or delivery services (in Rule 82.1)),
and interruptions in postal or delivery services due to war, revolution, civil disorder, strike,calamity or other like reason (in Rule 82.2)).
13. On July 1, 2012, Rule 82.2) of the Regulations under the PCT was abolished anda new Rule 82quater entered into force excusing delays in meeting a time limit to perform
an action due to war, revolution, civil disorder, strike, natural calamity or other like reason3.
Under Rule 82quater, the party concerned must provide relevant evidence, to the satisfactionof the International Bureau, and perform the action not later than six months from the dateon which the time limit expired. On July 1, 2016, an amended version of this Rule entered into
force specifying a general unavailability of electronic communication services as one of
the reasons for excusing a delay in meeting a time limit4.
14. In contrast, Rule 5 of the Regulations excuses delays in meeting a time limit for
a communication addressed to the International Bureau due only to irregularities in postaland delivery services resulting from force majeure events, and requires that the interested party
meet certain conditions and provide evidence thereof. The same applies for communications
sent electronically where there is a failure in the electronic communication services of
the International Bureau or in the locality of the interested party.
15. It is proposed that Rule 5 of the Regulations be amended to give users of the Madrid
System relief equivalent to that provided for in the Regulations under the PCT. An amended
paragraph (1) would introduce the general principle that failure to meet a time limit specified in
the Regulations for performing an action before the International Bureau may be excused where
the interested party provides evidence, to the satisfaction of the International Bureau, that such
failure was due to a force majeure event.
16. Paragraph (1) of Rule 5 of the Regulations would apply to any action before
the International Bureau for which the Regulations prescribe a time limit, such as, for example,
sending a communication, remedying an irregularity or paying a prescribed fee.
The International Bureau could waive the evidentiary requirement for widely recognizedinstances of force majeure, as it has done in respect of the COVID-19 pandemic.

2

See document PCT/A/XVIII/2 “Proposed Amendments to the Regulations Under the PCT”
(https://www.wipo.int/edocs/mdocs/govbody/en/pct_a_xviii/pct_a_xviii_2.pdf).
3
See document PCT/A/42/2 “Proposed Amendments of the PCT Regulations”(https://www.wipo.int/edocs/mdocs/govbody/en/pct_a_42/pct_a_42_2.pdf).
4
See document PCT/A/47/4 “Proposed Amendments to the PCT Regulations”(https://www.wipo.int/edocs/mdocs/govbody/en/pct_a_47/pct_a_47_4_rev.pdf).

MM/LD/WG/18/2 Rev.
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17. An amended paragraph (2) of Rule 5 of the Regulations would clarify that irregularities inpostal, delivery and electronic communication services beyond the control of the interested
party and preventing this party from meeting a time limit are deemed force majeure events forthe purposes of paragraph (1). Paragraph (2) would apply regardless of the place in which thesaid irregularities occur. It could apply, for example, during disruptions in global postal, delivery
or electronic communication services. It is further proposed that paragraph (3) be deleted,as it would no longer be necessary.
18. Such proposed amendments would be helpful for users of the Madrid System who
are faced with any force majeure situation preventing them from taking the required action
within the specified time limit. During the previous decade, the proposed new Rule could havebeen invoked, for example, in relation to the eruption of the Eyjafjallajökull volcano, in 2010;
the earthquake and tsunami in Japan, in 2011; the northern Italy earthquakes andhurricane Sandy, in 2012; the typhoons Hagupit, in 2014; and, hurricane María, in 2017.
19. As it is the case with Rule 82quater of the Regulations under the PCT, an amended
paragraph (4) of Rule 5 of the Regulations would require that the party perform the action
as soon as reasonably possible and not later than six months from the expiry of the time limit
concerned. Finally, it is proposed that the title of this Rule be amended to “Excuse in Delayin Meeting Time Limits,” which would better reflect the new scope of the amended Rule.
CONTINUED PROCESSING
20. Rule 5bis of the Regulations provides for continued processing as a remedy whenapplicants or holders miss a given time limit that would result in the abandonment of theinternational application or of a request. It is proposed that this remedy be made available
where the applicant has missed the time limit specified in Rule 12(7) to pay the fees resulting
from a classification proposal made by the International Bureau. Further, it is proposed that it
be made available where the holder has missed the time limit specified in Rule 27bis(3)(c) to
pay the fee for a request for division under this Rule. For that purpose, Rule 5bis(2) would be
amended accordingly.
NOTIFICATION RELATING TO CEASING OF EFFECT
21. The second sentence in Rule 22(1)(c) of the Regulations still refers to the judicial actions
or proceedings referred to in paragraph (b). However, this paragraph no longer refers to judicial
actions or proceedings. For the sake of consistency, it is proposed that the second sentencein Rule 22(1)(c) be amended by removing the reference to judicial actions and by changing
the noun proceedings to the singular mode (i.e., to proceeding).
SUBSEQUENT DESIGNATION
22. Rule 24(3)(a)(ii) of the Regulations requires that holders indicate their address
in a subsequent designation, which seems unnecessary. Furthermore, in some subsequent
designations, holders indicate an address different that the one appearing in the International
Register, which results in an irregularity that delays the recording of the subsequent
designation. Therefore, it is proposed that the above-mentioned Rule be amended by deleting
the requirement that the subsequent designation contain or indicate the address of the holder.

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CONTINUATION OF EFFECTS
23. Rule 34(1) of the Regulations states that the amounts of the fees due under the Protocolor the Regulations are specified in the Schedule of Fees; yet, in an apparent contradiction,
Rule 39(1)(ii) specifies the amounts of the fees to be paid for a request that an international
registration continue its effects in a successor State.
24. Therefore, for the sake of consistency, it is proposed that Rule 39(1)(ii) of the Regulations
be amended by deleting the amounts of the above-mentioned fees and replacing them witha reference to the Schedule of Fees. Further, it is proposed that the Schedule of Fees
be amended by introducing new items 10.1 and 10.2 to specify the said amounts.
25. Finally, also for the sake of consistency, it is proposed that Rule 39(1)(ii) of theRegulations be amended to indicate that the International Bureau would transfer the amounts
collected to the Contracting Party concerned and not to its Office. The proposed amendments
would not substantively change the Rule nor the amounts of the fees for the request.
IMPLICATIONS FOR OFFICES AND FOR THE INTERNATIONAL BUREAU
26. The amendments to the Regulations proposed in the present document concern requests
filed with and processed by the International Bureau. Therefore, they would not have an impact
on the information technology (IT) systems and operations of the Offices of the Contracting
Parties.
27. The International Bureau would change its IT systems to no longer require the address ofthe holder in a subsequent designation. The International Bureau would develop the changes
with internal resources, within its regular operating budget. The changes could be readyfor their implementation shortly after the adoption of the proposed amendments.
28. The proposed amendments to the Regulations concerning representation before
the International Bureau, excuse in delay in meeting time limits and continued processing would
only require changes to the internal processes and practices of the International Bureau.
The other proposed amendments, namely, those concerning notifications relating to ceasingof effect and continuation of effects would not have any implication because they would simplify
and improve the Regulations without bringing about any substantive change.
DATE OF ENTRY INTO FORCE
29. As indicated earlier, the COVID-19 pandemic has resulted in severe disruptions for usersof the Madrid System that are likely to continue for some time in several regions of the world.
At the time this document was revised, numerous countries still had measures in place toprotect the population from the effects of the pandemic; other countries were facing a likely
second wave of infections and reintroducing such restrictions.
30. For the foregoing reason, there is a need for the proposed amendments to enter into force
without delay, in particular the amendment to Rule 5 of the Regulations, with a view to protect
the interests of the users of the Madrid System. Therefore, it is suggested that the International
Bureau recommend to the Madrid Union Assembly that the amendments described above enter
into force two months following their adoption.

MM/LD/WG/18/2 Rev.
page 631.
to:

The Working Group is invited(i)

consider the proposals
made in this document;(ii)

recommend to the Madrid
Union Assembly the
adoption of the proposed
amendments to theRegulations, aspresented in the Annex
to this document or inamended form, for theirentry into force
two months following theiradoption.

[Annex follows]

MM/LD/WG/18/2 Rev.
ANNEXPROPOSED AMENDMENTS TO THE REGULATIONS UNDER THE PROTOCOL RELATING
TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF
MARKS
Regulations Under the Protocol Relating to the Madrid Agreement Concerning
the International Registration of Marks
as in force on February 1, 2020February 1, 2021
Chapter 1
General Provisions[…]
Rule 3
Representation Before the International Bureau[…](2)[Appointment of the Representative](a)

The appointment of a representative may be made in the international application or
in a subsequent designation or by the new holder of the international registration in arequest under Rule 25(1)(a)(i) and shall indicate the name and address, given inaccordance with the Administrative Instructions, and the electronic mail address of
the representative.

[…]
(4)

[Recording and Notification of Appointment of a Representative;
Appointment](a)Effective Date of

Where the International Bureau finds that the appointment of a representativecomplies with the applicable requirements, it shall record the fact that the applicant or
holder has a representative, as well as the name, address and electronic mail addressof the representative, in the International Register. In such a case, the effective dateof the appointment shall be the date on which the International Bureau received theinternational application, subsequent designation, request or separate communicationin which the representative is appointed.

[…]
[…]
(6)

[Cancellation of Recording; Effective Date of Cancellation]
[…]
(d)

[…]

The International Bureau shall, upon receipt of a request for cancellation made by the
representative, notify accordingly the applicant or holder, and add to the notification
copies of all communications sent to the representative, or received by theInternational Bureau from the representative, during the six months preceding thedate of the notification.

MM/LD/WG/18/2 Rev.
Annex, page 2

Rule 5
Irregularities in Postal and Delivery Services and in Communications Sent
ElectronicallyExcuse in Delay in Meeting Time Limits
(1)

(2)

(3)

[War, Revolution, Civil Disorder, Strike, Natural Calamity or Other Force MajeureReasonCommunications Sent Through a Postal Service] Failure by an interested party tomeet a time limit specified in the Regulations to perform an action beforefor acommunication addressed to the International Bureau and mailed through a postal service
shall be excused if the interested party submits evidence showing, to the satisfaction of theInternational Bureau, that such failure was due to war, revolution, civil disorder, strike,natural calamity or other force majeure reason.
(i)that the communication was mailed at least five days prior to the expiry of thetime limit, or, where the postal service was, on any of the ten days preceding
the day of expiry of the time limit, interrupted on account of war, revolution, civil
disorder, strike, natural calamity, or other like reason, that the communication
was mailed not later than five days after postal service was resumed,[Deleted](ii)that the mailing of the communication was registered, or details of the mailingwere recorded, by the postal service at the time of mailing, and[Deleted](iii)

in cases where all classes of mail do not normally reach the International Bureau
within two days of mailing, that the communication was mailed by a class of mailwhich normally reaches the International Bureau within two days of mailing orby airmail.[Deleted][Communications Sent Through aIrregularities in Postal, Delivery or Electronic
Communication Services] Failure by an interested party to meet a time limit for acommunication addressed to the International Bureau and sent through a delivery service
shall be excused if the interested party submits evidence showing, to the satisfaction of theInternational Bureau,Irregularities in postal, delivery or electronic communication services
owing to circumstances beyond the control of the interested party and preventing such party
from meeting a time limit specified in the Regulations are deemed force majeure reasons inaccordance with the preceding paragraph.
(i)that the communication was sent at least five days prior to the expiry of the time
limit, or, where the delivery service was, on any of the ten days preceding the
day of expiry of the time limit, interrupted on account of war, revolution, civil
disorder, strike, natural calamity, or other like reason, that the communication
was sent not later than five days after the delivery service was resumed,
and[Deleted](ii)that details of the sending of the communication were recorded by the delivery
service at the time of sending.[Deleted][Communication Sent Electronically] Failure by an interested party to meet a time limit for
a communication addressed to the International Bureau and submitted by electronic means
shall be excused if the interested party submits evidence showing, to the satisfaction of theInternational Bureau, that the time limit was not met because of failure in the electronic
communication with the International Bureau, or which affects the locality of the interested
party owing to extraordinary circumstances beyond the control of the interested party, andthat the communication was effected not later than five days after the electronic
communication service was resumed.[Deleted]MM/LD/WG/18/2 Rev.
Annex, page 3(4)[Limitation on Excuse] Failure to meet a time limit shall be excused under this Rule only if
the evidence and action referred to in paragraph (1), (2) or (3) and the communication or,
where applicable, a duplicate thereof are received by and performed before the International
Bureau as soon as reasonably possible and not later than six months after the expiry of thetime limit concerned.

[…]
Rule 5bis
Continued Processing(1)[Request](a)Where an applicant or holder has failed to comply with any of the time limits specified
or referred to in Rules 11(2) and (3), 12(7), 20bis(2), 24(5)(b), 26(2), 27bis(3)(c),34(3)(c)(iii) and 39(1), the International Bureau shall, nevertheless, continue theprocessing of the international application, subsequent designation, payment orrequest concerned, if:(i)a request to that effect, signed by the applicant or holder, is presented to theInternational Bureau on the official form; and(ii)

the request is received, the fee specified in the Schedule of Fees is paid and,
together with the request, all of the requirements in respect of which the time
limit concerned applied are complied with, within two months from the date of
expiry of that time limit.

[…][…]
Chapter 4
Facts in Contracting Parties Affecting International Registrations[…]
Rule 22
Ceasing of Effect of the Basic Application, of the Registration Resulting Therefrom,or of the Basic Registration(1)[Notification Relating to Ceasing of Effect of the Basic Application, of the Registration
Resulting Therefrom, or of the Basic Registration]
[…]
(c)

[…]

Once the proceeding referred to in subparagraph (b) has resulted in the final decisionreferred to in the second sentence of Article 6(3) of the Protocol or in the withdrawal
or renunciation referred to in the third sentence of Article 6(3) of the Protocol, theOffice of origin shall, where it is aware thereof, promptly notify the International Bureau
accordingly and shall give the indications referred to in subparagraph (a)(i) to (iv).
Where the judicial action or proceedings referred to in subparagraph (b) has been
completed and has not resulted in any of the aforesaid final decisions, withdrawal or
renunciation, the Office of origin shall, where it is aware thereof or at the request of
the holder, promptly notify the International Bureau accordingly.

MM/LD/WG/18/2 Rev.
Annex, page 4
Chapter 5
Subsequent Designations; Changes
Rule 24
Designation Subsequent to the International Registration[…](3)[Contents](a)

Subject to paragraph (7)(b), the subsequent designation shall contain or indicate
[…]
(ii)

the name and address of the holder,[…][…]
Chapter 9
Miscellaneous
Rule 39
Continuation of Effects of International Registrations in Certain Successor States(1)

Where any State (“the successor State”) whose territory was, before the independence ofthat State, part of the territory of a Contracting Party (“the predecessor Contracting Party”)
has deposited with the Director General a declaration of continuation the effect of which isthat the Protocol is applied by the successor State, the effects in the successor State of any
international registration with a territorial extension to the predecessor Contracting Party
which is effective from a date prior to the date fixed under paragraph (2) shall be subject to
[…]
(ii)

[…]

the payment to the International Bureau, within the same time limit, of athe
fee of 41 Swiss francsspecified in item 10.1 of the Schedule of Fees for theInternational Bureau, and of the fee specified in item 10.2 of the Schedule ofFees, which shall be transferred by the International Bureau to the Office ofthe successor State, and of a fee of 23 Swiss francs for the benefit of theInternational Bureau.

MM/LD/WG/18/2 Rev.
Annex, page 5
Schedule of Fees
as in force on February 1, 2020February 1, 2021
Schedule of Fees

Swiss francs

[…]
10.

Continuation of Effects
10.1 Fee for the International Bureau23

10.2 Fee to be transferred by theInternational Bureau to the successor
State

41

[End of Annex and of document]