MM/LD/WG/18/6
ORIGINAL: ENGLISH
DATE: AUGUST 13, 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
PROVISIONAL REFUSAL
Document prepared by the International Bureau

INTRODUCTION
1.
At its seventeenth session, held in Geneva from July 22 to 26, 2019, the Working Groupon the Legal Development of the Madrid System for the International Registration of Marks(hereinafter referred to as “the Working Group”) discussed the practical challenges that holders
face when receiving notifications of provisional refusal, insofar as time limits and theircalculations are concerned.
2.
Following the aforementioned discussion, the Working Group requested the International
Bureau to prepare a document, for consideration at its eighteenth session, on possible
amendments to the Regulations Under the Protocol Relating to the Madrid Agreement
Concerning the International Registration of Marks (hereinafter referred to as “the Regulations”)
providing for:(i)a minimum time limit to respond to a provisional refusal;(ii)

a harmonized way in which to calculate the above-mentioned time limit;(iii) the possibility of a later date of implementation of those new provisions
for Contracting Parties requiring time to change their legal framework, practices
or infrastructure;MM/LD/WG/18/6
page 2(iv) a stricter requirement to clearly indicate, in the notification of provisional refusal,
either the end-date of the above-mentioned time limit or, if that is not possible, the way
in which it should be calculated; and,(v) electronic communication as the default mode for transmitting communications fromthe International Bureau to applicants, holders and representatives1.
3.
This document sets out a number of possibilities for the Working Group to consider
as a basis for discussions on possible amendments to the Regulations, as reflected
in items (i) to (v) above.
MAIN ISSUE UNDER CONSIDERATION
4.
When responding to notifications of provisional refusal issued by Offices of designatedContracting Parties, holders must keep track of the different time limits and the different ways
in which these are calculated. This situation is a frequent source of complaints from usersof the Madrid System.
5.
Holders have also stressed that they do not always have sufficient time to respondto provisional refusals noting, in particular, that they often need more time to obtain translations,
to consider the grounds for refusal and to appoint and instruct local representatives.
In worst-case scenarios, these difficulties could lead to the failure to meet the concerned time
limits resulting in the potential loss of rights in some designated Contracting Parties.
6.
In the previous session of the Working Group, delegations acknowledged the challenges
faced by holders and indicated that they would be open to discuss the possibility of having
a fixed or minimum time limit to respond to provisional refusals. Furthermore, many delegations
supported the need for consistency in the calculation of deadlines to help reduce confusion
for holders.
7.
Having a fixed or minimum time limit to respond to provisional refusals, or a harmonized
way of calculating such time limits, or both, would have no impact on the current practicesof the Offices concerning the notification of their final decision under Rule 18ter(2) or (3).
Once the holders have responded to provisional refusals and met the applicable requirements,for example, appointed a local representative, all further processes and time limits would follow
the applicable legislation and practices.
8.
It would be beneficial for all parties involved to have a fixed time limit calculated fromthe date on which the International Bureau transmits the notification of provisional refusal tothe holder. This approach would make it easier for holders to manage their trademark portfolio,
even when receiving several provisional refusals from designated Contracting Parties. Having
a fixed time limit and a harmonized calculation of that time limit would not only be beneficial tothe holder, but it would put all users of the Madrid System on equal footing. It would betransparent for all parties involved as the notifications of provisional refusal would have thesame time limit and the International Bureau could clearly indicate the end date of that time limit
when it transmits the notification to the holder.

1

The discussion concerning electronic communication as the default mode for transmission of communications,
set out in paragraph 2(v) of the present document, is addressed in more detail in document MM/LD/WG/18/2“Proposed Amendments to the Regulations Under the Protocol Relating to the Madrid Agreement Concerning
the International Registration of Marks”.

MM/LD/WG/18/6
page 3
9.
A number of delegations have questioned whether having time limits set in the Madrid
System, different from those set under the applicable legislation, would lead to different
treatment for users of the national or regional system and users of the Madrid System.
This would not be the case; different time limits would not make it easier for users of the Madrid
System to obtain protection; it would merely ensure that right holders using the Madrid Systemhave sufficient time to appoint a local attorney to contest a refusal.
10. The necessary measures taken during the COVID-19 pandemic resulting in the closureof some Offices and the interruption of postal services have emphasized the importance andneed for the International Bureau to have electronic communication with its users; Offices,
applicants, holders and representatives. Therefore, it would be a much needed positive
development if the Working Group agreed that all communications under the Madrid System
be exchanged by electronic means1.
TIME LIMITS AND THEIR CALCULATION
11. Time limits to respond to provisional refusals, together with the different ways in whichthese are calculated by the different Contracting Parties, have a considerable impact on
the time available for the holder to respond to a notification of provisional refusal.
Therefore, it is appropriate to discuss these issues together, rather than as separate topics.
12. The findings of a survey conducted by the International Bureau and presented to
the Working Group Roundtable in 20142 (hereinafter referred to as “the survey”), showed thatthe time limits given by the Offices of the Contracting Parties to reply to a provisional refusal
varied significantly, ranging from 15 days up to 15 months. Furthermore, the survey revealed
that Contracting Parties calculate these time limits differently. Document MM/LD/WG/17/5 and,in particular, paragraph 19 of that document, illustrates the practical challenges that holders
face when receiving multiple notifications of provisional refusals3.
13. Rule 17(2)(vii) of the Regulations states that the time limit to respond to a provisional
refusal should be “reasonable under the circumstances”. While the Rule indicates that it would
be preferable for Offices to clearly indicate in the notification of provisional refusal the end-dateof the time limit, this is not a strict requirement nor does the Rule impose any requirement on
how the Office should calculate the time limit. Therefore, currently, Contracting Parties are left
to indicate the time limit and the way in which it is calculated, in line with their domestic
legislation and practices.
14. Holders have indicated that the large differences in time limits set by Contracting Parties
and, equally, the way in which those time limits are calculated, without any indication of the end
date being given in the notifications, make them confusing and difficult to manage.
15. Currently, the start date of the time limit to respond to a provisional refusal can becalculated in four different ways, namely,2(i)the date the Office issues the provisional refusal;(ii)

the date the Office sends the notification to the International Bureau;See document “Information on Provisional Refusals”(https://www.wipo.int/edocs/mdocs/madrid/en/mm_ld_wg_12_rt/mm_ld_wg_12_rt_information_on_provisional_refusa
ls.pdf).
3
See document MM/LD/WG/17/5 “Notification of Provisional Refusal – Time Limit to Reply and Ways in Whichto Calculate that Time Limit”, paragraph 19(https://www.wipo.int/edocs/mdocs/madrid/en/mm_ld_wg_17/mm_ld_wg_17_5.pdf).

MM/LD/WG/18/6
page 4(iii)

the date the International Bureau transmits the notification to the holder; or,(iv)

the date the holder receives the notification from the International Bureau.

16. In addition to the different ways in which time limits are calculated, the actual time
the holder has to respond to the notification could be further shortened by the means ofcommunication between the Office and the International Bureau; the necessary process
undertaken by the International Bureau, which takes on average 12 calendar days; and,the means of communication between the International Bureau and the holder. As indicatedearlier, the electronic exchange of communications would greatly assist holders in this regard.
17. The way in which an Office calculates the time limit could be more or less favorable forholders. For example, a time limit of two months calculated from the date that the International
Bureau sends the notification to the holder could result in the holder having more time torespond to a refusal than a three-month time limit calculated from the date of the decisionby the Office.
CALCULATING THE TIME LIMIT FROM THE DATE ON WHICH THE OFFICE ISSUEDITS DECISION OR SENT THE NOTIFICATION OF PROVISIONAL REFUSAL
18. Calculating the time limit from the date on which the Office issued its decision or sent
the notification of provisional refusal to the International Bureau could have negative
consequences for holders. In some cases, the time limit could have even expired by the time
the holder has received the notification. Offices of Contracting Parties must send
the notifications of provisional refusal through the International Bureau, and the International
Bureau may only transmit these to the holder once they have been recorded in the International
Register.
19. It might be possible for Offices following the calculation described above to apply
an interpretation that would improve matters for holders without the need to amend
the applicable legislation of the Contracting Parties. Under the said interpretation and forthe purposes of calculating the time limit, the refusal could be deemed to have been issued ortransmitted to the International Bureau on the date on which the International Bureau transmits
it to the holder.
20. This interpretation, which could be included in the Regulations, would allow
the International Bureau to indicate the actual date on which the time limit ends whenit transmits the notification to the holder and would ensure that holders have sufficient time
to consider contesting the refusal.
CALCULATING THE TIME LIMIT FROM THE DATE ON WHICH THE INTERNATIONAL
BUREAU TRANSMITTED THE NOTIFICATION TO THE HOLDER
21. The solution that would offer legal certainty and transparency for all users of the Madrid
System is that in which the time limit is calculated from the date on which the International
Bureau transmitted the notification to the holder.
22. The International Bureau informs Offices of the date on which it transmitted the notification
to the holder in its acknowledgement of receipt sent to the Offices, which also indicates the dateof receipt by the International Bureau. Both dates are available also in the Madrid Monitor
online database.

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page 5
CALCULATING THE TIME LIMIT FROM THE DATE THAT THE HOLDER RECEIVED
THE NOTIFICATION FROM THE INTERNATIONAL BUREAU
23. While calculating the time limit from the date on which the holder received the notificationof refusal might have less severe consequences for the holder, relative to those mentioned
above, it fails to deliver legal certainty.
24. This method of calculation raises questions concerning, for example, the date on which
the holder is deemed to have received the notification, and on how they may prove the actual
date of receipt, especially where this date is later than the date on which the holder is presumed
to have received the notification.
25. It would appear that for all the users of the Madrid System, holders, Offices and third
parties alike, the calculation offering the most benefit is that in which the time limit to reply toa notification of provisional refusal is calculated from the date the International Bureau transmits
this notification to the holder.
FIXED OR MINIMUM TIME LIMIT
26. A fixed or minimum time limit, calculated from the date on which the International Bureau
transmits the notification of provisional refusal to the holder, would provide further certainty for
all users of the Madrid System. This would not only provide holders with a clear end date,but also allow them sufficient time to consider the grounds of the provisional refusals, obtaintranslations, if necessary, and appoint a representative in the designated Contracting Parties
concerned.
FIXED TIME LIMIT FOR ALL CONTRACTING PARTIES
27. The Madrid System already provides for a fixed time limit in certain situations.
More specifically, a three-month time limit from the date of the notification is given in
the Regulations to applicants, holders or Offices to respond to irregularities concerning
an international application or a request for recording of changes to the international
registration.
28. In the aforementioned survey, 61 per cent of the participating Offices indicated that theirapplicable legislation provides for a time limit of three months or more to respond to an ex officio
provisional refusal, while 52 per cent indicated that the time limit was three months or more incase of opposition. In view of the above, a fixed time limit of three months might be an
acceptable length of time.
29. A fixed time limit of three months provided by Offices to respond to a notification ofprovisional refusal, calculated from the date of the notification by the International Bureau,
would give holders sufficient time to contest the refusal and, at the same time, simplify
the Madrid System for its users.
MINIMUM TIME LIMIT FOR ALL CONTRACTING PARTIES
30. A number of delegations have indicated that they would be in favor of a minimum time
limit for all Contracting Parties. Having a minimum time limit, calculated from the date on which
the International Bureau transmits the notification to the holder, would not be as beneficial tothe holders as a fixed time limit, but it would be a significant step forward when compared tothe current situation.

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page 6
31. The aforementioned survey revealed that 40 out of 66 Offices currently provide
a time limit of three months or more; and 16 Offices have a time limit of two months.
Accordingly, 85 per cent of Offices allow for two months or more to respond to provisional
refusals. Of the 50 Offices that indicated that they provide a different time limit to reply to a
provisional refusal based on opposition, 39 (78 per cent) provide a time limit of two months
or more. A significant number of Offices would therefore, be in a position to meet a minimum
time limit of two months. Such minimum time limit would not prevent Offices from giving
a longer time limit.
THE WAY FORWARD
32. In view of the above, the Working Group is invited to consider whether a fixed or minimum
time limit would best suit the needs of holders and whether to request the International Bureau
to prepare a document proposing the necessary amendments to the Regulations, to be
discussed at a future session, specifying:(i)either a fixed or minimum time limit to respond to provisional refusals and;(ii) that the time limit be calculated from the date on which the International Bureau
transmits the notification to the holder.
33. Introducing in the Regulations a defined time limit with a specific way of calculating it
might require changes to the applicable legislations, practices and information andcommunication technology systems of the Contracting Parties. For this reason,
the above-mentioned document could also propose either the delayed implementation of
the proposed amendments.
34.
The Working Group is invited to
discuss the information presented inthis document and provide guidance tothe International Bureau on a possible
way forward.

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