MM/LD/WG/18/10
ORIGINAL: ENGLISH
DATE: SEPTEMBER 15, 2021

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

Eighteenth Session
Geneva, October 12 to 16, 2020
REPORT
adopted by the Working Group

1.
The Working Group on the Legal Development of the Madrid System for the International
Registration of Marks (hereinafter referred to as “the Working Group”) met in Geneva from
October 12 to 16, 2020. The session was held in hybrid mode, with some delegations attending
physically, in Geneva, and most delegations participating remotely via an online platform(see document MM/LD/WG/18/INF/2).
2.
The following Contracting Parties of the Madrid Union were represented at the session:
African Intellectual Property Organization (OAPI), Albania, Algeria, Antigua and Barbuda,
Armenia, Australia, Austria, Azerbaijan, Bahrain, Belarus, Bhutan, Bosnia and Herzegovina,
Brazil, Brunei Darussalam, Canada, China, Colombia, Croatia, Cuba, Czech Republic,
Denmark, Estonia, European Union (EU), Finland, France, Georgia, Germany, Ghana, Greece,
Hungary, Iceland, India, Indonesia, Iran (Islamic Republic of), Israel, Italy, Japan, Kazakhstan,
Kyrgyzstan, Latvia, Lesotho, Lithuania, Madagascar, Malaysia, Malawi, Mexico, Mongolia,
Montenegro, Morocco, Namibia, New Zealand, Norway, Oman, Philippines, Poland, Portugal,
Republic of Korea, Republic of Moldova, Russian Federation, Rwanda, Sao Tome and Principe,
Singapore, Slovakia, Slovenia, Spain, Sudan, Sweden, Switzerland, Syrian Arab Republic,
Tajikistan, Thailand, Trinidad and Tobago1, Tunisia, Turkey, Turkmenistan, Ukraine, United
Kingdom, United States of America, Uzbekistan, Viet Nam, Zimbabwe (81).

1

On October 12, 2020, the Government of Trinidad and Tobago deposited its instrument of accession to
the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. The MadridProtocol entered into force with respect to Trinidad and Tobago on January 12, 2021.

MM/LD/WG/18/10
page 2
3.
The following States were represented as observers: Bangladesh, El Salvador, Ethiopia,
Jordan, Kuwait, Myanmar, Nicaragua, Nigeria, Pakistan, Peru, Saudi Arabia, Togo, Uganda,
United Arab Emirates, Uruguay, Venezuela (Bolivarian Republic of), Yemen (17).
4.
Representatives of: (i) Palestine (1); (ii) African Regional Intellectual Property
Organization (ARIPO), Benelux Organization for Intellectual Property (BOIP), World Trade
Organization (WTO) (3); and (iii) American Intellectual Property Law Association (AIPLA),
Centre for International Intellectual Property Studies (CEIPI), European Communities Trade
Mark Association (ECTA), International Federation of Intellectual Property Attorneys (FICPI),International Trademark Association (INTA), Japan Intellectual Property Association (JIPA),
Japan Patent Attorneys Association (JPAA), MARQUES – Association of European Trademark
Owners, The Chartered Institute of Trade Mark Attorneys (CITMA) (9); participated in an
observer capacity.
5.
The list of participants (document MM/LD/WG/18/INF/3) is contained in Annex IV to thisdocument.
AGENDA ITEM 1: OPENING OF THE SESSION
6.
Mr. Daren Tang, Director General of the World Intellectual Property Organization (WIPO)
opened the session and welcomed the participants to the first Madrid Working Group meeting
held during his term as Director General. The Director General thanked those attending
the meeting, either physically or virtually, and noted that participation remained high despite
the difficult and unusual circumstances, with over 100 members joining in remotely.
The Director General said he was conscious of the strain, especially on those in distant timezones, of virtual working and thanked participants for their commitment. The Director General
asked participants not to forget the huge impact that their discussions could have on theircountries and people, and that their work was critical to the movement of brands acrossborders. The work of the Working Group brought home the importance of intellectual property
and he mentioned that it was even more important for the Working Group to step up its efforts to
help support enterprises and entrepreneurs during those difficult times. The pandemic may
have had disrupted the world, but it had not stopped the trademark system from becoming moreglobal. While the Madrid System, prior to the adoption of the Protocol Relating to the Madrid
Agreement Concerning the International Registration of Marks (hereinafter referred to as“the Protocol”), had been, essentially, European in membership and usage, it had, since then,transformed itself into a global system, with an increasingly important participation from Asia
and North America. The increasingly global profile of the Madrid System meant that it would
also have to evolve to enable enterprises, particularly the smaller ones, to have easy andaffordable access to the system. As such, it was opportune to consider the future evolution ofits language regime. The introduction of new languages in the system was not only inevitable,
due to its geographical expansion, but also desirable because it brought the system closer to allits users. The topic required careful consideration and prudent management, but the Director
General said he was confident that participants in the Working Group would display thenecessary wisdom, strategic insight and sense of balance to arrive at a suitable solution thatwould meet the legitimate expectations of all interested parties. The Director General noted thatthe pandemic had affected health and disrupted lives and that WIPO, like many of others, had
to move to working offsite. Despite that, the staff of the Madrid Registry had really stepped up,
showed resilience and determination to provide for the continuation of critical services andday-to-day operations in a home working environment. Due to their immense efforts,
colleagues ensured that the Madrid Registry could maintain normal production levels. The main
challenge faced by the Madrid Registry did not lie in maintaining production levels, but inensuring that key legal notifications reached the users. Following the closure of the WIPO
printshop and disruptions in postal services throughout the world, paper notifications could nolonger be transmitted to those who had not provided their e-mail addresses. Through a host ofMM/LD/WG/18/10
page 3measures, the Madrid Registry had succeeded in mitigating the negative consequences ofthat situation, which could have potentially entailed the loss of user rights. During that same
period, the electronic communication of data with the Offices of origin and of the designatedContracting Parties was also significantly enhanced and rendered paperless. In addition,a decision was made, at the most recent Madrid Union Assembly (hereinafter referred to as“the Assembly”), to make the provision of a user e-mail address a mandatory requirement for
new applications. The Director General indicated that, on a more strategic level, the continued
digital transformation of the Madrid System was crucial. The Director General recalled that,apart from the afore-mentioned electronic communications, other important steps in that regard
had been taken recently. He mentioned the launch of a new streamlined online application
form, called the Madrid Application Assistant, which enables the possibility to pay forinternational applications with a credit card, and a much more intense schedule of webinars
focusing on practical topics of interest to users of the Madrid System. Further work on thedigital transformation of the Madrid System, including through the new Madrid Information andTechnology (IT) Platform, would remain an important focus for WIPO in the years ahead.
In terms of filing numbers, the Director General highlighted the surprising resilience ofthe Madrid System and noted that filings were only one to two per cent lower than the previous
year. While that compared favorably with 2009, when filings dropped by 14 per cent, there wasstill a need to continue watching these figures closely, as the full economic impact of thepandemic had only just begun to unfold. Turning to accessions, the Director General indicatedthat the Madrid Union had gained one new member since the Working Group last met in July of
the previous year. With the accession of Malaysia to the Protocol, there were now
106 members of the Madrid System covering 122 countries. While the System would continue
its geographical expansion, with more countries having made significant progress towards theiraccession, the COVID-19 pandemic delayed the accession preparations in a numberof countries. Nonetheless, the instrument of accession of Trinidad and Tobago was expectedthat week and it was hoped that Pakistan would also join before the end of the year. Within thefollowing one or two years, Bangladesh, Malta, Mauritius, Saudi Arabia, South Africa, Sri Lanka
and the United Arab Emirates might also become members. The Director General welcomed
the new members and members in waiting, and said that he would continue working with them,and with all members, to support their accession and implementation of the Madrid Protocol.
The Director General urged all those taking part in that special session of the Working Groupto make the most of their participation and to engage in constructive discussions on how
the Madrid System could evolve to respond to the real needs of users from all regions of
the world. The Director General said he was confident that the session would bring positivechanges to the Madrid System, for Offices and users alike, and continue to make a difference tobrand owners everywhere.
AGENDA ITEM 2: ELECTION OF THE CHAIR AND TWO VICE-CHAIRS
7.
Mr. Nicolas Lesieur (Canada) was elected as Chair of the Working Group.
Ms. María José Lamus Becerra (Colombia) and Mr. Tanyaradzwa Manhombo (Zimbabwe) were
elected as Vice-Chairs.
8.

Ms. Debbie Roenning acted as Secretary to the Working Group.

MM/LD/WG/18/10
page 4
AGENDA ITEM 3: ADOPTION OF THE AGENDA
9.
The Chair thanked the participants for his election and welcomed the Director General,delegations joining the session on-site and virtually, and the Secretariat tothe eighteenth session of the Working Group. The Chair referred to the format and timetableof the meeting (document MM/LD/WD/18/INF/Prov. 3) and invited the Secretariat to provide
further information concerning the logistical arrangements and conduct of the meeting, given
its hybrid format.
10. The Secretariat reminded delegations and representatives of the modalities that applied
to the conduct of the meeting on the virtual platform, including restricted use of the event chatfunction. The Secretariat said that the Chair would open the floor, in the usual order, tothe delegations of the Contracting Parties of the Madrid System, as requested, to be followed
by WIPO Member States observer delegations and, finally, to observer organizationdelegations. The Secretariat requested that all participants enable their cameras and speak
clearly and slowly and recommended the use of a headset to optimize the audio quality for allparticipants and, particularly, for the interpreters working in the challenging remote environment.
11. The Chair thanked the Secretariat and opened the floor for comments on the draft
agenda.
12. The Representative of CEIPI congratulated WIPO and welcomed the new Director
General. The Representative acknowledged the challenges of the hybrid format of the meetingand said that, although the reduced agenda was regrettable, it was understandable andinevitable given the circumstances.
13. The Chair reminded participants that were attending the meeting remotely to activate theircameras, as this would be useful to the interpreters.
14.

The Working Group adopted the draft agenda (document MM/LD/18/1 Prov.3).
15. The Working Group took note of the electronic adoption of the report of theseventeenth session of the Working Group, according to the procedures set out at its
eighth session.

AGENDA ITEM 4: PROPOSED AMENDMENTS TO THE REGULATIONS UNDER
THE PROTOCOL RELATING TO THE MADRID AGREEMENT CONCERNING THE
INTERNATIONAL REGISTRATION OF MARKS
16.

Discussions were based on document MM/LD/WG/18/2 Rev.

17. The Secretariat introduced document MM/LD/WG/18/2 Rev. and explained that it
proposed amendments to several rules in the Regulations Under the Protocol Relating to theMadrid Agreement Concerning the International Registration of Marks (hereinafter referred to as“the Regulations”). The International Bureau had revised the document following the recent
adoption by the Madrid Union Assembly of amendments to the Regulations that required users
to indicate their e-mail address to receive communications from the International Bureau.
The document proposed two important amendments that would ensure that there would be
adequate relief for users of the Madrid System, which concerned excuse in delay in meetingtime limits and continued processing. The other proposed amendments aimed to streamline
the Madrid System, for example, the amendments concerning subsequent designation andrepresentation before the International Bureau; or were merely editorial amendments, forexample, those concerning ceasing of effect and continuation of effects. The Secretariat
provided details on the specific proposals and stated that the proposed amendments to Rule 3
concerned representation before the International Bureau. The Secretariat recalled that when aMM/LD/WG/18/10
page 5representative was appointed in a separate communication using the form MM12,
the International Bureau recorded the appointment as a distinct transaction. It was also
possible to appoint a representative in a form concerning another request, for example,
in a subsequent designation or in a request for recording of a change or cancellation of theinternational registration. In that case, the appointment was inscribed as part of that recording,rather than as a separate transaction, resulting in the information concerning the appointment
being displayed in a manner that was neither consistent nor transparent. To streamline
the processes, it was proposed to amend Rule 3(2)(a), with a consequential amendment
in paragraph (4)(a) of the same Rule. Under the proposed amendments, the applicant could
appoint a representative in the international application and the new holder could appoint
a representative in the request for the recording of a change in ownership. Appointment ofrepresentative in all other situations would need to be made in a separate communication.
Furthermore, the document proposed an amendment to Rule 3(6)(d) concerning thecancellation of the recording of the appointment requested by the representative.
The Secretariat explained that it was no longer necessary to send applicants or holders a copyof all communications exchanged with a representative within the previous six months, as all
those communications were now easily available through various e-services on the Madrid
System website. The Secretariat referred to the proposed amendments to Rule 5 andmentioned that, at that time, Rule 5 excused delays in meeting time limits for communications
addressed to the International Bureau due only to irregularities in postal and delivery services
resulting from force majeure events. It also covered communications sent electronically where
there was a failure in the electronic communication services of the International Bureau or in thelocality of the interested party. The proposed amendments to Rule 5 provided a general force
majeure provision offering relief measures where applicants, holders, representatives andOffices had failed to meet time limits for performing an action before the International Bureau.
The proposed new paragraph (1) of Rule 5 would apply to any action before the International
Bureau for which the Regulations prescribed a time limit, such as, for example, sending
a communication, remedying an irregularity or paying a prescribed fee. The proposed
amendments would be helpful for users of the Madrid System who were faced with any force
majeure situation that prevented them from taking the required action within the specified time
limit. It would also ensure that the Regulations offered users relief equivalent to that provided
for in the Patent Cooperation Treaty Regulations (hereinafter referred to “the PCT Regulations”).
The Rule would continue to require the party concerned to provide sufficient evidence andwould continue to limit the excuse to six months from the expiry of the time limit concerned.
The Secretariat explained that the proposed amendment to Rule 5bis that provided forcontinued processing where the applicant or holder missed a time limit for an action ina procedure before the International Bureau. The applicant or holder must request relief within
two months from the expiry of the time limit concerned and pay a fee. However, no evidence orreason was required. The proposed amendment would clarify that the relief was also available
for missed time limits to pay additional fees, following the examination of the international
application by the International Bureau, and fees for a request for division. The Secretariat
stated that the proposed amendment to Rule 22, concerning notifications relating to ceasing ofeffect, were editorial in nature and concerned some minor tidying up of the text, which was
overlooked in the latest revision of the Regulations. The Secretariat indicated that the proposed
amendment to Rule 24 would, for the sake of simplicity, no longer require that a request for therecording of a subsequent designation indicate the address of the holder, which could result inan irregularity when the holder failed to indicate the address exactly as recorded. The
Secretariat clarified that the proposed amendments to Rule 39 and to the Schedule of Fees
concerning continuation of effects were only editorial in nature and did not introduce any
substantive changes. For the sake of consistency with the setup in the Regulations, theInternational Bureau was proposing to take out the specific amounts of fees in Rule 39(1)(ii) andmove those to proposed new item 10 in the Schedule of Fees. The Secretariat concluded byreferring to the proposed date of entry into force and said that the proposed amendments would
greatly benefit users and would not affect Offices. As the International Bureau could implement
the proposed amendments quickly, the Secretariat proposed that they enter into forceMM/LD/WG/18/10
page 6
two months after their adoption by the Madrid Union Assembly. The exact date would depend
on whether there would be an extraordinary session early in 2021, which could be an option due
to the reduced agenda of the recent General Assemblies. Otherwise, the Assembly could
discuss the proposed amendments at its ordinary session, in September or October 2021.
18.

The Chair opened the floor for comments on paragraphs 1 to 4 of the document.

19. The Chair noted that there were no comments from delegations on paragraphs 1 to 4 ofthe document and opened the floor for comments on paragraphs 5 to 8 of the document,
concerning the appointment of a representative.
20. The Delegation of the Russian Federation, speaking on behalf of the Regional Group for
Caucasian, Central Asian and Eastern European Countries (CACEEC) congratulated the Chairon his election and thanked the Secretariat for the preparation of the document andorganization of the session. The Delegation stated that CACEEC was convinced that theimplementation of the projects in the area of the legal development of the Madrid System was
one of the most important elements of WIPO’s activity. The Delegation said it was satisfied withthe fact that, over the previous 10 years, there had been a record number of filings under
the Madrid System, further noting that there had been a growth in filings every year and that
the Madrid System remained fairly stable despite the circumstances. The Delegation indicatedthat the business community of its regional group, being the major users of the Madrid System,
continued to demonstrate a high level of interest in the services provided within its framework.
The Delegation stated that the COVID-19 pandemic had limited all areas of social life and had
led to the suspension of many services. It had also seriously influenced the economy andprovoked significant changes in international trade. As a result of those unprecedented
circumstances, users of the Madrid System faced serious difficulties in various aspects due tomeasures introduced by a number of countries to limit the spread of the infection, particularly
those that disrupted postal and delivery services. The Delegation further noted that bringing in
the proposed amendments was an attempt to avoid or prevent disruptions that had arisen fromthe pandemic and that may occur in the future. The Delegation recalled that the Madrid Union
Assembly, during its fifty-fourth (31st extraordinary) session, adopted amendments to theRegulations2 to ensure that users of the Madrid System received electronic communications
from the International Bureau, and said that it believed that such measures would allow for
prompt responses to notifications that required urgent action in case of disruptions in postal
services. The Delegation further stated that as there were, at that time, no provisions related toemergencies and related restrictions, it believed that the proposed amendments, in addition to
the requirement to provide an e-mail address, would significantly improve the work of the
Offices and the interaction with applicants during this difficult time. The Delegation considered it
possible to recommend to the Assembly of the Madrid Union to adopt the proposed
amendments to the Regulations in the form in which they were set out in the Annex to the
document, and agreed that they should enter into force two months after their adoption.

2

See document MM/A/54/2.

MM/LD/WG/18/10
page 7
21. The Delegation for the European Union, speaking on behalf of the European Union and its
member states, thanked the Secretariat for the preparation of the document and welcomed,in principle, the proposed amendments to the Regulations in response to severe disruption forusers of the Madrid System that resulted from the COVID-19 pandemic. However,the Delegation considered that there was a need to further discuss the proposed amendments
to Rule 3(2)(a) and Rule 5. Regarding, the proposed amendment to Rule 3(2)(a) that would
eliminate the possibility to appoint a representative in a subsequent designation or in a request
under Rule 25, the Delegation could not agree to its entry into force two months after
its adoption, as changes would need to be made to IT systems to implement the amendment.
Taking into account its planned work priorities, the Delegation proposed that the amendment
to Rule 3(2)(a) entered into force nine months after its adoption, at the earliest. With regard
to Rule 5, the Delegation saw a need for close alignment with the wording in Rule 82quarter of
the PCT Regulations.
22. The Delegation of Brazil supported the proposed amendment to Rule 3(2)(a), as it
benefitted users.
23. The Delegation of Madagascar congratulated the Chair and Vice-Chairs on their election
and said that it supported all of the proposals made within the document and thanked theInternational Bureau for always finding room to improve and further simplify the Regulations.
The Delegation said that it believed that the amendments would not only help to regularize
certain provisions but would also bring together the Offices of the Contracting Parties, theInternational Bureau and the users of the Madrid System through electronic communication,
particularly, in times like the current pandemic situation.
24. The Delegation of Japan congratulated the Chair and Vice-Chairs on their election andexpressed its appreciation to the Secretariat for the preparation of the meeting. The Delegation
supported, in general, the proposed amendments since they would be beneficial for intellectual
property offices, users and the International Bureau, particularly, given the experience of the
COVID-19 situation.
25. The Chair noted that general statements had been given on the document and remindeddelegations that he would go through the document, paragraph by paragraph. The Chair,noting that there were no comments on paragraphs 5 to 8 concerning the appointment ofa representative, opened the floor for comments on paragraphs 9 and 10 concerning
the cancellation of the appointment of a representative. The Chair noted that there were nocomments on paragraphs 9 and 10 and opened the floor for comments on paragraphs 11 to 19,
concerning the proposed amendments to Rule 5, dealing with excuse in delays in meeting time
limits.
26. The Delegation of China congratulated the Chair and Vice-Chairs on their election andthanked the Secretariat for all its work. The Delegation supported the proposed amendments
adding that they streamlined the Regulations and procedures, improving the Madrid Systemuser’s experience. However, the Delegation sought further clarification on the proposed
amendments to Rule 5 and, in particular, asked for further guidance on the requirement ofsatisfactory evidence, suggesting that widely recognized force majeure situations be referred toin the Rule and be exempted from such evidence requirement.
27. The Delegation of the United Kingdom congratulated the Chair and Vice-Chairs on theirelection and thanked the International Bureau for preparing the document, and for the work it
had done on the proposed amendments to the Regulations. The Delegation welcomed theopportunity to discuss those amendments and lent its support to the proposed amendments
to Rules 3(2)(a), 3(6)(d), 5bis, 21(1)(c), 24(3)(a)(ii) 36(ii) and 39(1)(ii), all of which simplified
processes for users or provided important clarifications and updates to the rules.
The Delegation referred to Rule 5, relating to excuses of delays in meeting time limits, andMM/LD/WG/18/10
page 8welcomed the opportunity to discuss how the Madrid System functioned in emergencies like thecurrent pandemic. The Delegation said that discussions at the Madrid Union Assembly were
productive and that the United Kingdom welcomed the agreement of rule changes that would
require e-mail addresses to be provided at different points in Madrid processes. The Delegation
stated that the United Kingdom supported the proposed amendments to Rule 5, as they would
further increase the flexibility of the Madrid System in dealing with emergencies.
The Delegation noted, as mentioned in the document, that the changes were intended to alignthe Madrid System with the PCT System. However, further changes were discussed regarding
Rule 82quarter of the PCT Regulations during its last Working Group meeting and there would
be further discussions on that issue at the next PCT Working Group meeting. On that basis,the Delegation considered that the Madrid Working Group should revisit that issue, if further
changes were agreed to the PCT Regulations, to maintain the consistency between the Madrid
System and the PCT System.
28. The Delegation of Germany congratulated the Chair and Vice-Chairs on their election andthanked the International Bureau for the clear and early availability of the documents.
The Delegation considered that the proposed amendments to Rule 5 went beyond what wascovered by Rule 82quarter of the PCT Regulations. The Delegation said that, according to the
proposed amendments to Rule 5(2), all irregularities in postal delivery or electronic
communication services would be excused if the interested party submitted evidence, to thesatisfaction of the International Bureau, proving that the failure to meet the time limit was due tocircumstances beyond the control of the interested party. Rule 82quarter of the PCTRegulations, however, required that failure to meet a time limit would be due to a general
unavailability of electronic communication services in the locality where the interested party
resided or at its place of business. General unavailability was not in the wording of Rule 5(2).
The Delegation considered that the International Bureau’s proposal went beyond the force
majeure reasons listed in paragraph 18 of the document, and felt that it watered down the time
limits of the Protocol and Regulations. Moreover, the proposed Rule 5(2) applied not only tocommunications addressed to the International Bureau, but also to all time limits specified in
the Regulations. That meant, including those that the interested party must observe vis-a-vis of
the Offices. Therefore, the proposed amendment to Rule 5(2) would have an impact on the
IT systems and operations of the Offices of the designated Contracting Parties. The Delegation
noted that Rule 5(4) concerned limitation on excuse and did not apply to Rule 5(2).
29.

The Chair opened the floor for comments on paragraphs 18 and 19 of the document.

30. The Delegation of Colombia congratulated the Chair and Vice-Chairs on their election and
the Secretariat for preparing the document. The Delegation noted that the document underdiscussion included guidelines to improve practices among users of the Madrid System.
Therefore, the Delegation supported all the proposed amendments. In particular, it consideredthat the change related to the appointment of a representative in a separate request was very
positive for the users of the Madrid System, because it accelerated and, therefore, increased
efficiency of processes under the Madrid System. The Delegation referred to the proposed
amendments in relation to the excuses in delays in meeting time limits. Those proposed
amendments provided a flexible principle that would last over time and adapt to the multiple
situations that might prevent meeting a time limit, such as the current situation with COVID-19.
Regarding the other changes, the Delegation considered that they allow for positive
development of the Madrid System and made the system more competitive, while notgenerating any additional burden for the International Bureau.

MM/LD/WG/18/10
page 931. The Delegation of India thanked the Secretariat for the preparation of the document andwelcomed, in general, the proposed amendments to the Regulations. In particular,
the Delegation welcomed introducing communication by e-mail and stated that the Indian Office
had already implemented such with the parties concerned. However, the Delegationconsidered that more elaborate discussions were required in respect of the proposed
amendments to Rule 22 and Rule 24.
32. The Delegation of the United States of America took the opportunity to congratulate
the Chair and the Vice-Chairs on their election, and thanked the Secretariat for the excellent
preparation of the documents. The Delegation supported the proposed amendments, but noted
that, for Rule 5, they would need to make changes to their IT systems to allow filers to respondto the International Bureau’s irregularity notices beyond the three-month deadline. The current
IT system of the United States Patent and Trademark Office (USPTO) did not allow filers to
respond to irregularities after the three months had expired and, in that regard, it would need
one year to implement the IT system changes. Therefore, the Delegation proposed that theentry into force date be set one year following the adoption of the amendments, rather than
two months after their adoption. In the interest of not holding up the implementation of the
proposed amendments, the Delegation suggested that the International Bureau consider atransition period of one year following the adoption to allow the United States of America andpossibly other Contracting Parties time to make the necessary changes to their IT systems.
33. The Chair opened the floor for comments on paragraph 22 of the document concerning
subsequent designation.
34. The Delegation of Germany appreciated and supported the amendments proposed by theInternational Bureau to Rule 22. However, the Delegation considered that the proposed change
could have further addressed the situation where the holder had indicated a name different tothat recorded in the International Register. A different name would also result in an irregularitythat delayed the recording of the subsequent designation. According to Rule 24(6)(c)(i)and 24(6)(c)(ii), the date of the subsequent designation should not be affected by an irregularity
concerning the name and address of the holder. In that regard, the Delegation noted thereference to the holder’s name, concerned only to a change in name of the holder, not a changeof the holder. Therefore, the amendment proposed in Rule 22 only resolved part of the problem
and the Delegation suggested that the International Bureau propose a solution at the next
session of the Working Group, concluding that a mere change in name of the holder should notaffect the date of the subsequent designation.
35. The Delegation of the Republic of Moldova congratulated the Chair and Vice-Chairs on
their election and the International Bureau for the documents it had prepared. The Delegation
proposed to require the holder to indicate only the number of the international registration in theform MM4 (Request for Subsequent Designation), which would make that similar to the practicein other registries or in other forms where only the number of the international registration was
required.
36. The Chair opened the floor for comments on paragraphs 23 to 25 of the document on
continuation of effects. The Chair noted that there were no comments on paragraphs 23 to 25
and opened the floor for comments on paragraphs 26 to 28 of the document on the implications
for Offices and the International Bureau.
37. The Delegation of Singapore congratulated the Chair and the Vice-Chairs on their election
and thanked the Secretariat for the preparation of the document. The Delegation supported thegeneral proposals as set out in the document, which would offer broader relief for the users of
the Madrid System and increase overall user friendliness.

MM/LD/WG/18/10
page 10
38. The Delegation of the Republic of Korea congratulated the Chair and the Vice-Chairs on
their election and expressed its confidence in a successful and productive session under theirleadership. The Delegation also thanked the Secretariat for its efforts in preparing for the
meeting. The Delegation said that it generally agreed with the proposed amendments to theRegulations. However, the Delegation noted occasions when the applicants submitted therelevant requests via Offices and, therefore, the amendment to the Regulations might havesome minor implications for Offices. In that regard, the Delegation asked whether the
Secretariat could provide the relevant support for IT systems and forms in a timely manner.
39. The Chair opened the floor for comments on paragraphs 29 and 30 of the document on
the date of entry in to force.
40. The Delegation of Belarus congratulated the Chair and Vice-Chairs on their election andthe International Bureau for the documents it had prepared. The Delegation asked whether the
Chair could provide a summary of the discussions on the amendments before moving on to thedate of entry into force. The Delegation referred to paragraphs 5 to 8 of the document,
concerning appointment of representative and said that appointing a new representative ina separate request might not be beneficial to the holder because it would mean that the holder
would need to take two actions, and pay two sets of fees. The Delegation also wished torespond to the suggestion made by another delegation that the name of the holder, as well as
the address of the holder, be omitted from Rule 22. Given that the international registration
number may contain a mistake, the request should contain an additional indication to help theInternational Bureau identify the subject international registration in the request for subsequent
designation. The Delegation believed that the amendment should just apply to the address, as
proposed by the International Bureau.
41. The Chair responded to the Delegation of Belarus and confirmed that the intention was to
identify the proposed amendments that had support, and those that did would be included in thedecision language.
42. The Delegation of Denmark congratulated the Chair and the Vice-Chairs on their election
and the International Bureau for the documents it had prepared. The Delegation noted that theamendment to remove the requirement to indicate the address of the holder in a request for
subsequent designation was proposed on the basis that, in some cases, it was different to theone indicated in the International Register, resulting in an irregularity that delayed the recordingof the subsequent designation. The Delegation sought further elaboration on the reason for theirregularities.
43. The Representative of MARQUES thanked the International Bureau for making themeeting possible and welcomed the election of the Chair and Vice-Chairs. The Representativereferred to its position paper and stated that it was in favor of proposals in the document thatwould improve the speed and ease of appointing representatives, of communicating
electronically with the holders, and that protected holders against failure to meet deadlines insituations like the current global pandemic.
44. The Delegation of Brazil agreed with the proposals in the document concerning thedifferent rules. When referring to Rule 5, the Delegation noted that the amendment might haveconsequences for the national rules in Brazil, but the Delegation fully understood the need forforce majeure measures for emergencies and therefore, agreed with all proposals.
45. The Chair noted that there were no more comments on the document, and invited theSecretariat to respond to some of the points raised by delegations.
46. The Secretariat responded first to the Delegation of the European Union’s position on theamendments to Rule 3(2)(a) and on the possible delay in the implementation of thoseamendments due to the necessary IT requirements. The Secretariat explained that theMM/LD/WG/18/10
page 11amendments concerned the appointment of a representative before the International Bureau in
the Madrid System’s official forms. Only three per cent of requests for the appointment ofa representative were included in other transactions. Most requests for the appointment ofa representative were made in the international application or in form MM12, a stand-alone
request for the appointment of a representative. It was uncommon for the holder to appoint
a representative in a request for another transaction. The Secretariat, in response to thecomments made by the Delegation of China concerning required evidence for force majeure
events under Rule 5, stated that it would be sufficient in cases of force majeure to simply referto the force majeure event. The Secretariat noted that there had been various natural disasters
in the past with extensive news coverage. For the current COVID-19 pandemic, theInternational Bureau had waived the requirement for evidence and it was sufficient to state thatthe failure to meet the time limit was due to COVID-19. The Secretariat referred to thecomments made by the Delegations of Germany and the United Kingdom on the amendments
to Rule 5 and its similarities to Rule 82quater of the PCT Regulations. The Secretariat wasaware that potential changes to Rule 82quater had been discussed during the PCT Working
Group meeting and that discussions would continue at its next meeting. The Secretariat said
that, if the proposed amendments to Rule 5 were adopted, the Working Group could revisit thewording of Rule 5, should Rule 82quater of the PCT Regulations be amended in the future, toensure harmonization. However, in the meantime, it was important to offer users of boththe PCT and the Madrid System adequate and relevant relief. The Delegation of Germany
mentioned that the proposed amendment to Rule 5 (2) was broader than Rule 82quater, butthat was not the case. Paragraph (2) of Rule 5 referred to paragraph (1), therefore, the relief
measure due to the irregularities in postal services communications would have to be within thescope of paragraph (1) of the proposed amendments to Rule 5. It did not go any broader thanthat. The Secretariat noted the comments made by the Delegation of the United States ofAmerica concerning the amendments to Rule 5 and the need to develop its IT systems to allow
applicants to respond to an irregularity beyond three months. The Secretariat clarified that,
where those irregularities had to be remedied by the applicant, the applicant could communicate
directly with the International Bureau. However, the Office might need to remedy the irregularity
with assistance from the applicant. In those cases, the Office would be able to communicate
with the International Bureau. Concerning the entry into force, the Secretariat stressed that
Rule 5 concerned actions before the International Bureau. Addressing a number of delegations,
including the Delegations of Belarus, Denmark, Germany and the Republic of Moldova, that hadraised questions on requests for subsequent designations under Rule 24, the Secretariat
explained that the current rule required the international registration number, the name of theholder and the address of the holder. The proposed deletion of the requirement to indicate theaddress would bring it line with the other requests under Rule 25. A request to record a change
under Rule 25 needed to include the international registration number and the name of theholder. The Secretariat suggested that Offices advise holders to use WIPO’s e-subsequent
designation tool available on WIPO’s website. The holder would need to indicate theinternational registration number in the e-subsequent designation request, and the tool would
prepopulate the information as recorded in the International Register. Therefore, the user would
see all the details of that international registration, including the recorded name and address ofthe holder. The Secretariat reminded delegations that a subsequent designation merely added
Contracting Parties to the existing international registration with the bibliographical data as
recorded in the International Register. By filling out the form or using the web service, theholder would not be requesting a change of the name or address of the holder. Eliminating therequirement to indicate an address would also eliminate potential irregularities for those using
the paper form. If the holder used the e-subsequent designation tool (web service) and notedthat the details listed did not reflect, for example, the holder’s current address, the holder would
have the opportunity to request the recording of the change in address before recording
a subsequent designation. The Secretariat referred to the comments made by the Delegationof Germany concerning irregularities and noted that, where the holder had completed a paper
form and indicated an address that contained a typo, for example, it stated the wrong housenumber, the International Bureau would issue an irregularity and the holder would be given theMM/LD/WG/18/10
page 12
opportunity to remedy that. However, it would not be appropriate to indicate a new address ina request for a subsequent designation where the holder, for example, had moved businesslocation. The holder would need to request the recording of a change of address, either before
or after requesting the subsequent designation. It was possible to indicate in the paper form
that a certain change be recorded before the recording of the subsequent designation.
The Secretariat reiterated that Offices should advise their users to use the e-subsequent
designation tool because it would accurately reflect what was in the International Register andwould give them the opportunity to request the recording of the relevant changes either before
or after the recording of the subsequent designation. The Secretariat acknowledged thatthe proposal in the document concerning the entry into force was rather vague. The Secretariat
explained that at the time the document had been drafted, it was not clear whether there would
be an extraordinary session of the Assemblies, early in 2021, or the adoption of the proposed
amendments would need to wait until the ordinary session in September or October 2021.
The Secretariat noted the concerns raised by delegations that needed sufficient time to makethe relevant IT changes and therefore, proposed that the amendments enter into force
on November 1, 2021.
47. The Representative of MARQUES stressed a preference to implement the proposedchanges as soon as possible and supported the two months, as proposed in the document.
If that was not possible, the Representative of MARQUES considered that a transition period
could be discussed as a compromise, as suggested by the Delegation of the United Statesof America.
48. The Chair explained that the Secretariat’s proposed date of entry into force,on November 1, 2021, was realistically the earliest certain date for entry into force. Having
a date earlier than that created issues with the uncertainty of when the next Madrid Union
Assembly would be held. On the other end of the spectrum, indicating that they would enter
into force a number of months after adoption may result in an entry into force later thanNovember 1, 2021. Therefore, November 1, 2021, was a compromise that sought to provide
some sort of middle ground between the two ends of the spectrum.
49. The Chair asked whether any delegation had any objection to the adoption of theamendments following the explanations provided by the Secretariat.
50. The Delegation of Germany referred to Rule 5 and said that the Secretariat had provided
some clarification. However, the Delegation sought further clarification and reiterated that
Rule 5(2) mentioned all irregularities in postal delivery or electronic communication, while
Rule 82quarter of the PCT Regulations only mentioned a general unavailability of electronic
communication services in the locality of the interested party. Furthermore, Rule 5(2) applied to
all time limits, specified in the Regulations and not only to communications addressed to theInternational Bureau. Therefore, there were also time limits included that the interested party
must observe vis-a-vis the Office. The Delegation highlighted that another delegation had
mentioned the time limits in Rule 5(4), but noted that Rule 5(4) did not apply to Rule 5(2).
As paragraph (2) had been expressly deleted, there was no limitation on excuse that applied toparagraph (2). Therefore, the Delegation saw a need for closer alignment with the wording inRule 82quarter. Regarding the date of entry into force, the Delegation strongly supported
November 1, 2021, as that would provide sufficient time to update its IT systems. Regarding
the proposed amendments to Rule 24, concerning subsequent designations, the Delegation
acknowledged that such an amendment would benefit the users, but still questioned whether
the amendment went far enough. Currently, the date of recording of the subsequent
designation would be delayed if the name or address was not exactly as recorded in
the International Register. Therefore, the Delegation considered that a similar amendment
could apply to the holder’s name.

MM/LD/WG/18/10
page 13
51. The Secretariat further explained that the PCT Regulations already had enoughflexibilities and, therefore, did not need to specifically mention postal and delivery irregularities.
However, the current Rule 5 covered postal and delivery irregularities and the proposed
amendments provided further flexibilities in that regard. The Secretariat noted that, during the
COVID-19 outbreak in Switzerland, the postal services had been suspended. Users worldwide
were affected, not because of irregularities in the postal services in their locality but because it
was not possible for the International Bureau to send communications. The proposed
amendments expanded a bit on the current Rule 5, but still maintained a level of relief measuresand flexibility, like the current PCT Regulations. The Secretariat explained that the time limit inRule 5(4) referred to paragraph (1), which was the main rule. Rule 5(2) set out examples,
following the wording of the current rule. Therefore, the six-month time limit covered andapplied to both Rule 5(1) and 5(2). The Secretariat reminded delegations that the current
Rule 5 only concerned communications addressed to the International Bureau and further
explained that, given the effects that COVID-19 had on the users, a more flexible interpretationof communication was taken to also include payment of fees. Therefore, it was appropriate
to expand Rule 5 by referring to an action rather than to communications.
52. The Delegation of Brazil said that it would like some time to consider the comments madeby the Secretariat and the Delegation of Germany.
53. The Delegation of the European Union, speaking on behalf of the European Union and its
member states, thanked the Secretariat for clarifying Rule 3(2)(a) and agreed to the proposed
date of November 1, 2021, for entry into force.
54. The Delegation of Germany understood and agreed to the proposed amendments toRule 5(1). However, the Delegation sought further clarification on Rule 5(2) and requested
clearer wording. The Delegation stressed that it was not clear whether Rule 5(4) referred toonly to Rule 5(1) or whether it also referred to Rule 5(2).
55.

The Chair invited the Secretariat to respond to the Delegation of Germany.

56. In response to the Delegation of Germany, the Secretariat explained that Rule 5(1)concerned time limits specified in the Regulations to perform an action before the International
Bureau. It was quite clear that it did not concern actions before the designated Contracting
Parties. The time limit of six months, referred to in Rule 5(4), referred to both Rules 5(1)and 5(2). However, to address the concerns raised by the Delegation of Germany, theSecretariat proposed that Rule 5(4) be amended to also mention Rule 5(2).
57. The Delegation of Germany thanked the Secretariat for the proposed amendment toRule 5(4) and asked whether the wording in Rule 5(2) could also be made clearer to reflect thatthe time limits referred to those required to perform an action before the International Bureau.
58. In response to the Delegation of Germany, the Secretariat stated that Rule 5(2) could also
be amended further to reflect that the time limits referred to those required to perform an action
before the International Bureau.
59. The Delegation of Brazil expressed that it was satisfied with the proposals agreed
between the Secretariat and the Delegation of Germany.
60. The Chair summarized the discussions on Rule 5, and proposed moving the notion of
disturbances to Rule 5(1) and deleting paragraph 5(2). Disturbances in postal and delivery
services would then be part of the set of issues to be understood as force majeure. The Chair
noted no objections to the proposal.

MM/LD/WG/18/10
page 14
61. The Working Group agreed to recommend to the Madrid Union Assembly the
adoption of the proposed amendments to the Regulations, as amended by the Working
Group and as set out in Annex I to the present document, with November 1, 2021, as thedate of entry into force.
AGENDA ITEM 5: NEW MEANS OF REPRESENTATION
62.

Discussions were based on document MM/LD/WG/18/3.

63. The Secretariat introduced document MM/LD/WG/18/3 and explained that it continued thediscussions of the previous session of the Working Group concerning the proposed
amendments to Rule 9, giving applicants the possibility to file an international application withnew means of representing the mark. The current Rule 9 required that the application contain agraphical reproduction of the mark that fits in the box provided in the international application
form. The proposed amendment to Rule 9(4)(a)(v) would eliminate the graphical reproduction
requirement and introduce a representation requirement. The Secretariat explained that, where
the basic mark appeared in black and white and the applicant claimed color, Rule 9 required asecond reproduction in color. The proposed elimination of the need to provide a second
reproduction meant that one representation of the mark would be sufficient. The proposed
amendments would require that the international application contain or indicate a representationof the mark furnished in accordance with the Administrative Instructions, which would specify
the acceptable formats and technical specifications for the representation of the mark(s), as
recommended in the relevant WIPO Standards. The document also proposed a number ofconsequential amendments to Rules 15, 17, 32, and item 2 of the Schedule of Fees. The
Secretariat added that, to facilitate the registration of marks represented by non-traditional
means, Offices and the International Bureau would need to exchange communications
electronically. Proposed amendments to Rule 9 would allow a holder, whose basic mark was asound mark represented by an electronic sound recording, such as MP3 file, the possibility to
file an international application with that representation. The proposed amendments would
enable the International Bureau to process the application, register the mark, publish and notify
the designated Contracting Parties of the international registration. The proposed amendments
did not have an impact on the Offices of the designated Contracting Parties, as it would still be
for those Offices to determine whether the non-graphical means of representation is acceptable
under their applicable laws and practices. Concerning the role of the Office of origin in thecertification of the representation of the mark, the International Bureau proposed an amendment
to the wording of Rule 9 to align it with Article 3 of the Protocol. The proposed amendment
clarified that the Office of origin should certify that the mark in the international application
corresponded to the basic mark, as required in the Protocol, rather than certify that it was thesame. The Secretariat suggested that the proposed amendments enter into force on
February 1, 2023, to allow the International Bureau sufficient time to make the required changes
to its services and systems. The Secretariat acknowledged that there remained one issue to beresolved and that concerned the fact that a number of Contracting Parties still required agraphical representation of the mark and were either not allowed, by legislation or practice, or
unable, due to technical constraints, to accept other means of representation. The Secretariat
invited the Working Group to discuss the implications and effectiveness of introducing certain
flexibilities into the rules that would allow users to meet various representation requirements.
The Secretariat asked delegations to discuss how to solve the matter where the mark comingfrom the Office of origin was represented by one means, for example, a sound mark reproduced
by graphical musical notation, and the designated Contracting Party required that the mark be
represented by another means, for example, a digital sound file such as MP3.

MM/LD/WG/18/10
page 15
64. The Chair opened the floor for comments on paragraphs 1 to 4 of the document
concerning the introduction. After noting that there were no comments, the Chair opened thefloor for comments on paragraphs 5 to 10 of the document concerning the proposed
amendments to Rule 9 of the Regulations.
65. The Delegation of the European Union, speaking on behalf of the European Union and its
member states, thanked the Secretariat for the preparation of the document and madea statement in response to the entire document. The Delegation indicated that the topic of the
document was of crucial importance in light of the European Union’s new harmonized legislationand that continued efforts by the International Bureau to address that complex issue in acomprehensive and solutions-oriented manner was greatly appreciated. The Delegation
reiterated that the use and embracement of the latest technologies in processing applications
would facilitate the modernization and digitalization of the Madrid System and would enhance
its user-friendliness. Against that background, the Delegation welcomed the document forconsideration and supported all the proposed amendments to Rule 9 of the Regulations,
namely, the proposal to amend Rule 9(4)(a)(v) concerning the elimination of the graphic
reproduction requirement and the introduction of a representation requirement. The Delegation
also favored the proposed amendment to Rule 9(4)(a)(vii) concerning the elimination of therequirement to provide a second reproduction. Likewise, the Delegation supported the
proposed amendment to Rule 9(5)(b)(iv) requiring the Office of origin to certify that the mark in
the international application corresponded to the mark in the basic application or basic
registration. Finally, the Delegation confirmed its support for the proposed consequential
amendments to Rules 15(1)(iii), 17(2)(v), 32(1)(b) and 32(1)(c) and items 2.1.1 and 2.1.2 of the
Schedule of Fees. As regards practical implications for the International Bureau, the Delegation
was mindful of its estimation that it needed two years to develop, test and deploy the requiredchanges to its services and systems. Nevertheless, it should be borne in mind that the Offices
also needed to adapt their systems. The Delegation considered that a period of two years fromthe date on which the technical formats and specifications were established by WIPO, should
also be sufficient for that purpose. If the technical formats and specifications were known
by February 1, 2021, the Delegation could endorse the date of entry into force of the proposed
amendments on February 1, 2023. As for introducing flexibilities that allow users to meet
representation requirements in the designated Contracting Parties, the possible solution,
namely, to allow a second representation of the mark, raised concerns related to legal certainty,
practical feasibility and effectiveness. However, the Delegation was open to further exploringthat solution and looked forward to hearing the opinions of the participants in the Working
Group. The Delegation concluded by saying that it stood ready to work with the Secretariat,
the members of the Madrid Union and interested users’ associations in elaborating soundtechnical and legal solutions for adequate protection for non-traditional trademarks via
the Madrid System.
66. The Delegation of Belarus referred to paragraphs 1 to 4 of the document and believed that
it was vital to ensure that it was only possible to file international applications for new types ofmarks in the designated Contracting Parties where such marks would be accepted forprotection. Otherwise, it would create additional costs for the designated Offices as they would
need to issue refusals and, furthermore, it would discredit the Madrid System for users who, by
having paid the fees, would not acquire any rights. The Delegation believed that it would benecessary to develop a system that could reduce or, ideally, completely exclude any risk ofmarks being filed and represented in a way that could not be protected. For those internationalmarks submitted through the electronic filing system, the Contracting Parties that would not
accept such marks could be automatically deactivated, with an explanation for users. Forinternational applications filed on paper, the most efficient instrument would be
the Fee Calculator where some Contracting Parties could become inactive for designation.
Form MM2 could also be used for that purpose. The Contracting Parties that did not accept all
types of marks could be presented, for example, in bold with a further footnote inviting
applicants to consult the Madrid Member Profiles for more details. Members of the MadridMM/LD/WG/18/10
page 16
System would be required to provide the most updated information in the profiles in that regard.
The Delegation suggested that the International Bureau look into cooperating with the interested
parties to consider more efficient ways to ensure that only the marks that could be protected
were filed.
67. The Delegation of the Russian Federation, speaking on behalf of CACEEC, advised
caution concerning the proposed amendments to Rule 9(5)(d)(iv). The Delegation noted thatthe current Rule 9(5)(d)(iv) stated that the Office of origin had to certify that the international
mark was the same as the basic mark, and that the International Bureau had referred to certain
Contracting Parties, that interpreted that, as meaning that the marks had to be absolutely thesame. The Delegation explained that some Offices used that approach when certifying theinternational applications, by confirming that all elements of the international and basic marks
were identical. The Delegation also noted that the International Bureau continued insisting thatsaid Rule and such an interpretation went beyond what was foreseen by Article 3(1) of theProtocol. On that basis, the International Bureau proposed to amend Rule 9(5)(d)(iv) byrequiring that the Office of origin certify that the mark in the international application correspondto the basic mark, instead of requiring it to certify that it was the same. The Delegationemphasized that such an amendment could lead to ambiguous situations for Offices andpossible legal conflicts for applicants. The Delegation believed that the proposed concept of thecorrespondence of the mark was not sufficiently clear and that it should be defined in a more
precise way. For example, there could be quite insignificant differences between the marks, like
font design or the size of some elements that did not either substantively alter the mark or havea strong effect on its overall visual perception. Therefore, the Delegation was not, at thatcurrent time, able to support the suggested amendment to Rule 9(5)(d)(iv) of the Regulations
and proposed to continue discussions to look at concrete proposals for another amendment.
68. The Delegation of the United Kingdom said that it would comment on the proposal inits entirety, rather than by paragraph. The Delegation thanked the International Bureau for
preparing the document and welcomed the opportunity to consider how the Madrid System
could take into account new means of representation. The Delegation mentioned that there
was a degree of flexibility offered in the United Kingdom’s trademark system in how marks could
be represented and it was good to see that was being recognized as the way forward whenseeking international protection through the Madrid System. As technology challenged andtested the boundaries of intellectual property, including the ways in which marks could be
represented, the Delegation said it was essential that international systems were improved toenable them to adapt flexibly, as brand owners became increasingly more innovative in the waythat they distinguished their brands. The changes that had been made in the previous few
years to the United Kingdom’s system ensured, for example, that sound marks could be
registered as electronic files. That had ensured that the trademark regime was more adaptable
and receptive to technological developments in how marks could be represented.
The Delegation supported the proposed changes, in particular, to Rule 9(4)(a)(v) to eliminate
the requirement to provide a second reproduction when the reproduction in the basic application
or registration was in black and white and color was claimed. However, the Delegation sharedconcerns raised by other delegations about the specific change to Rule 9(5)(d)(iv) and was
unable to support that proposal. The Delegation explained that, while that proposal wasinteresting, unfortunately, the law in the United Kingdom could not allow the mark to be certified
for elements that were not contained in the original mark, or marks that could be perceived inany way other than as they had been filed for.
69. The Delegation of Madagascar thanked the Secretariat for the preparation of the
document and said it would also make a general statement on its entirety. The Delegation said
that the discussion on the representation of a mark within the Madrid System was interesting,particularly, as Madagascar was in the process of updating its own legislation to accept
non-traditional marks. In that regard, the Delegation was looking at the types of representationsof marks that were presented and the way in which they should be dealt with. With regard toMM/LD/WG/18/10
page 17
the proposal, the Delegation was in favor of flexibility with regard to the holders of
non-traditional marks, but believed that, given the complexity of the subject, continued
discussions were needed.
70. The Delegation of China indicated that it would provide a general statement on the
document as a whole. The Delegation said that it was delighted to see the introduction of more
flexibilities within the Madrid System. The proposed amendment to Rule 9(5)(d)(iv), requiring
the Office of origin to certify that the international mark corresponded to the basic mark, rather
than certifying that they were absolutely the same, provided the Office of origin with more
flexibilities and autonomy. The Delegation also endorsed the proposed amendments toRule 9(4)(a)(v), eliminating the requirement to provide a second reproduction of the mark incolor when the reproduction in the basic application or registration was in black and white andcolor was claimed, as that would facilitate and streamline the process. However, the Delegation
required further discussions on the proposed amendment to Rule 9(4)(a)(v) concerning theelimination of the graphic reproduction requirement and introduction of a representation
requirement, as it would need to consider the impact that such a change would have on its
Information and Communications Technology (ICT) infrastructure, and the time it would take toprepare for such changes. Furthermore, the Delegation noted that each Contracting Party had
different understandings of non-traditional marks and of the relevant requirements.
71. The Delegation of Israel congratulated the Chair and Vice-Chairs on their election andthanked the Secretariat for the preparation of the documents. The Delegation said that it was infavor of the introduction of new means of representation of non-traditional marks to modernize
the Madrid System and align it with the rapid developments in technology and trademark
evolution. The law in Israel required a graphic representation of the mark and for non-traditionalmarks, such as sound marks, the applicant was required to file a digital sound file in addition to
the graphic representation of the musical notation. The Delegation supported the flexibility
regarding the means of the representation of the mark by providing for an option to submit asound file along with the international application, allowing the applicant to meet the different
representation requirements in the designated Contracting Parties. In view of that,the Delegation said it was open to eliminate the graphic representation requirement in its
domestic legislation. According to its current examination practice regarding sound marks,
a search for the sound file on the Office of origin’s website was conducted. If the sound file was
not available, the applicant would be required to submit such file during the examination stage.
The Delegation was of the view that it was very important to promote the development of
ICT infrastructure that would enable the exchange of digital files between the International
Bureau and the Offices of the Contracting Parties. The Delegation confirmed that it agreed withall proposals in the document. With regard to the proposed amendments to the Scheduleof Fees, the Delegation suggested that removing the difference between the fees for black andwhite marks and color marks should be considered, given that color marks no longer required
special treatment.
72. The Delegation of France, after congratulating the Chair and Vice-Chairs on their election
and thanking the Secretariat for the preparation of the documents, supported the statement
made by the Delegation of the European Union. The Delegation informed that its domestic
legislation was amended in 2019 and that new means of representation of marks had since
been accepted. With regard to paragraphs 11 to 14 of the document, to date,the French Office requested the basic and international marks to be identical, rather thanjust to correspond, following Rule 9(5)(d)(iv). Therefore, the Delegation sought further
guidance on the examination criteria for deciding on correspondence where there was not
identity. The Delegation agreed that there should be the possibility to provide fora second representation of the mark when a designated Contracting Party could not accept newmeans of representation.

MM/LD/WG/18/10
page 18
73. The Delegation of the Republic of Korea thanked the Secretariat for the preparation of the
documents. The Delegation said that it understood that the purpose of the proposed
amendments to the Regulations was to promote applicants to file international applications for
non-traditional marks, such as sound marks, hologram marks and other non-graphical marks,
and that it fully supported the amendments. However, the Delegation pointed out that
establishing a relevant technical standard for the acceptable format of non-graphicalrepresentations might take time. Furthermore, it might take additional time for Offices toincorporate the newly established standards into their national and international filing systems.
Therefore, the Delegation requested that the International Bureau proposed a date of entry into
force of the amendment in accordance with the discussion or progress of the relevant
WIPO Standards.
74. The Delegation of Mexico thanked the Secretariat for the preparation of the documents
and congratulated the Chair and Vice-Chairs on their election. The Delegation supported the
proposed amendments and explained that Mexico had begun accepting new means ofrepresentation of marks two years ago. The Delegation said that, although it had beenchallenging, the changes had been worth it. The Delegation also supported the proposedsolution for countries that had not yet introduced new means of representation for
non-traditional marks.
75. The Delegation of Belarus, commenting on paragraphs 11 to 14, supported thestatements made by the Delegations of France and the Russian Federation. Although the
Delegation understood that Rule 9(5)(d)(iv) did not correspond to Article 3(1), it believed thata simple replacement of the words “same mark” by words “mark that corresponds to” would not
be the best solution. The Delegation considered the term “correspondence” too broad and said
that it would like to see in Rule 9(5)(d)(iv) either some alternative option or an explanation ofwhat correspondence meant in the context of that rule.
76. The Delegation of Japan thanked the Secretariat for the preparation of the documents andexpressed its support for the amendments to Rule 9(4)(a)(v) and (vii) and for the proposal toharmonize Rule 9(5)(d)(iv) with the wording in Article 3 of the Protocol. The introduction ofelectronic data transfer would bring great benefit to the applicants and Offices. However, theacceptable formats and technical specifications for the representation of the mark should bespecified in the Administrative Instructions before that introduction. It would take time for some
Offices, including the Office of Japan, to revise their domestic law and develop their IP systems
to handle the transfer of electronic data.
77. The Delegation of Australia congratulated the Chair and Vice-Chairs on their election andthanked the Secretariat for the organization of the meeting and preparation of the documents.
The Delegation supported the proposed amendments to provide for new means of representing
marks. The flexibility provided by the amendments would give users greater certainty andaccessibility when using the Madrid System to protect non-traditional marks. The Delegation
also supported the proposed amendment to align the wording of the Regulations andthe Protocol in relation to the need for the subject mark to correspond to the mark in the basic
application or basic registration. Finally, the Delegation agreed with the suggestion, made by
the Delegation of Israel, to consider the elimination of different fees for marks in black andwhite, and color.

MM/LD/WG/18/10
page 19
78. The Delegation of Switzerland referred to paragraphs 5 to 10 of the document andsupported the amendments to the Regulations and to the Schedule of Fees, with regard to newmeans of representation, and the removal of the requirement for a second representation.
The Delegation used the opportunity to explain a problem regarding the protection of marks
in color. The Delegation indicated that the Madrid System envisaged that a national markprotected in color could be protected internationally in the same colors and that it was notpossible for the international mark to contain more colors than the basic mark. The Delegation
noted that some countries required a written description of the colors claimed, in addition to thecolor representation of the mark. Without a written description of the colors claimed, the markwas protected for all possible colors. The Delegation explained that some Offices of origin
considered that the requirement of the written description of the colors at an international level
was only necessary where the said written description of the colors was included in the basic
mark, even if the basic mark was only protected in color. Therefore, the Delegation proposed amodification of Rule 9(4)(a)(vii) to solve that interpretation problem. The Delegation proposed toinclude the words “or protected in color” in the afore-mentioned Rule. The Delegation explainedthat the proposed amendment requires Offices that did not require a written description of thecolors claimed at the national level to require such written description in the international
application. The Delegation added that it was necessary to also amend Rule 9(5)(d)(iv)
regarding the certification by the Office of origin, in particular, to add “or that the basic
application or basic registration is protected in color”. Finally, the Delegation reiterated that theintention was to permit an international registration to be protected in color when the basic markwas protected in color without a color claim.
79. The Delegation of the United States of America thanked the Secretariat for the
preparation of the documents and said it appreciated the need for the Working Group to
consider possible amendments to Rule 9 to address the new means of representation of marks
in international applications. The USPTO had an established non-traditional marks practice andhad experienced problems over the years before it had decided on that practice. Nevertheless,the Delegation was open to discussion and finding areas of improvement. The USPTO’s
experience with non-traditional marks found that the description of the mark was a critical part ofdefining what the mark was and identified the scope. The description was essential for public
notice purposes and helped in searching and retrieving marks. The interested party could typethe word, sound or scent in the mark description field in the USPTO trademark database to
search for and retrieve marks comprising sounds or scents. For example, for marks comprisingsound only, the USPTO did not require a drawing of the mark, as it did for a traditional mark,because there was no visual element to the mark. Instead, it required a recording of the sounditself and an accurate description of the sound. The sound recording was part of the record andthe description of the mark explained what the sound was. While many sounds might berecognizable when heard, the description was important and helped to identify what the soundwas when it was not clear from hearing the sound. For example, was it the sound of an airplaneor the sound that a particular construction equipment made when operated? If the soundcomprised music, with or without words, the USPTO encouraged the applicant to submit also
the musical score sheet to understand better the sound and the mark description. Therefore,
the Delegation recommended that the Working Group explore the possibility of implementing adescription of the mark requirement for non-traditional marks. Currently, the description of themark was optional in the international application. The Delegation also recommended
Contracting Parties to consider adopting the requirement for a description of the mark for
non-traditional marks in their national practices. In its role of Office of origin in certifying
international applications, while recognizing the need to align Rule 9 with Article 3 of theProtocol, the Delegation recommended that the International Bureau considered defining orproviding guidance on what constituted correspondence. The Delegation was concerned thatan Office of origin might deem correspondence to include translations of the mark. If that wasallowed, it would create difficulty in the likelihood of confusion analysis and central attack
decision making. The Delegation believed that the word correspondence should not be read tomean a mark in a different language. If it did, the USPTO would consider it to mean a different

MM/LD/WG/18/10
page 20
mark and would not certify it. As to the practical implications for the Offices, Contracting Parties
should evaluate their practices, processes and IT systems and determine the time andresources needed to implement the changes to enable electronic filing, communication andtransmission of new means of representation of marks. The Delegation explained that the
USPTO would also be conducting a similar evaluation and implementing the relevant changes.
The Delegation noted that the International Bureau had said that it would take two years tomake the necessary changes to its infrastructure and had proposed the entry into force date of
February 1, 2023. The USPTO however, would need more time and therefore, recommended
February 1, 2024, as the implementation date.
80. The Delegation of India said it appreciated the Secretariat’s efforts in the preparation of
the documents and welcomed and supported the proposals in paragraph 9 of the document
concerning the requirement for one representation of the mark in the case of color marks.
The Delegation stated that, in general, it appreciated the reasons behind the proposed
amendment to eliminate the graphic reproduction requirement and the requirement for the markto be submitted in accordance with the Administrative Instructions. However, the Delegation
remained uncertain about the manner of reproduction of non-traditional marks, because eachState had its own domestic regulations regarding non-traditional marks and their representation.
Furthermore, the WIPO Standards in that respect were not stable and did not provide enoughdetail about the reproduction of such marks. The Delegation desired to explore a harmonizedmanner of reproduction of non-traditional marks, as it was not clear how Offices in thedesignated Contracting Parties would receive and consider designations of such marks.
81. The Representative of JIPA congratulated the Chair and the Vice-Chairs on their election
and thanked the Secretariat for the documents it had prepared for that session.
The Representative, from a user’s standpoint, welcomed the proposed amendment toRule 9(5)(d)(iv) of the Regulations requiring the Office of origin to certify that the mark in theinternational application corresponded to the mark in the basic registration or basic application,
instead of requiring the Office of origin to certify that it was the same. The Representative
recalled that it had mentioned, in the Working Group sessions held in 2015, 2016 and 2017, that
all Offices should consider a flexible reading of the term correspondence, in particular, inrespect of a composite mark in English and Japanese Katakana or Hiragana in the basic
application or registration and any part of such composite mark in an international application.
The Representative said that the proposed amendments would help Japanese applicants to use
the Madrid System and would result in more frequent use.
82. The Delegation of Germany agreed with the statement made by the Delegation of theEuropean Union and said that the date of entry in to force on February 1, 2023, could only beendorsed if the technical formats and specifications were known by February 1, 2021. A meredate, as requested by the Delegation of the United States of America, did not help because
knowing the formats and specifications established by WIPO was needed before its IT systems
could be adapted. Therefore, the Delegation suggested that the proposed wording be amended
to indicate that, for example, the amendments would enter into force two, three or four years
after the acceptable formats and technical specifications had been specified in
the Administrative Instructions.

MM/LD/WG/18/10
page 21
83. The Representative of CITMA congratulated the Chair and the Vice-Chairs and thanked
the International Bureau for the preparation of the documents. The Representative welcomed
the proposals that would make the system more flexible and, hopefully, allow for the filing of
non-traditional marks in the future. Given that there were no requirements for substantialchanges to be made locally in the Contracting Parties, the Representative expressed concern
over the possibility that the proposed amendments create complexity, as users might designatecountries where non-traditional marks were not allowed. If there was no warning in the Madrid
System about countries that would not allow those types of marks, such complexities might
incur and, therefore, the Representative suggested that the International Bureau createdsomething like the Madrid Fee Calculator that could warn users when clicking countries thatwould object to such marks.
84. The Representative of MARQUES noted the concerns raised by delegations over thecertification of the international mark in terms of the sameness of the non-traditional marks inthe basic registration or basic application and the international application, and supported theneed for complete clarity on that matter. The Representative referred to MARQUES’ position
paper and said that it generally supported several of the proposals in the document, believingthat it was a good thing that brand owners were allowed to apply for non-traditional marks.
The Representative agreed with the Representative of CITMA in that clarity of the process offiling was needed and that some kind of tool, put together by the International Bureau, could
make it clear what countries allowed non-traditional marks and what countries did not, to avoid
a waste of time and money. The Representative expressed concerns over the possibility offiling more than one reproduction of the mark, as that could give rise to a risk of creating
uncertainties. The Representative reiterated that the entry into force was obviously important
and was concerned about a date in 2024, mentioned by delegations. The Representative
stressed a preference for a date sooner rather than later and requested Offices to prioritize
IT developments.
85. The Delegation of Colombia commented on the entire document and supported the
proposed amendments. The new means of representation for non-traditional marks werea good way to move forward for the Madrid System. The Delegation said that the amendments
would benefit applicants of non-traditional trademarks; in particular, it would increase the use of
the Madrid System among its nationals because non-traditional marks were being more
frequently used. The Delegation explained that its national regulations already considered new
non-graphical means of representations for non-traditional marks. The Delegation said that it
was important to encourage the development of technological tools for new means ofrepresentation and that, while it understood that some members would need to adjust their
IT systems, it believed that the proposed timeframe for adoption was acceptable. However,the Delegation mentioned that the analysis of the correspondence required more study.
86. The Delegation of Canada congratulated the Chair and Vice-Chairs on their election andthanked the Secretariat for the preparation and organization of the meeting. The Delegation
welcomed and supported the adoption of the proposed amendments to the Regulations
concerning the new means of representation and said that such changes would not require any
significant changes to the Canadian legislation, Office practices or IT systems. The Delegation
highlighted that the Canadian legislation allowed for the application and registration of
non-traditional trademarks and did not require a graphic representation in all instances.
Additionally, Canada, as an Office of origin, stood ready to certify that the mark in theinternational application corresponded to the trademark in the basic application or registration
instead of requiring it be the same or identical in both representations and/or descriptions.
87. The Chair invited the Secretariat to take the floor to comment on some of the interventions
made by the delegations.

MM/LD/WG/18/10
page 22
88. The Secretariat noted that a number of delegations had agreed on the proposed
amendments to Rule 9(5), but also that a number of delegations had raised concerns.
The Secretariat explained that the proposed amendment to replace the word “same” with“corresponds” had been discussed in previous Working Group sessions, during the Roundtable,
and that those discussions could continue at the next session of the Working Group, so as toprovide more information on the word “same” versus the word “correspond”. The Secretariat
wanted to remind delegations that, while the word “correspond” was in the Treaty, theRegulations referred to “same”. The Treaty and the Regulations were meant to be aligned, but
it seemed that some delegations were interpreting the term “same” to be more restrictive than
the term “correspond”. The Secretariat said that Offices needed to bear in mind the interest of
the users, especially those that would like to file an international application based on an older
national right, which might be reproduced in low quality paper format. The basic mark rightmight also be in a different font because that was the font used at that time. If Offices applied avery strict identity requirement, it would make it difficult for those holders to use the Madrid
System because they would have to either go ahead with the mark as it looked, back when it
was inscribed in the national register, or file a new national mark to be used as basis for aninternational application. However, the specific proposal concerning Rule 9(5)(d) could befurther discussed. In response to delegations and representatives that had suggested theintroduction of tools to make it easier for users to identify Offices that accepted certain types ofmarks, the Secretariat drew attention to the Madrid Member Profiles Database, available on
WIPO’s website in the IP Portal. The Secretariat explained that the database had a new lookand feel and that the International Bureau had been in consultations with avid users of the
Madrid System, on the private practice side, to understand better what information would be
useful and of interest to users of the Madrid System. The current Madrid Member Profiles
Database contained information provided by over 90 Offices and included specific requirementsthat needed to be met, types of marks that were accepted and details concerning opposition,
cancellation and other proceedings. The Secretariat further informed that the International
Bureau would soon be sending out a revised questionnaire for Offices and urged delegations
to reply. The information provided by Offices would be extremely useful for users to consider
before filing an international application and designating Contracting Parties. Turning to thecomments made by the Delegation of the European Union, and supported by a number ofdelegations, on the specific formats and technical specifications, the Secretariat clarified thatthose would be specified in the Administrative Instructions. The Secretariat noted thecomments made by the Delegation of Germany concerning the timing of that information andthe need for at least two years to adapt its IT systems. The Secretariat explained that theAdministrative Instructions would be amended in a consultation process, under which the
Director General of WIPO would send out the proposed amendments and invite Offices to makecomments. The Secretariat stated that the proposed new Administrative Instructions could besent out by the second quarter of 2021. The Administrative Instructions would cover theacceptable formats in line with applicable WIPO Standards. The Secretariat recalled thediscussions in the previous session of the Working Group, where the findings of a survey basedon formats as accepted by Offices, were presented. Acceptable formats were JPEG, MP3
and MP4 and those would be specified in the proposed amendments to the Administrative
Instructions. The Secretariat acknowledged that the date of entry into force ofFebruary 1, 2023, proposed in the document might be particularly difficult for some members,
and noted that the date reflected a balance between 2024, as requested by the Delegation of
the United States of America, and those delegations and representatives that wanted it sooner
than 2023. The Secretariat, therefore, sought clarification from the Delegation of the UnitedStates of America on whether 2023 would be feasible. The Secretariat addressed the proposal
made by the Delegation of Switzerland concerning a further amendment to the proposed text ofRule 9(4)(a)(vii) and presented an amended version on the screen for comments.
89. The Delegation of Switzerland thanked the Secretariat and said that it required further
clarification on the English version of the proposal regarding the use and meaning of thewording “or is meant to be protected” and “is protected”.

MM/LD/WG/18/10
page 23
90. The Delegation of Belarus noted that the Madrid Member Profiles Database was useful,but that users tended to ignore written information and, therefore, the Delegation preferred theidea to have a technical tool that made it impossible to designate a Contracting Party that did
not accept a certain type of mark.
91. The Secretariat acknowledged that the Delegation of Belarus was suggesting that there
should be a more interactive nature between the Madrid Member Profiles Database and theapplication form, in the sense that that the application form prompted the user to do the rightthing, or prevented the user from doing the wrong thing. The Secretariat said that such was the
direction in which the International Bureau intended to go. The Secretariat highlighted the factthat the Madrid Application Assistant had already been deployed and that further technologicaldevelopments were intended, over the coming months and years, to make the international
application form much more interactive, not just in respect of that particular issue but also inrespect to other relevant issues. The Secretariat said that, while it took on board the suggestion
made by the Delegation of Belarus, it was not in a position to say that such technologicaladvances would be ready on the proposed date of entry into force of the relevant rules.
92. In response to the Delegation of Switzerland, the Chair suggested that the proposed
additional wording in Rule 9(4)(a)(vii) could be further clarified to address its concerns.
93. The Delegation of Switzerland indicated that its proposal was intended to refer to thebasic application or basic registration. The Delegation added that it would agree with wording in
the English version that referred to both an application filed in color and a registration in color.
94. The Chair clarified that the text would be first agreed in English and then translated into
French and Spanish.
95. The Secretariat presented a new version of the proposed amendments to Rule 9(4)(d)(vii)for consideration and comments.
96. The Delegation of Switzerland expressed concerns over the comprehension of
its proposal as translated into English.
97. The Delegation of the United States of America confirmed that, if the Administrative
Instructions were sent by the second quarter of 2021, it could support the implementation dateof February 1, 2023.
98. The Chair summarized the discussions on new means of representation and noted that
there was agreement on the proposed amendments to Rule 9(4)(a)(v) and on the consequential
proposed amendments to Rules 15, 17 and 32, and to the Schedule of Fees. The Working
Group had not reached consensus on the proposed amendment to Rule 9(5)(d)(iv). Somedelegations had agreed and some had disagreed. Some delegations had raised questions.
Therefore, the Chair suggested that the Working Group continue the discussions on that subject
at its next session. The Chair recalled the proposal made by the Delegation of Switzerland fora further amendment to Rule (9)(4)(a)(vii) and the consequential amendment to Rule 9(5)(d)(v),and the proposed text was displayed for comments. The Chair also presented a draft decision
paragraph for consideration.
99.

The Delegation of Germany sought further clarification on the entry into force date.

MM/LD/WG/18/10
page 24100. The Delegation of Belarus commented on the proposed amendment of Rule 9(5)(d)(iv)
and suggested that the word “corresponds” be replaced with the words “almost exactly thesame” noting that was the definition given in the first page of the Google results for the word
“correspond”. The word correspond meant to match almost exactly as defined in the Oxford
Dictionary. The Delegation said that it had consulted with other delegations, in particular, with
the Delegation of the Russian Federation and noted that if the word corresponds was replacedwith the words “almost exactly the same”, it would be possible to progress with the amendmentof the Rule. Otherwise, discussions could be continued in the next Working Group session.
101. The Chair, in response to the Delegation of Belarus, explained that there was noagreement on the terms that would be used in Rule 9(5)(d)(iv) and that the debate on
the wording would continue at that next session.
102. The Delegation of Japan expressed concern about allowing a second form ofrepresentation of a non-graphical mark, as it could cause confusion and disrupt examinationof the mark in the designated Contracting Parties, especially, where correspondence between
the original and second representation of the mark was not clear. The Delegation suggested
establishing a provision that would allow the holder to select or amend the representation of
the mark that would be notified to a given Office, to meet the representation requirement in
the designated Contracting Party concerned.
103. The Chair, in response to the Delegation of Japan, explained that further discussions
on that topic would continue at the next meeting, as there was no agreement at that time.
104. The Delegation of the European Union, speaking on behalf of the European Union and its
member states, referred to the Chair’s draft decision paragraph and asked whether it would bepossible to introduce a reference to the entry into force of the Administrative Instructions.
The draft merely foresaw that the Administrative Instructions would be released for consultation
during the second quarter, but it was uncertain as to the date on which they would enter
into force.
105. The Chair, in response to the Delegation of the European Union, explained thatthe revised formats underlying the proposals would be nothing tremendously new.
The WIPO Standards already specified these formats. The entry into force of the revised
Administrative Instructions would depend on what Member States had to say about them.
Ultimately, a reference to a date of entry into force would apply to Member States, not to
the Director General. A fixed date for consultation would be an ultimatum for Member States,
rather than for the International Bureau. Therefore, Member States would need to be
comfortable with the concept of a fixed date for entry into force.
106. The Delegation of the European Union, speaking on behalf of the European Union and its
member states, clarified that it wanted to exclude a possible scenario where the Administrative
Instructions were finally agreed upon, for example, in June 2022, or even later, and then
the Regulations entered into force in February 2023. The Delegation asked whether thattheoretical situation could be excluded.
107. The Chair suggested including a three-month deadline for the consultation with the Officesof the Contracting Parties, following the circulation of the proposed Administrative Instructions.
108. The Delegation of Japan reiterated its request to establish a possible provision in the
Administrative Instructions that would allow the applicant to select a mark represented
by means that were accepted by the designated Office.
109. The Chair responded to the Delegation of Japan and stated that such matter had not been
discussed in a way that could be concluded in that session and advised that such matter
instead be discussed at the next session.

MM/LD/WG/18/10
page 25110. The Delegation of Germany expressed concerns over the time it would need to adapt its
IT systems and, in particular, reiterated that work on adapting its systems could not start until
the format requirements in the Administrative Instructions were known. The Delegation asked
the Chair to repeat the date mentioned for entry into force of the Administrative Instructions.
111. The Chair clarified that the end of consultations and the entry into force were two different
dates. The date of entry into force would be February 1, 2023. The consultations would takeplace a long time before that. The acceptable formats would be known as soon as the
proposed Administrative Instructions were circulated which would be as early as April 2021 and,at the very latest, in June 2021.
112. The Delegation of Germany said that formats in the revised Administrative Instructions
might change during the consultation process; so, it would not be able to work on its systems
until the end of the consultation phase. That was why the entry into force of the amendments
should be subject to the Administrative Instructions entering into force in June 2021. Such
scenario would allow for one year and seven months; otherwise, the Administrative Instructions
should be sent earlier, for example, in the first quarter of 2021, with a deadline for consultations
three months later, which was still not the entry into force.
113. On behalf of the Secretariat, the Chair proposed that the Administrative Instructions be
sent in the first quarter of 2021, for a two-month consultation period, at the expiry of which thefinal version would be sent to members. The Chair reiterated that it did not mean a change tothe proposed entry into force on February 1, 2023. However, Members would know the
proposed formats during the first six months of 2021, which would give Offices 18 to 19 months
to adapt their systems.
114. The Delegation of Germany asked for date on which the final version would be sent out tothe Offices because that would be the date on which it could start adapting its systems.
115. The Chair summarized the discussions and explained that the revised version of
the Administrative Instructions would be sent to Offices in the second quarter of 2021.
116. The Working Group:(i)
recommended to the Madrid Union Assembly the adoption of the proposed
amendments to the Regulations, as amended by the Working Group and as set out
in Annex II to the present document, for entry into force on February 1, 2023;(ii) requested that the Director General send, in the first quarter of 2021,
proposed amendments to the Administrative Instructions dealing with acceptableformats for representing marks for a two-month consultation period with the Officesof the Contracting Parties, and send the final version of the Administrative
Instructions to these Offices in the second quarter of 2021; and,(iii) agreed to continue discussions on the role of the Office of origin in thecertification of the representation of the mark and on possible flexibilities allowing
users to meet representation requirements in the designated Contracting Parties.

MM/LD/WG/18/10
page 26
AGENDA ITEM 6: PARTIAL REPLACEMENT
117. Discussions were based on document MM/LD/WG/18/4.
118. The Secretariat introduced document MM/LD/WG/18/4 and recalled that the Working
Group, in the previous session held in 2019, agreed to include in Rule 21 the key principles
governing replacement, which would enter into force on February 1, 2021. In that previous
session, the Working Group could not reach consensus on the principle of partial replacement
and requested that the International Bureau prepare a document on partial replacement for
discussion at its next session. The document at hand described the historical records of various
diplomatic conferences and information set out in the draft Regulations discussed in the
Working Group for the Application of the Madrid Protocol, all of which expressly mentioned andgave examples of partial replacement. Accordingly, the International Bureau proposed anamendment to Rule 21 to acknowledge the possibility of partial replacement. Taking into
consideration that some Contracting Parties would need to amend their domestic legislation
and ICT systems, the International Bureau proposed to introduce a transitional provision in
Rule 40 that would not require Offices to apply the new provision until February 1, 2025.
The document proposed that the amendments enter into force two months following their formal
adoption by the Madrid Union Assembly. However, following the recent discussion on the
document on the proposed amendments in document MM/LD/WG/18/2/Rev., which had thesame wording, for the sake of certainty, the Secretariat suggested that the amendments toRules 21 and 40 enter into force on November 1, 2021. There was one additional change,
which only referred to the French version, and the Secretariat asked the Chair to read that out.
119. As requested by the Secretariat, the Chair read out the change to the French version ofparagraph 3(d) of Rule 21, in document MM/LD/WG/18/4, which had been amended to betteralign with the English and Spanish versions.
120. The Chair opened the floor for general comments on the document.
121. The Delegation of the United Kingdom welcomed the proposed changes to Rule 21 indocument MM/LD/WG/18/4 covering partial replacement. Those changes made it clear that
replacement might concern only some goods or services in a national or regional registration.
The Delegation said that the practice in the United Kingdom already allowed for that and it wasgood to see that practice reflected more broadly in the Madrid System. Users of the Madrid
System in the United Kingdom had also made it clear that it was a welcomed change.
122. The Delegation of China said that the document provided an overview of the Madrid
System’s process of partial replacement and had clarified the principles on partial replacement.
It was clear that replacement could concern some goods and services in a national or regional
registration. The Delegation endorsed the principle of partial replacement, however, it also
acknowledged that some Contracting Parties might need to revise their national legislation and
ICT systems and, therefore, agreed that there should be a transitional provision, so thatContracting Parties could have time to make the necessary preparations.
123. The Delegation of Japan expressed its appreciation to the International Bureau for its
great efforts in considering and proposing the amendments to the Regulations. The Delegation
believed that a unified interpretation of the rules under the Madrid System would be mostbeneficial for users and fully supported the proposed amendments.

MM/LD/WG/18/10
page 27124. The Delegation of the European Union, speaking on behalf of the European Union and its
members states, reiterated its concerns as to the format of the proposed amendments, andstated that it was not ready to endorse that a national or regional registration be partiallyreplaced by an international registration. At the same time, the Delegation agreed that
replacement would benefit from a harmonization exercise and it supported the continuationof discussions aimed at finding a consensual solution. The Delegation had studied the
explanation in the document concerning the different interpretations of Article 4bis of theProtocol and agreed that the flexible reading, which acknowledged partial replacement inrespect of goods and services covered by both the international registration and the national orregional registration, was more in line with the purpose of replacement, which was to simplify
the management of trademark portfolios for trademark holders. The Delegation highlighted thatits concerns were related to implications necessitating changes in ICT systems and thecomplications in the examination of such requests, where the overlap was not straightforward.
Against that background, the Delegation welcomed the proposal presented by the Secretariat toallow Offices time to make the necessary changes and prepare for ramifications in practices bymeans of introducing a transitional period provision in Rule 40, where no Office would be
obliged to apply the amended provision on partial replacement before February 1, 2025. In lightof the context of the proposed solution to achieve increased harmonization and replacement,
the Delegation was in the position to endorse the concrete proposals made by the International
Bureau.
125. The Delegation of New Zealand congratulated the Chair and Vice-Chairs on their election
and the Secretariat for the high quality documents. The Delegation agreed with the proposed
amendments to Rules 21 and 40. The proposed amendment to Rule 21 would help provide
additional certainty by clarifying that partial replacement was possible, which would makereplacement more beneficial for users of the Madrid System. The Delegation appreciated the
additional information on partial replacement the Secretariat had provided in the document,
which had built on earlier discussions of the Working Group.
126. The Delegation of Austria congratulated the Chair and Vice-Chairs on their election and
the Secretariat for the organization of the session. The Delegation lent its support to theDelegation of the European Union and said that the Austrian Patent Office applied a literalinterpretation of Article 4bis of the Protocol at that stage. However, to achieve an increased
harmonization, it would consider changing its practice to allow for partial replacement.
127. The Delegation of the United States of America recognized that partial replacement
offered flexibility to holders, namely the ability to pick and choose the goods and services to be
replaced. It also allowed holders to decide whether to maintain the national registration, after
the designated Office had taken note of replacement, or not. The USPTO did not offer partial
replacement. The holder was required to delete or narrow the goods and services in thenational registration that were not covered by the registered extension of protection. The UnitedStates of America recognized that its practice did not benefit the holder because the holder wasforced to lose trademark rights for the goods and services no longer covered by the national
registration. In other areas of its trademark practice, the USPTO did offer a partial option, forexample, the USPTO allowed partial refusals, partial requirements, partial abandonment, anddivision of applications and registrations. Therefore, the Delegation could agree to take note ofpartial replacement of the national registration by the registered extension of protection. Thatwould allow holders to decide whether to retain trademark protection for the goods and services
remaining in the national registrations or to let the national registrations expire. However, theDelegation suggested a small language change in draft Rule 21(3)(d). The proposed language
read: “Replacement may concern ‘some only’ of the goods and services listed in the national orregional registration”. The wording “some only” was awkward, and changing it to “only some”
was recommended. The Delegation welcomed and supported the proposal for a transitional
period of February 1, 2025.

MM/LD/WG/18/10
page 28
128. The Chair said that the proposal by the Delegation of the United States of America tochange the wording “some only” to “only some” was acceptable. The Chair noted consensus
on all matters discussed.
129. The Working Group agreed to recommend to the Madrid Union Assembly the
adoption of the proposed amendments to the Regulations, as amended by the Working
Group and as set out in Annex III to this document, with November 1, 2021, as the date of
their entry into force.
AGENDA ITEM 7: STUDY OF THE COST IMPLICATIONS AND TECHNICAL FEASIBILITY
OF THE GRADUAL INTRODUCTION OF THE ARABIC, CHINESE AND RUSSIANLANGUAGES INTO THE MADRID SYSTEM
130. Discussions were based on documents MM/LD/WG/18/5 and MM/LD/WG/18/5 Corr3.
131. The Secretariat introduced documents MM/LD/WG/18/5 and MM/LD/WG/18/5 Corr. andrecalled that the Working Group, at its previous session, had requested the Secretariat toprepare, for discussion at its following session, a comprehensive study of the cost implications
and technical feasibility, including an assessment of the currently available WIPO tools, for thegradual introduction of the Arabic, Chinese and Russian languages into the Madrid System.
The document discussed five options for the introduction of Arabic, Chinese and Russian
languages into the Madrid System, namely as filing language, processing language,transmission language, communication language, and working language. The document stated
that, from a technical point of view, all the afore-mentioned options were feasible.
The document also stated that, while some options were less complex and costly, others weremore so. In an attempt to find a concrete way forward, the document proposed the introductionof Arabic, Chinese and Russian as filing languages, with an assessment of the operational andfinancial impact after five years to decide on possible next steps. In the view of the Secretariat,
the introduction of Arabic, Chinese and Russian as filing languages would be of particular
benefit for local users, as it would allow them to file their applications in their own language,
without having to carry the burden of its translation into English, French or Spanish.
At the same time, it would be the least complex and financially onerous option to implement.
132. The Chair suggested that delegations comment on the document, section by section,
starting with the introduction paragraphs 1 to 3, followed by the cost implications. However,general statements were also welcomed.
133. The Delegation of the Russian Federation stated that the issue of introducing new
languages into the Madrid System was substantive and complex, and needed to be discussed
in the most transparent and inclusive way. In that regard, the Delegation said it was convincedthat the issue could not be discussed by paragraphs, as the Chairman had proposed. The
Delegation reserved its right and possibility to make general statements in case the discussion
by paragraphs took place.
134. The Delegation of the Russian Federation, speaking on behalf of CACEEC, noted that all
the countries in its Regional Group were members of the Madrid System. The Delegation
highlighted the importance of developing the language regime of the Madrid System byintroducing new working languages to ensure the accessibility of the Madrid System forthe users. The Delegation recalled that multilingualism was one of the key values of
the United Nations (UN) and WIPO, enabling to increase the effectiveness of the multilateralsystem. The Russian, Arabic, Chinese, English, French and Spanish languages were theofficial languages of both the UN and WIPO. The Delegation also said that the General
Assembly of the UN regularly emphasized the importance of multilingualism as a fundamental
3

Document MM/LD/WG/18/5 Corr. concerns the English version only.

MM/LD/WG/18/10
page 29
value for achieving the UN goals, and that multilingualism of the organization should bereflected in its internal operating procedures to support the implementation of its mandate andenhance its efficiency, effectiveness and transparency. In that regard, the Delegation
advocated leveling the existing disproportion and providing users with access to the mostrequested services in all official languages of the Organization. The Delegation recalled that its
Regional Group supported the need to conduct a comprehensive study of the language regimeof the Madrid System, to analyze the current situation and evaluate the costs of introducing new
languages. However, the Delegation noted that the document did not contain the substantive
components that would be necessary and important to reflect. The Delegation said that, having
studied the document in detail, experts from national Offices had noted that the study was
fragmentary and did not meet the principles of inclusiveness and transparency. The Regional
Group was surprised by the fact that the documents of the current session did not include theproposals of the Member States of the Madrid Union, based on which the study was carried out,
namely, the proposal of the Russian Federation, China and the Group of Arab countries.
The Delegation noted that the Secretariat referred exclusively to the previous session of theWorking Group, which might give an incorrect impression of the history of the issue. In thatregard, the Delegation reminded of the need to apply a credible approach to the complex
analysis of the required data. When substantive discussion on the language issue took place atthe previous session, the Delegation asked the Secretariat to make the necessary adjustments
to the study, as well as to make available all three proposals concerning Russian, Arabic andChinese languages on the official web page of the Working Group, possibly, in the “Other
related documents” section. In addition, the Delegation stated that there was also the wrong
impression that the States that initiated the introduction of new languages into the Madrid
System could agree to the limited nature of their use; however, there had been no
consultations either with the countries of CACEEC or with the Regional Coordinator on thatmatter. The Delegation recalled that the mandate entrusted to the International Bureau at theprevious session was to conduct a comprehensive study on the gradual introduction of new
languages into the Madrid System. Since the document did not refer to a clear timeframe forsuch a gradual introduction, the Delegation considered that the fragmentation of the language
regime of the Madrid System was unacceptable and that all six official languages of the UN
should have the identical status. The Delegation noted that the current version of the
document, provided by the International Bureau, contained neither justification for the costs nor
detailed information on how those amounts were calculated. The Delegation believed that the
document was incomplete in the absence of the analysis of the current situation with thelanguage regime. The Delegation shared the position that it was important to ensure thesustainability of the Madrid System, but recalled that the existing practice of introducing new
languages was not based on the principle of minimizing translation costs. The Delegationconsidered that the possibilities of automated translation and internal resources of theOrganization for providing translation had not been sufficiently taken into account.
The Delegation clarified that, on average, 92 per cent of experts working in the national Officesof CACEEC were fluent in Russian, and that the translation process could be optimized with thesupport of the Offices of the interested countries. In particular, the Contracting Parties from theregion expressed their readiness to provide all possible assistance in adapting IT tools to use
the Cyrillic alphabet and to propose Russian-speaking experts to work as candidates to work ontranslations. The Delegation also reminded that, for instance, the WIPO online tool Madrid
Goods and Services Manager (MGS), as well as the International Classification of Goods andServices for the Purposes of the Registration of Marks (Nice Classification), had Russian
language versions. Moreover, the WIPO Translate platform was already actively and effectively
used by a number of the UN specialized agencies. The Delegation concluded that the issue
required careful discussion and close attention to the details in the implementation of
introducing new languages and indicated that CACEEC still had a number of issues that
required more detailed consideration and meaningful analysis.

MM/LD/WG/18/10
page 30135. The Delegation of Belarus fully supported both statements made by the Coordinatorof CACEEC and the Delegation of the Russian Federation, and believed that the proposed
document should be considered as a whole and not paragraph by paragraph. The Delegation
stated that Belarus was one of the countries where Russian was an official state language.
For that reason, the Delegation felt its duty to speak out on the issue, considered in theframework of document MM/LD/WG/18/5, on the introduction of Arabic, Chinese, and Russian
languages to the Madrid System. The Delegation emphasized that by speaking in support of
introducing the Russian language it was also supporting the introduction of Arabic and Chinese
languages, being on an equal footing and pursuing the same goals. The Delegation noted that,
unfortunately, its expectations for the document were not met. In addition to clarifying theapproaches of the International Bureau, the document should have provided a clear picture ofwhat financial and technical resources would be required for each of the options whenintroducing new languages. From the Delegation’s point of view, the document lacked
transparency in that regard. The possible plan of further actions, proposed in the fourth part ofthe document, did not appear acceptable for bringing together the information contained in thevarious parts of the document. The Delegation had concluded that the cost of introducing thethree new languages, as processing languages, was only slightly higher than introducing thoselanguages as filing languages. According to the Delegation’s calculations, there was no
significant difference between the cost of the filing languages and transmission languages. The
year 2020 was taken as the basis for the calculation, and the document presented theoperations cost of the International Bureau for that year. The Delegation believed that given theinsignificant difference in costs, it should be possible to start the introduction of Arabic, Chineseand Russian as transmission languages. The Delegation emphasized, however, that its main
goal remained the introduction of Russian as a working language of the Madrid System asquickly as possible. The Delegation also made some comments on the timeframes indicated in
the document. After having analyzed the timeframes provided in paragraphs 15, 16 and 23 of
the document, the Delegation concluded that it might take more than eight years before adecision on the possible introduction of new languages, with the higher status of transmission
language, could be taken. Moreover, according to paragraph 16 of the document, such a
decision might not be taken at all. The Delegation, unfortunately, could not accept the proposal
outlined in the fourth part of the document, as that would actually mean to pause the decisionon new languages for a long, if not indefinite, period. The Delegation stated its belief that suchsituation should not be allowed to happen and that it would be necessary to find a means tosolve it. If such a decision was not possible during the current session, the Delegationsuggested that it be postponed until the next session of the Working Group, which could reach adecision that would suit all interested parties. Finally, the Delegation drew attention to the factthat the Regional System for Trademark Registration within the Eurasian Economic Union was
expected to start operations in 2022, bringing together Armenia, Belarus, Kazakhstan,
Kyrgyzstan and the Russian Federation. The Republic of Moldova and Uzbekistan could also
be included as observers. The working language of the Eurasian Economic Union was
Russian. Naturally, a new trademark registration system would certainly lead to an outflow of acertain number of filings from the earlier created systems. Since that would inevitably happen,
it would be in the interest of organizations administering earlier created systems to make every
effort to minimize that outflow. At the same time, it would be the duty of the local Offices,in particular, the Offices from the States of the Eurasian Economic Union, to provide theircitizens and legal entities with the most efficient, convenient and simple acquisition of trademark
rights, including the international registration procedure under the Madrid System. That was thereason behind the Delegation making efforts to introduce the Russian language as a working
language of the Madrid System as soon as possible. The Delegation believed that the Arabic
and Chinese colleagues could provide their own arguments in favor of introducing theirrespective languages as working languages into the Madrid System.

MM/LD/WG/18/10
page 31136. The Delegation of Bahrain congratulated the Chair and Vice-Chairs on their election andthanked the Secretariat for organizing the session. The Delegation commented on the
introduction of Arabic as one of the official languages in the Madrid System, noting that Arabic
was one of the official languages of the UN and was spoken by 318 million people, 240 millionof which were members of the Madrid System. Arabic was one of the five most widely spoken
languages in the world and the introduction of the Arabic language, as one of the official
languages, would facilitate the filing of applications and increase the number of marks
registered in the system. The Delegation thanked the Secretariat for carrying out the study on
the financial implications and technical feasibility of adding Arabic, Chinese, and Russian to theMadrid System. After having looked at those documents, the Delegation said it had a numberof questions. Firstly, with regard to the decision made in the previous session, the study should
include a comprehensive analysis about the financial implications and feasibility of the
progressive introduction of Arabic, Chinese, and Russian, the Delegation asked the Secretariat
to indicate the measures that would be taken to ensure that progressive introduction. Secondly,with regard to the different options and the analysis of the financial implications, the Delegationconsidered there to be a non-harmonized and incoherent introduction. For example, it would bepossible to file an application in one language and then communicate in another language.
The Delegation understood the technical challenges and had hoped that the languages would
be introduced in a global way, which would facilitate translation. The Delegation asked theSecretariat to explain the various complexities that were mentioned in the document. Thirdly,
regarding the tools that were proposed to facilitate the automatic translation, the Delegation
understood that it was important for such tools to be of guaranteed quality and asked for more
information on that issue, taking into account the current technology available. Fourthly, withregard to the working languages, the Delegation wanted to know what the differences were
between the working language and the communication language, and the meaning inparagraph 17 of Annex I. Finally, the Delegation asked the Working Group to request the
Secretariat to consult the various countries about that issue before the next session of theWorking Group. The Delegation also proposed that the Working Group discuss the implicationsof the introduction of new languages in terms of the financial impact and technical feasibility.
The Delegation stated that it wanted the three languages to be given an equal status to those of
the other official languages, and a broadening of the linguistic coverage of WIPO in the future.
The Delegation believed that the introduction of all of the official UN languages would help withinternational cooperation and would reinforce harmonization between countries according to
the UN Charter.
137. The Delegation of Azerbaijan supported the statement made by the Delegation of theRussian Federation speaking on behalf of CACEEC. The inclusion of Russian as an official
language of the Madrid System was a necessary and desirable step for the countries of theOrganization since the Russian language was broadly used. The introduction of the Russian
language as one of the working languages of the Madrid System would help to ensure an
increase in the quality of services and applications. Working together with Russian-speaking
experts would help speed up the process. With regard to the financial consequences andtechnical possibilities of the inclusion of new languages in the Madrid System and thestage-by-stage implementation, the Delegation believed that such was a good approach toensure that language barriers were overcome. It would also broaden the use of the Madrid
System and the scope of WIPO services. Linguistic flexibility would ensure that WIPO achieve
its multilingualism goals and that all of the official languages of the Organization were on an
equal basis. In conclusion, the Delegation strongly supported the inclusion of Russian, Arabic
and Chinese within the Madrid System.

MM/LD/WG/18/10
page 32138. The Delegation of China remained of the view that the introduction of the three languages
into the Madrid System as working languages was not only in line with the multilingual policiesof the UN and WIPO, but also conducive to the sustainable development of the Madrid System.
The Delegation informed that, in March 2019, the China Trademark Association (CTA)
conducted an online survey on the addition of the Chinese language as a working language to
the Madrid System. The questionnaire mainly included the advantages of introducing Chinese
as a working language into the Madrid System and asked whether it would affect the
responders’ choice of using the Madrid System. The participants in the survey included
corporate trademark managers, trademark agencies and other relevant practitioners.
Ninety-eight per cent of the participants believed that adding Chinese as a working language
would be more convenient for the use of the Madrid System, and 95 per cent said that, after
adding Chinese as a working language, they would give more consideration to the use of the
Madrid System when registering trademarks abroad. According to the International Bureau,
China’s Madrid market share in 2017 was only 36 per cent of overseas trademark filings,
a relatively small number. Based on the results of that survey, the Delegation foresaw that,
if the Chinese language was introduced to the Madrid System, the proportion of Chinese
applicants using the Madrid System for overseas filing would likely increase by 61 per cent,which would greatly benefit the development of WIPO’s services given the pandemic situation.
New languages would attract more users and would benefit the long-term development of the
Madrid System. The Delegation mentioned that the document included a possible way forward,
as well as proposed amendments to the Regulations, and suggested that the proposed
amendments entered into force no earlier than February 1, 2024. The Delegation understoodthat the introduction of new languages into the Madrid System would involve complex systemmodifications and possible financial implications. However, considering that WIPO, as the only
specialized agency in the UN System dealing with intellectual property rights and innovation,
would have a fairly high-level degree of capacity and efficiency in applying the new technology.
With that in mind, the Delegation indicated that it would do its best to work with the International
Bureau, and that the date set for entry into force, was not too far into the future. The Delegation
noted that China would work with the International Bureau, especially on the Madrid Monitor
interface, the Madrid Member Profiles Database and the international Madrid Application
Assistant tool, as well as other translation-related tasks, and expressed its belief that othermembers would do the same. The China National Intellectual Property Administration (CNIPA)
had been working for a long time with the Madrid Team at WIPO, including providing Chinesetranslations of the Chinese domestic goods and services for the MGS database, as well as of
the annual revision of the alphabetical list of the Nice Classification. In addition, China had laid
the groundwork for the introduction of the Chinese language as a working language into theMadrid System, such as developing an online application system for Madrid international
registrations, which covered the whole process of the Madrid international application andreceipt of the notification of territorial extension of the International Bureau electronically.
The Delegation believed that those efforts and cooperation would greatly reduce the complexityof communication and cost of introducing new languages. The Delegation recalled that theWorking Group had, at the sixteenth and seventeenth sessions, discussed the overall revisionof the working languages translation policy. While the documents compiled for that session did
not propose a solution to that problem, the Delegation noted that the new Director General,
Mr. Daren Tang, had stated in his address to the Working Group, that the introduction of new
languages in the Madrid System was not only inevitable due to the geographical expansion, butalso desirable because it brought the Madrid System closer to all users. That showed that the
Director General attached great importance to this matter. However, the Delegation did not see
the same level of ambition in the current document and, therefore, sought clarification from theSecretariat of the current language policy of the Madrid System for French and Spanishtranslation. For example, the Delegation questioned whether external contracted translation
services were used or whether it was machine translation. In addition, the Delegation recalledthat some delegations had stressed that the resistance and barrier to the introduction of new
languages was cost, and the Delegation sought clarification of the costs of filing an international
application if Chinese, Arabic and Russian were introduced, and the costs of filing anMM/LD/WG/18/10
page 33
application in the current working languages of English, French and Spanish. More importantly,
the Delegation highlighted that it was not a technical issue but one of equal status of all UN
languages. The Delegation was of the view that the proposal to introduce Chinese, Arabic andRussian into the Madrid System as filing languages failed to meet the requirements of relevantdelegations to introduce the three languages into the Madrid System as working languages
equally, and the current proposed implementation took too long to enter into force. Therefore,
the Delegation proposed, subject to objection from the Working Group, that such concerns bereflected in the decision text of that session. The Delegation also asked the Secretariat toconsult with the relevant countries on the cost analysis to introduce the three languages,
provide a cost estimate and to assess the current language tools and the internal translation
capacities. The Delegation believed that the cost implication and the technical feasibility should
be further discussed at the next session, including the assessment of current WIPO tools, andthe gradual introduction of Chinese, Arabic and Russian languages into the Madrid System, togive them the same status as the other UN languages.
139. The Delegation of Kyrgyzstan congratulated the Chair and Vice-Chairs on their election
and thanked the Secretariat for preparing the document. The Delegation supported thestatement made by the Delegation of the Russian Federation, speaking on behalf of CACEEC.
The Delegation expressed the belief that the initiated work on the addition of Russian, Arabic
and Chinese languages to the Madrid System was a wise step forward. Though that meanta heavy workload, the Delegation underlined the importance of the need to move forward andsaid it was ready to work together with the International Bureau. The Delegation said that it did
not agree with the proposed step-by-step approach and timetable, and acknowledged thata multilingual policy required the use of all six official languages. The experts in its region could
bring their skills and their knowledge to help include Russian, Arabic and Chinese as working
languages of the Madrid System.
140. The Delegation of Armenia underlined the importance of developing the language regimeof the Madrid System by introducing new working languages aimed at expanding its availability.
Multilingualism was a key value at the UN and at WIPO. The UN General Assembly regularly
emphasized the importance of multilingualism as a fundamental value for achieving UN goals.
The Delegation expressed the belief that the organization’s multilingualism should be reflected
in its internal operating procedures, to support the implementation of its mandate and improve
its efficiency and transparency. In that regard, the Delegation advocated the leveling of theexisting imbalances by providing users with access to services in all official languages of theOrganization. The Delegation shared the belief that it was necessary to preserve the stability of
the Madrid System. At the same time, the Delegation recalled that the existing practice ofintroducing new languages was not based on the principle of minimizing translation costs.
The document presented did not contain justification for the costs nor did it contain detailed
information on how those amounts were calculated and could be complemented withan analysis of the current language regime. The Delegation concluded by lending its support tothe statement made by the Delegation of the Russian Federation, speaking on behalfof CACEEC, especially with regard to the importance of the use of the Russian language.
141. The Delegation of Sudan, after congratulating the Chair and Vice-Chairs on their election,
expressed its support for the proposal to include Arabic, Chinese and Russian into the Madrid
System and its belief that linguistic diversity was very important in the Madrid System.

MM/LD/WG/18/10
page 34
142. The Delegation of Turkmenistan thanked the Secretariat for the preparation of the
document and the Delegation of the Russian Federation for speaking on behalf of CACEEC on
the importance of developing the Madrid System through the inclusion of new languages.
The Delegation explained that its users demanded the possibility of using Russian as a working
language in the Madrid System. Including the Russian language as one of the working
languages of the System could lead to an increase in international filings from the CACEEC
countries and greater use of the Madrid System by the national Offices in the region.
The Delegation expressed its belief that the introduction of the Russian language would achieveequality among the UN languages and that this would increase WIPO’s multilingualism.
143. The Delegation of the Russian Federation supported the statement made by the
Delegation of the Russian Federation, speaking on behalf of CACEEC. The Delegation notedwith gratitude that WIPO was taking steps forward to promote multilingualism. The Delegation,
however, shared its belief that additional efforts were required to ensure the implementation of
the basic principles. First of all, the equality of all six official languages of the UN, including
within the major services provided by WIPO. The Delegation said that the strategic sector of the
Madrid System was directly related to its intensive development and increase of the number ofusers in newly joined members. The Delegation recalled that the study made by the
Secretariat, on possible options for introducing new languages, concluded that the developmentof the Madrid System, by expanding the language regime, was inevitable due to its
geographical extension, and that it was also desirable from the point of view of bringing the
System closer to users. The Delegation supported the thesis made by WIPO’s Director
General, Mr. Daren Tang, in his opening speech, of having noted the extremely important roleof removing language barriers, particularly for small and medium sized enterprises (SMEs) andindividual entrepreneurs. In the current difficult conditions of economic instability, additional
support measures were needed. The Delegation shared the position of CACEEC that the study
carried out by the Secretariat required additional refinement. First of all, it was necessary toprovide a clearer justification for each of the budget lines and detail the stages of the gradualintroduction of new languages. The Delegation expressed its belief that the costs could be
optimized. It was also noted that WIPO’s internal resources could carry out the necessary workrequired for a more balanced assessment. Although WIPO had been using innovative tools in
its work, for example, the WIPO Translate platform, the study payed rather modest attention to
the use of automated translation tools. The Delegation reiterated that the Russian Federation
was ready to provide all necessary assistance, including updates to the IT systems to work with
the Cyrillic script, bringing in the necessary specialists and populating translation databases fortraining neural networks. The Delegation informed the International Bureau that applicants in
the Member States of CACEEC and Russian users were actively using the Russian version of
the alphabetical list of the Nice Classification and the MGS. The Delegation supported China
and the Group of Arab Countries in their intention to introduce all three languages as working
languages of the Madrid System. To conclude, the Delegation confirmed its intention to havean intensive dialogue with the Secretariat, involving all interested parties, in particular, experts
in the new technology fields of the Global Infrastructure Sector and specialists from the Human
Resources and Financial Departments. The Delegation also confirmed its interest in continuing
consultations with the Secretariat and interested States to develop effective modalities for
expanding the language regime.
144. The Delegation of the Syrian Arab Republic congratulated the Chair and Vice-Chairs on
their election and thanked the Secretariat for preparing the document. The Delegation
supported the statement made by the Delegation of Bahrain and emphasized the importance of
expanding the Madrid System to include the six official languages of the UN. The Delegation
said that such would guarantee that all users benefit from the System and it would lead toan increase in the development and prosperity of the Madrid System. The Delegation further
emphasized the importance of the progressive introduction of the Arabic, Chinese and Russian
languages into the Madrid System and referred to the proposal to include the Arabic language
as an official language of the Madrid System, as indicated in the proposal presented during

MM/LD/WG/18/10
page 35
the seventeenth session of the Working Group. The Delegation referred to the study preparedby the Secretariat regarding the financial consequences and the technical feasibility of the
progressive introduction of the Arabic, Chinese and Russian languages in the Madrid System,and said that it was necessary to have further clarification on some of its content. For example,
clarifying whether the International Bureau planned to use any of the existing artificial
intelligence tools relating to translation, such as WIPO Translate, to reduce the costs andguarantee the financial and technical feasibility. A more in-depth study would help facilitate
discussions in the following session of the Working Group, on the active solutions in terms ofcosts, the consequences of those costs and the technical feasibility of the introduction of
the Arabic, Chinese and Russian languages into the Madrid System. The aforementioned
would be necessary to achieve the objective of providing those three languages with a status
equal to the current working languages of the Madrid System, and to contribute to the linguistic
coverage of WIPO in the future, leading to an increase in its activity and benefit for all users
around the world.
145. The Delegation of Uzbekistan congratulated the Chair and Vice-Chairs on their election
and thanked the Secretariat for all its work on introduction of the new languages.
The Delegation supported the statement made by the Russian Federation on introducing
the Russian language into the Madrid System.
146. The Delegation of the United States of America thanked the Secretariat for conducting thestudy and noted the International Bureau’s proposal to simultaneously add three new filing
languages to the Madrid System, namely, Arabic, Chinese and Russian. The Delegation
indicated that the study confirmed the heavy financial burden of adding new languages.
The Delegation reiterated its concerns raised at the previous session about the heavy resources
required and the time needed for adding new languages to the Madrid System. The Delegation
said that it would like to understand what existing WIPO online electronic tools and services
could serve the same purpose as adding filing languages to the System. For example,
the MGS tool already contained translations of goods and services in the three proposed
languages, and that tool could accommodate even more languages if Contracting Parties
contributed to the translation process. Further improving that tool would be less expensive thanadding new working languages. The Delegation was concerned about shifting the burden oftranslation from the applicant and the Office of origin to the International Bureau, because thatcreated more work for the International Bureau. The System faced delays as it was and those
delays could be made worse if it the International Bureau had to translate more documents.
There were already delays in processing quality translations, delays in the timely receipt of Paris
Convention priority claims in extensions of protection, and costs for users. The USPTO had
experienced translations that were inaccurate or awkwardly worded, perhaps due to the factthat the translators were not native English speakers. Ultimately, the delays in getting
translations done or corrected in the international application’s data sent to the designatedOffices caused delays in sending convention priority claims in the extensions of protection.
The Delegation stated that such was a serious problem as there was no statutory authority to
ex officio cancel registrations when an intervening Madrid registration priority claim suddenly
appeared. The affected Madrid holder would need to petition the USPTO to cancel the national
registration, which increased costs for that international holder. Until the Delegation could beassured that the existing translation services were not causing any delays, it did not makesense for the International Bureau to take on translations of additional languages. Finally,
the Delegation shared its belief that adding languages would add costs to the Madrid System,
which were borne by its users. The United States of America was one of the top filing Offices oforigin and the Delegation was concerned that its stakeholders would feel the impact of anincrease in Madrid fees to pay for additional languages. Therefore, the Delegation asked theInternational Bureau to examine a number of issues: (i), to evaluate the existing tools andservices to see whether there was room for improvement; (ii), to determine whether new tools
and services could be offered to make the filing experience more user-friendly and costless thanadding new filing languages; (iii), assess how to keep costs down if three new filing languages

MM/LD/WG/18/10
page 36
were introduced simultaneously; (iv), to analyze whether the Madrid System fees would be
increased; and (v), to evaluate whether further fee increases were necessary to ensure that
the Madrid System was able to fund its own direct and indirect operating costs and contribute to
WIPO as a whole, as required by the Treaty. In that regard, the Delegation referred to its
previously submitted proposal entitled Contribution to the Financial Wellbeing of theOrganization. In that proposal, the Delegation had noted that the Madrid System was notcontributing its full financial share to the common expenses of WIPO or even the indirect
expenses of the Madrid Union. Instead, the Madrid System was subsidized by the PCT Union,
which in turn was unhealthy for WIPO in the long-term. The Delegation recalled that the Madrid
Union fee revision was identified as a topic to be discussed in the Roadmap of the Working
Group, and asked that the fee issue be made a priority to be discussed sooner rather than later.
The cost of adding new languages bore directly on the amount of fees charged to users to coverboth the direct and indirect expenses of the Madrid System.
147. The Delegation of Japan said that it agreed that it was important for the Working Group tocontinue to work on improving the Madrid System to enhance its user-friendliness. However,the Delegation supported the statement made by the Delegation of the United States of America
and said that the issue of languages needed very careful consideration.
148. The Delegation of Georgia congratulated the Chair and the Vice-Chairs on their election
and thanked the Secretariat for the in-depth study on the practical and financial implications of
the possible addition of new languages into the Madrid System. The Delegation firmly statedthat its position had not changed and that it considered the introduction of new languages, forexample, Russian, into the Madrid System would cause extra workload for the International
Bureau. Therefore, the Delegation expressed its belief that such impact would damage theuser-friendliness of the Madrid System and make it more complicated. More languages would
increase the possibility of translation errors, which would also lead to the need forreexamination by the designated Contracting Parties.
149. The Delegation of the United Kingdom thanked the Secretariat for the work that had gone
into the document to assess the implications of adding languages to the Madrid System.
The Delegation said that, while it recognized the importance of an inclusive approach tolanguages at WIPO to make IP systems and information available to a wider audience, it sharedsome of the concerns expressed by the Delegation of the United States of America about thepotential impact on users. The Delegation could only support the addition of new languages if
the International Bureau could provide assurances that any additional costs were not passed on
to users of the Madrid System in the form of increased fees. The Delegation also requested
assurances that the addition of new languages into the System would not introduce delays forusers and sought further information in that regard.
150. The Delegation of Saudi Arabia congratulated the Chair and Vice-Chairs on their election
and thanked the Secretariat for its work on the documents. The Delegation expressed its
support for the statement made by the Delegation of Bahrain, on behalf of the Group of
Arab countries. The Delegation remarked that the issue of languages was very important for
Saudi Arabia and for users of the Madrid System, in particular, the adoption of new languages
would help speed up its accession to the Protocol thereby increasing users and members.
151. The Chair noted that there were a number of questions and concerns raised by a numberof delegations. Under the circumstances, the Chair suggested that discussions continue atthe next Working Group session, following a revised study by the Secretariat.

MM/LD/WG/18/10
page 37
152. The Delegation of China reminded all delegations that introducing new languages into theMadrid System was a decision made at a previous session of the Working Group, and whether
new languages should be introduced was not a matter for discussion. In responding todelegations concerned about costs implications, the Delegation said that such concerns anddeficits were ungrounded, as the Madrid System was running at a surplus and not a deficit,
according to WIPO Financial Reports. The Delegation highlighted that the Madrid System had
a long history and had introduced new languages in promoting the development of the System.
The Delegation believed that introducing the Chinese, Arabic and Russian languages into theMadrid System was not a cost increase issue, but a fundamental issue for the long-term
development of the System. The Delegation referred to the PCT System, by way of example,
noting that 10 languages were included and that it had become the largest income source
for WIPO. Finally, the Delegation further emphasized that it was not a question of whether thethree proposed new languages should be introduced into the Madrid System, but rather how
those languages should be introduced.
153. The Delegation of the European Union, speaking on behalf of the European Union and its
member states, thanked the Secretariat for preparing the study of the cost implications andtechnical feasibility of the gradual introduction of the Arabic, Chinese and Russian languages
into the Madrid System. As a result of the study, the proposal to add new languages had
become much clearer in its scope and sufficient light had been shed on the overall context.
The new document had helped put the Delegation in a much better position to assess the actual
financial and administrative burdens implied by the introduction of new languages.
The Delegation had studied with interest the further elaboration on whether, and to what extent,
a new translation regime could appropriately address all the complexities involved. However,the Delegation still had a number of doubts about the introduction of Arabic, Chinese andRussian as filing languages at that point. It might cause an increase of errors, due to translationdifferences, and administrative delays, due to an increase of workload. Against the backgroundof a prudent approach necessitated by the current global economic uncertainty, the Delegation
did not consider it the right time to decide on the measures that would impose more burdens on
the Madrid System. As the proposed amendments to Rules 6 and 9 were meant to enter into
force no earlier than February 1, 2024, a decision could be taken when it was possible to havea better assessment of the consequences of the worldwide pandemic on the Madrid System.
154. The Delegation of Brazil was of the view that anything that made the Madrid Systemeasier and more accessible benefitted the entire IP system, the economy of each of thecountries involved and IP Offices acting as both Office of origin and designated Office.
The Delegation recognized the value of adding new languages to the Madrid System andunderstood, from its experience in Brazil, that language was in many cases an important tool toguarantee accessibility and proximity to users, and noted that some users might postpone or set
aside the plan to protect their trademarks internationally due to language barriers.
The Delegation raised three separate issues. First, the Delegation considered it important tohave an analysis of the return on investment, financial or by volume, of the five options
presented in the document. The Delegation said that it was paramount that the inclusion of new
languages in the System did not result in an increase in basic fees or impede any plans to
reduce the basic fee for marks reproduced in color, to match the fees for those reproduced inblack and white. An economic analysis could consider whether a reduction of the basic fee
could have a positive impact on the total revenue driven by the increase in volume of users.
That could be the case in Brazil, because 65 per cent of exporting enterprises were SMEs withlow average revenues. The exchange rate from the Brazilian real to the Swiss franc was afactor that drove away Brazilian business from using the Madrid System. The current
registration fee in Brazil was particularly high. The second point the Delegation raised, was theimportance of not increasing the processing time of applications, especially given the
anticipated extra volume of applications. Increasing the processing times remained a concern
for the Delegation, as delays in processing would increase the risk and problems for Offices that
may grant a protection to a similar national mark before the international designation had been

MM/LD/WG/18/10
page 38
processed and received. In Brazil, that would result in judicial actions leading to higher costs forboth applicants that were in conflict. The Delegation understood from the document that there
would not be an increase in processing time, but sought confirmation from the Secretariat onthat point. The final point raised by the Delegation concerned the harmonization of practices.
The Delegation shared its belief that sharing information was the key to better management of
the Madrid System, especially regarding the issuance of irregularities. Having a better
understanding, for example, of acceptable goods and services was a way to reduce translation
costs. The MGS was particularly relevant, given its accessibility to users and its function thatallowed the user to check acceptable terms. Though the Delegation understood that the MGS
tool had some limitations, it was still a helpful tool, particularly, if Offices kept the International
Bureau up to date and could help reduce translation problems.
155. The Delegation of Colombia thanked the Secretariat for preparing the document.
The Delegation stated that the document reflected the cost implications concerning
the introduction of the Arabic, Chinese and Russian languages to the Madrid System. However,the Delegation did not believe that it was the right time to adopt a decision. Instead,the Delegation would rather discuss the feasibility of how those languages could be introduced,
the costs implications and the potential risks. The Delegation indicated that it believed thoseissues were of paramount importance, and highlighted that potential translation errors could
affect the scope of protection of rights.
156. The Delegation of Belarus supported the statement made by the Delegation of China.
The Delegations said that it was not a question of whether or not to add the Arabic, Russian andChinese languages to the Madrid System, but rather the best manner in which to include thoselanguages in the Madrid System.
157. The Delegation of Switzerland supported the statement made by the Delegation of
the European Union.
158. The Chair acknowledged the questions and concerns raised by delegations andsuggested that the Working Group request the Secretariat to conduct consultations and preparea more detailed study in advance of the next session of the Working Group. The Chairpresented the draft decision language for discussion.
159. Taking into account the exchange of opinions and the restrictions relating to the hybrid
format of the session, the Delegation of the Russian Federation, speaking on behalf of
CACEEC, said that it was appropriate to postpone, until the following session, the substantive
discussion on financial implications and technical feasibility of introducing the Arabic, Chineseand Russian languages into the Madrid System. The Delegation indicated that it was importantto reflect in the decision of the Working Group that, following the results of the current session,interested States intended to continue intensive consultations with the Secretariat on thelanguage issue and to present the results of those consultations during the next session of theWorking Group.
160. The Chair suspended the meeting.
161. Resuming the session, the Chair informed the Working Group that informal consultations
had been conducted among the delegations.

MM/LD/WG/18/10
page 39
162. The Working Group, recalling the decisions taken at its sixteenth andseventeenth sessions:(i)requested the Secretariat to provide, in advance of the nineteenth session of
the Working Group, a revised Study of the Cost Implications and Technical
Feasibility of the Gradual Introduction of the Arabic, Chinese and Russian
Languages into the Madrid System (document MM/LD/WG/18/5) and otherrelevant information, so as to address the issues raised by delegations at
the eighteenth session of the Working Group, and submit it for considerationby the Working Group at its next session; and,(ii) requested the Secretariat to consult with interested Contracting Parties of
the Protocol and other WIPO Member States, in advance of the nineteenth sessionof the Working Group, to clarify issues and relevant information so as to support
the Working Group in its consideration of this subject matter.
AGENDA ITEM 8: SUMMARY BY THE CHAIR
163. The Working Group approved the Summary by the Chair, as amended, to takeaccount the interventions of a number of delegations.
AGENDA ITEM 9: CLOSING OF THE SESSION
164. The Chair closed the session on October 16, 2020.
[Annexes follow]

MM/LD/WG/18/10
ANNEX IANNEX I: PROPOSED AMENDMENTS TO THE REGULATIONS UNDER THE PROTOCOLRELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONALREGISTRATION OF MARKS*
Regulations Under the Protocol Relating to the Madrid Agreement Concerning
the International Registration of Marks
as in force on February 1, 2021 November 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.

[…]
[…]

*

Amended Rule 3 of the Regulations, as approved by the Assembly of the Madrid Union in September 2020.
The amendments to Rule 3 will enter into force on February 1, 2021. See Annex of document MM/A/54/1 “COVID-19
Measures: Making E-mail a Required Indication”(https://www.wipo.int/edocs/mdocs/govbody/en/mm_a_54/mm_a_54_1.pdf).

MM/LD/WG/18/10
Annex I, page 2(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.

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

(2)

[Excuse in Delay in Meeting Time Limits due to Force Majeure ReasonsCommunications
Sent Through a Postal Service] Failure by an interested party to meet a time limit specified
in the Regulations to perform an action beforefor a communication addressed to theInternational Bureau and mailed through a postal service shall be excused if the interested
party submits evidence showing, to the satisfaction of the International Bureau, that such
failure was due to war, revolution, civil disorder, strike, natural calamity, irregularities inpostal, delivery or electronic communication services owing to circumstances beyond thecontrol of the interested party 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 a Delivery Service] Failure by an interested party to meeta time limit for a communication addressed to the International Bureau and sent through adelivery service shall be excused if the interested party submits evidence showing, to thesatisfaction of the International Bureau,[Deleted](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]MM/LD/WG/18/10
Annex I, page 3(3)[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](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.

MM/LD/WG/18/10
Annex I, page 4
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.

[…]
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,MM/LD/WG/18/10
Annex I, page 5
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/18/10
Annex I, page 6
Schedule of Fees
as in force on February 1, 2021 November 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

[Annex II follows]

MM/LD/WG/18/10
ANNEX II
ANNEX II: PROPOSED AMENDMENTS TO THE REGULATIONS UNDER THE PROTOCOLRELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONALREGISTRATION OF MARKS AND CONSEQUENTIAL AMENDMENTS TO THE SCHEDULE
OF FEES
Regulations Under the Protocol Relating to the Madrid Agreement Concerning
the International Registration of Marks
as in force on February 1, 2020 February 1, 2023[…]
Chapter 2
International Applications[…]
Rule 9Requirements Concerning the International Application[…](4)[Contents of the International Application](a)

The international application shall contain or indicate[…](v)

a reproductionrepresentation of the mark, furnished in accordance with the
Administrative Instructions, that shall fit in the box provided on the official
form; that reproduction shall be clear and shall, depending on whether the
reproduction in the basic application or the basic registration is in black andwhite or in color, be in black and white orshall be in color where color isclaimed under item (vii),

[…]
(vii)

[…]

where color is claimed as a distinctive feature of the mark in the basic
application or basic registration, or where the applicant wishes to claim color
as a distinctive feature of the mark and the mark contained in the basic
application or basic registration is in color or is applied to be or is protectedin color, an indication that color is claimed and an indication by words of thecolor or combination of colors claimed and, where the reproduction furnishedunder item (v) is in black and white, one reproduction of the mark in color,MM/LD/WG/18/10
Annex II, page 2(5)[Additional Contents of the International Application]
[...]
(d)

The international application shall contain a declaration by the Office of origin
certifying[…](v)

that, if color is claimed as a distinctive feature of the mark in the basic
application or the basic registration, or the mark in the basic application or
the basic registration is applied to be or is protected in color, the same a color
claim is included in the international application or that, if color is claimed asa distinctive feature of the mark in the international application without having
being claimed in the basic application or basic registration, the mark in thebasic application or basic registration is in fact in the color or combination ofcolors claimed, and

[…]
[…]
[…]
Chapter 3
International Registrations[…]
Rule 15
Date of the International Registration(1)[Irregularities Affecting the Date of the International Registration] Where the international
application received by the International Bureau does not contain all of the following
elements:
[…]
(iii)
[…]

[…]

a reproductionrepresentation of the mark,MM/LD/WG/18/10
Annex II, page 3
Chapter 4
Facts in Contracting Parties Affecting International Registrations[…]
Rule 17
Provisional Refusal[…](2)[Content of the Notification] A notification of provisional refusal shall contain or indicate[…](v)where the grounds on which the provisional refusal is based relate to a markwhich has been the subject of an application or registration and with which
the mark that is the subject of the international registration appears to be inconflict, the filing date and number, the priority date (if any), the registration
date and number (if available), the name and address of the owner, and a
reproduction,representation of the former mark or an indication of how toaccess that representation, together with the list of all or the relevant goods
and services in the application or registration of the former mark, it being
understood that the said list may be in the language of the said application
or registration,[…][…]
Chapter 7
Gazette and Data Base
Rule 32
Gazette(1)[Information Concerning International Registrations]
[…]

[…]

(b)

The reproductionrepresentation of the mark shall be published as it appearswas
furnished in the international application. Where the applicant has made thedeclaration referred to in Rule 9(4)(a)(vi), the publication shall indicate that fact.

(c)[Deleted]Where a color reproduction of the mark is furnished under Rule 9(4)(b)(v) or(vii), the Gazette shall contain both a reproduction of the mark in black and white andthe reproduction in color.

MM/LD/WG/18/10
Annex II, page 4
Schedule of Fees
as in force on February 1, 2020 February 1, 2023
Schedule of Fees
1.

[Deleted]

2.

International application

Swiss francs

The following fees shall be payable and shallcover 10 years:
2.1. Basic fee (Article 8(2)(i) of the Protocol)*2.1.1. wherenoreproductionrepresentation of themark is in color653

2.1.2. whereany
reproductionrepresentation of themark is in color

903

[…]

[Annex III follows]*

For international applications filed by applicants whose country of origin is a Least Developed Country, in
accordance with the list established by the United Nations, the basic fee is reduced to 10% of the prescribedamount (rounded to the nearest full figure). In such case, the basic fee will amount to 65 Swiss francs (where
no reproductionrepresentation of the mark is in color) or to 90 Swiss francs (where any
reproductionrepresentation of the mark is in color).

MM/LD/WG/18/10
ANNEX III
ANNEX III: PROPOSED AMENDMENTS TO RULES 21* AND 40 OF THE REGULATIONSUNDER THE PROTOCOL RELATING TO THE MADRID AGREEMENT CONCERNING
THE INTERNATIONAL REGISTRATION OF MARKS
Regulations Under the Protocol Relating to the Madrid Agreement Concerning theInternational Registration of Marks
as in force on February 1, 2021 November 1, 2021[…]
Chapter 4
Facts in Contracting Parties Affecting International Registrations[…]
Rule 21
Replacement of a National or Regional Registration by an International Registration(1)[Request and Notification] From the date of the notification of the international registration
or of the subsequent designation, as the case may be, the holder may present directly to
the Office of a designated Contracting Party a request for that Office to take note of theinternational registration in its Register, in accordance with Article 4bis(2) of the Protocol.
Where, following the said request, the Office has taken note in its Register that a national
or a regional registration or registrations, as the case may be, have been replaced by theinternational registration, that Office shall notify the International Bureau accordingly. Such
notification shall indicate(i)the number of the international registration concerned,(ii)

where the replacement concerns only one or some of the goods and services
listed in the international registration, those goods and services, and(iii)

the filing date and number, the registration date and number, and, if any, thepriority date of the national or regional registration or registrations which havebeen replaced by the international registration.

The notification may also include information relating to any other rights acquired by virtueof that national or regional registration or registrations.
(2)*[Recording](a)

The International Bureau shall record the indications notified under paragraph (1) in
the International Register and shall inform the holder accordingly.

(b)

The indications notified under paragraph (1) shall be recorded as of the date of receipt
by the International Bureau of a notification complying with the applicablerequirements.

Amended Rule 21 of the Regulations, as approved by the Assembly of the Madrid Union in October 2019.
The amendments to Rule 21 will enter into force on February 1, 2021. See documents MM/A/53/1 “Proposed
Amendments to the Regulations under the Protocol Relating to the Madrid Agreement Concerning the International
Registration of Marks”, Annex II (https://www.wipo.int/edocs/mdocs/govbody/en/mm_a_53/mm_a_53_1.pdf)
and MM/A/53/3 “Report”, paragraph 16 (https://www.wipo.int/edocs/mdocs/govbody/en/mm_a_53/mm_a_53_3.pdf).

MM/LD/WG/18/10
Annex III, page 2(3)[Further Details Concerning Replacement](a)Protection to the mark that is the subject of an international registration may not berefused, even partially, based on a national or regional registration which is deemed
replaced by that international registration.

(b)

A national or regional registration and the international registration that has replaced
it shall be able to coexist. The holder may not be required to renounce or request thecancellation of a national or regional registration which is deemed replaced by aninternational registration and should be allowed to renew that registration, if the holder
so wishes, in accordance with the applicable national or regional law.

(c)

Before taking note in its Register, the Office of a designated Contracting Party shall
examine the request referred to in paragraph (1) to determine whether the conditions
specified in Article 4bis(1) of the Protocol have been met.

(d)

The goods and services concerned with replacement, listed in the national or regional
registration, shall be covered by those listed in the international registration.
Replacement may concern only some only of the goods and services listed in thenational or regional registration.

(e)

A national or regional registration is deemed replaced by an international registration
as from the date on which that international registration takes effect in the designatedContracting Party concerned, in accordance with Article 4(1)(a) of the Protocol.

[…]
Rule 40
Entry into Force; Transitional Provisions[…](7)[Transitional Provision Relating to Partial Replacement] No Office shall be obliged toapply Rule 21(3)(d), second sentence, before February 1, 2025.

[Annex IV follows]

MM/LD/WG/18/10
ANNEX IV

MM/LD/WG/18/INF/3
ORIGINAL : FRANÇAIS / ENGLISHDATE : 16 OCTOBRE 2020 / OCTOBER 16, 2020

Groupe de travail sur le développement juridique du systèmede Madrid concernant l’enregistrement international des marques
Dix-huitième session
Genève, 12 – 16 octobre 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

LISTE DES PARTICIPANTS
LIST OF PARTICPANTS

établie par le Secrétariat
prepared by the Secretariat

MM/LD/WG/18/10
Annex IV, page 2I.

MEMBRES/MEMBERS(dans l’ordre alphabétique des noms français des membres)(in the alphabetical order of the names in French of the members)
ALBANIE/ALBANIA
Dorina TERZIU (Ms.), Specialist, Trademarks, Industrial Designs and Geographical Indications
Sector, General Directorate of Industrial Property (GDIP), Ministry of Finance and Economy,
Tiranadorina.terziu@dppi.gov.al
ALGÉRIE/ALGERIA
Mohamed SABBAGH (M.), chef, Département règlementation et information, Institut national
algérien de la propriété industrielle (INAPI), Ministère de l’industrie, Alger
mh.sabbagh@inapi.org
Abdelhakim GUETTAR (M.), examinateur chargé de la Commission de recours marques,dessins et modèles industriels, Institut national algérien de la propriété industrielle (INAPI),
Ministère de l’industrie, Algerh.guettar@inapi.org
Mohamed BAKIR (M.), premier secrétaire, Mission permanente, Genève
bakir@mission-algeria.ch
ALLEMAGNE/GERMANY
Carolin HÜBENETT (Ms.), Head, International Registrations Team, German Patent andTrademark Office (DPMA), Munich
Jan TECHERT (Mr.), Counsellor, Permanent Mission, Geneva
ANTIGUA-ET-BARBUDA/ANTIGUA AND BARBUDA
Colleen ROBERTS (Ms.), Senior Trademark Officer (Madrid), Antigua and Barbuda Intellectual
Property and Commerce Office (ABIPCO), Ministry of Legal Affairs, St. John’scolleen.roberts@ab.gov.ag
ARMÉNIE/ARMENIA
Ara ABGARYAN (Mr.), Head, State Registers Department, Intellectual Property Agency,
Ministry of Economic Development and Investments of the Republic of Armenia, Yerevan
legalmet@aipa.am
Arsen KOTANJYAN (Mr.), Second Secretary, Permanent Mission, Geneva
a.kotanjyan@mfa.am

MM/LD/WG/18/10
Annex IV, page 3
AUSTRALIE/AUSTRALIA
Dustyn TAYLOR (Mr.), Policy Officer, International Policy and Cooperation, IP Australia,
Department of Industry, Science, Energy and Resources, Canberra
Trudi LYNCH (Ms.), Senior Trade Mark Examiner, Trade Marks and Designs, IP Australia,
Department of Industry, Science, Energy and Resources, Canberra
AUTRICHE/AUSTRIA
Young-Su KIM (Mr.), Legal Expert, Legal Department, International Trademarks and Designs,
Austrian Patent Office, Vienna
young-su.kim@patentamt.at
AZERBAÏDJAN/AZERBAIJAN
Seymur MARDALIYEV (Mr.), Deputy Permanent Representative, Permanent Mission, Geneva
Gulnara RUSTAMOVA (Ms.), Advisor to the Chairman of the Board, Intellectual Property
Agency of the Republic of Azerbaijan, Baku
g.rustamova@copat.gov.az
Nargiz HAJIYEVA (Ms.), Head, International Trademarks Examination Sector, Intellectual
Property Agency of the Republic of Azerbaijan, Baku
BAHREÏN/BAHRAIN
Khalid ALAAMER (Mr.), Commercial Attaché, Permanent Mission, Geneva
kalaamer@bahrain-mission.ch
BÉLARUS/BELARUS
Halina LIUTAVA (Ms.), Head, International Registrations Division, Trademarks Department,
National Center of Intellectual Property (NCIP), Minsk
galilut@gmail.com
Dmitry DOROSHEVICH (Mr.), Counsellor, Permanent Mission, Geneva
BHOUTAN/BHUTAN
Binod PRADHAN (Mr.), Deputy Chief Intellectual Property Officer, Department of Intellectual
Property, Ministry of Economic Affairs, Thimphu
binodpradhan@moea.gov.bt

MM/LD/WG/18/10
Annex IV, page 4
BOSNIE-HERZÉGOVINE/BOSNIA AND HERZEGOVINA
Enisa ČENGIĆ DZAFO (Ms.), Head, Trademark Department, Institute for Intellectual Propertyof Bosnia and Herzegovina, Sarajevo
e_cengic@ipr.gov.ba
Irma DELIBASIĆ (Ms.), Trademark Examiner, Trademark Department, Institute for Intellectual
Property of Bosnia and Herzegovina, Sarajevo
i_delibasic@ipr.gov.ba
BRÉSIL/BRAZILMaria-Eugênia GALLOTTI (Ms.), Madrid Protocol Project Manager, Trademarks Directory,
National Institute of Industrial Property (INPI), Ministry of Economy, Rio de Janeiro
mariaeugeniagallotti@gmail.com
BRUNÉI DARUSSALAM/BRUNEI DARUSSALAM
Amiriah ALI (Ms.), Legal Officer, Brunei Intellectual Property Office (BruIPO), Attorney General’sChambers, Bandar Seri Begawanamiriah.ali@agc.gov.bn
CANADA
Iyana GOYETTE (Ms.), Deputy Director, Policy and Legislation, Canadian Intellectual Property
Office (CIPO), Innovation, Science and Economic Development Canada, Gatineau
iyana.goyette@canada.ca
Stephanie GOLDEN (Ms.), Senior Policy Analyst, Canadian Intellectual Property Office (CIPO),
Innovation, Science and Economic Development Canada, Gatineau
stephanie.golden@canada.ca
Nicolas LESIEUR (Mr.), First Secretary, Permanent Mission, Geneva
CHINE/CHINAYANG Wenjing (Ms.), Program Officer, International Cooperation Department, China National
Intellectual Property Administration (CNIPA), Beijing
DUAN Chuane (Ms.), Consultant, Trademark Office, China National Intellectual Property
Administration (CNIPA), Beijing
LAM Wong Sheung Raymond (Mr.), Senior Sollicitor, Intellectual Property Department,
Government of the Hong Kong Special Administrative Region, Hong Kong SAR
MOK Carole (Ms.), Senior Sollicitor, Intellectual Property Department, Government of the Hong
Kong Special Administrative Region, Hong Kong SAR
KAN Mee Yuk Teresa (Ms.), Chief Intellectual Property Examiner, Intellectual Property
Department, Government of the Hong Kong Special Administrative Region, Hong Kong SAR
ZHENG Xu (Mr.), Second Secretary, Permanent Mission, Geneva

MM/LD/WG/18/10
Annex IV, page 5
COLOMBIE/COLOMBIA
María José LAMUS BECERRA (Sra.), Superintendente Delegada para la Propiedad Industrial,
Delegatura para la Propiedad Industrial, Superintendencia de Industria y Comercio (SIC),
Ministerio de Industria, Comercio y Turismo, Bogotá D.C.
mlamus@sic.gov.co
Juan Pablo MATEUS BERNAL (Sr.), Director de Signos Distintivos, Dirección de Signos
Distintivos, Superintendencia de Industria y Comercio (SIC), Ministerio de Industria, Comercio yTurismo, Bogotá D.C.
jmateus@sic.gov.co
Catalina CARRILLO RAMÍREZ (Sra.), Abogada, Consejera Principal, Superintendencia deIndustria y Comercio (SIC), Ministerio de Industria, Comercio y Turismo, Bogotá D.C.
ccarrillor@sic.gov.co
Primitivo BOLAÑOS REINOSO (Sr.), Abogado, Protocolo de Madrid, Dirección de Signos
Distintivos, Superintendencia de Industria y Comercio (SIC), Ministerio de Industria, Comercio yTurismo, Bogotá D.C.
pbolanos@sic.gov.co
Yesid Andrés SERRANO ALARCÓN (Sr.), Tercer Secretario, Misión Permanente, Ginebra
CROATIE/CROATIA
Dušan VOJNOVIĆ (Mr.), Senior Trademark Examiner, Trademarks and Industrial Designs
Department, State Intellectual Property Office of the Republic of Croatia (SIPO), Zagreb
dvojnovic@dziv.hr
CUBA
María de los Ángeles SÁNCHEZ TORRES (Sra.), Directora General, Oficina Cubana de laPropiedad Industrial (OCPI), Ministerio de Ciencia, Tecnología y Medio Ambiente, La Habana
maria@ocpi.cu
Maylen MARCOS MARTÍNEZ (Sra.), Jefa, Departamento de Marcas, Oficina Cubana de laPropiedad Industrial (OCPI), Ministerio de Ciencia, Tecnología y Medio Ambiente, La Habana
maylen@ocpi.cu
DANEMARK/DENMARK
Christian HELTØ (Mr.), Legal Advisor, Danish Patent and Trademark Office, Ministry ofIndustry, Business and Financial Affairs, Taastrup
jhl@dkpto.dk

MM/LD/WG/18/10
Annex IV, page 6
ESPAGNE/SPAIN
Juan UCEDA (Sr.), Jefe de Servicio, Oficina Española de Patentes y Marcas (OEPM),
Ministerio de Industria, Comercio y Turismo, Madrid
juan.uceda@oepm.es
Marta BOSCH PEÑAFIEL (Sra.), Técnica Superior, Oficina Española de Patentes y
Marcas (OEPM), Ministerio de Industria, Comercio y Turismo, Madridmarta.bosch@oepm.es
ESTONIE/ESTONIA
Janika KRUUS (Ms.), Chief Examiner, Trademark Department, the Estonian Patent Office,Tallinnjanika.kruus@epa.ee
ÉTATS-UNIS D'AMÉRIQUE/UNITED STATES OF AMERICA
Attiya MALIK (Ms.), Attorney-Advisor, Office of Policy and International Affairs, United States
Patent and Trademark Office (USPTO), Department of Commerce, Alexandria
attiya.malik@uspto.gov
Kelly CHOE (Ms.), Attorney-Advisor, Office of the Deputy Commissioner for Trademark
Examination Policy, United States Patent and Trademark Office (USPTO),
Department of Commerce, Alexandria
kelly.choe@uspto.gov
Debra LEE (Ms.), Attorney-Advisor, United States Patent and Trademark Office (USPTO),
Department of Commerce, Alexandria
debra.lee@uspto.gov
Marina LAMM (Ms.), Intellectual Property Attaché, Multilateral Economic and Political Affairs,
Permanent Mission, GenevaFÉDÉRATION DE RUSSIE/RUSSIAN FEDERATION
Nikita ZHUKOV (Mr.), Deputy Permanent Representative, Permanent Mission, Geneva
Larisa BORODAY (Ms.), Head, International Registration Systems Department, Federal Instituteof Industrial Property (FIPS), Federal Service for Intellectual Property (ROSPATENT), Moscow
larisa.boroday@rupto.ru
Evgeniia KOROBENKOVA (Ms.), Lead Specialist, Multilateral Cooperation Department,
Federal Service for Intellectual Property (ROSPATENT), Moscow
rospat198@rupto.ru
Zara GADZHIEVA (Ms.), Specialist-Expert, International Cooperation Department, Federal
Service for Intellectual Property (ROSPATENT), Moscow
zaragzh@mail.ru
Maria RYAZANOVA (Ms.), First Secretary, Permanent Mission, Geneva

MM/LD/WG/18/10
Annex IV, page 7
FINLANDE/FINLAND
Pirjo ARO-HELANDER (Ms.), Head of Division, Finnish Patent and Registration Office (PRH),
Ministry of Economic Affairs and Employment of Finland, Helsinki
pirjo.aro-helander@prh.fi
Noora LAINE (Ms.), Expert, Finnish Patent and Registration Office (PRH), Ministry of Economic
Affairs and Employment of Finland, Helsinki
noora.laine@prh.fi
FRANCE
Élise BOUCHU (Mme), chargée de mission, Institut national de la propriété industrielle (INPI),
Courbevoie
Josette HERESON (Mme), conseillère, Mission permanente, Genève
GÉORGIE/GEORGIA
Medea TCHITCHINADZE (Ms.), Head, Trademarks, Geographical Indications and Designs
Department, National Intellectual Property Center (SAKPATENTI), Mtskheta
dchichinadze@sakpatenti.org.ge
GHANA
Cynthia ATTUQUAYEFIO (Ms.), Minister-Counsellor, Permanent Mission, GenevaGRÈCE/GREECE
Dimitrios GIAGTZIDIS (Mr.), Trademarks Examiner, Directorate of Trademarks, Ministry of
Economy and Development, Athens
HONGRIE/HUNGARY
Gabriella KISS (Ms.), Head, International Trademark Section, Hungarian Intellectual Property
Office (HIPO), Budapest
gabriella.kiss@hipo.gov.hu
Eszter KOVACS (Ms.), Legal Officer, Industrial Property Law Section, Hungarian Intellectual
Property Office (HIPO), Budapest
eszter.kovacs@hipo.gov.huMM/LD/WG/18/10
Annex IV, page 8
INDE/INDIA
Ram Awtar TIWARI (Mr.), Deputy Registrar of Trademarks and Geographical Indications, Officeof the Controller General of Patents Designs and Trademarks, Department for Promotion ofIndustry and Internal Trade, Ministry of Commerce and Industry, Mumbai
ra.tiwari@nic.in
Dipmala MATHAPATI (Ms.), Senior Examiner of Trademarks and Geographical Indications,
Office of the Controller General of Patents Designs and Trademarks, Department for Promotionof Industry and Internal Trade, Ministry of Commerce and Industry, Mumbai
dipmala.tmr@nic.in
INDONÉSIE/INDONESIA
Indra ROSANDRY (Mr.), Minister Counsellor, Permanent Mission, Geneva
indra.rosandry@kemlu.go.id
Ditya Agung NURDIANTO (Mr.), Counsellor, Permanent Mission, Geneva
ditya.nurdianto@mission-indonesia.org
Nara Masista RAKHMATIA (Ms.), First Secretary, Permanent Mission, Geneva
nara.masista@mission-indonesia.org
IRAN (RÉPUBLIQUE ISLAMIQUE D')/IRAN (ISLAMIC REPUBLIC OF)
Reza DEHGHANI (Mr.), Counsellor, Permanent Mission, Geneva
ISLANDE/ICELAND
Margrét HJÁLMARSDÓTTIR (Ms.), Head of Legal Affairs, Icelandic Intellectual Property
Office (ISIPO), Reykjavikmargret@isipo.is
Hanna L. KARLSDÓTTIR (Ms.), Senior Legal Advisor, Icelandic Intellectual Property
Office (ISIPO), Reykjavik
hanna@isipo.isISRAËL/ISRAEL
Anat LEVY (Ms.), Head, Director, Trademarks Department, Israel Patent Office (ILPO),
Ministry of Justice, Jerusalem
anatn2@justice.gov.il
Merav BARON (Ms.), Senior Trademark Examiner, Trademarks Department, Israel Patent
Office (ILPO), Ministry of Justice, Jerusalem
meravbar@justice.gov.il
Tamara SZNAIDLEDER (Ms.), Advisor, Permanent Mission, Geneva

MM/LD/WG/18/10
Annex IV, page 9
ITALIE/ITALY
Bruna GIOIA (Ms.), Officer, Directorate General for the Protection of Industrial Property,
Italian Patent and Trademark Office (UIBM), Ministry of Economic Development, Rome
Tiziana ZUGLIANO (Ms.), Attaché, Permanent Mission, Geneva
JAPON/JAPANENOMOTO Fumio (Mr.), Deputy Director, International Policy Division, Japan Patent
Office (JPO), Ministry of Economy, Trade and Industry, Tokyo
HAYASHIDA Yuko (Ms.), Deputy Director, Trademark Division, Japan Patent Office (JPO),
Ministry of Economy, Trade and Industry, Tokyo
KONNO Chikako (Ms.), Deputy Director, Office for International Design Applications under
the Geneva Act of the Hague Agreement and International Trademark Applications under
the Madrid Protocol, Japan Patent Office (JPO), Ministry of Economy, Trade and Industry,Tokyo
MUNAKATA Tetsuya (Mr.), Assistant Director, International Policy Division, Japan Patent
Office (JPO), Ministry of Economy, Trade and Industry, Tokyo
TSURUWA Mei (Ms.), Assistant Director, Office for International Design Applications under
the Geneva Act of the Hague Agreement and International Trademark Applications under
the Madrid Protocol, Japan Patent Office (JPO), Ministry of Economy, Trade and Industry,Tokyo
NAITO Takahito (Mr.), Specialist for Trademark Planning, Trademark Division, Japan Patent
Office (JPO), Ministry of Economy, Trade and Industry, Tokyo
UEJIMA Hiroki (Mr.), First Secretary, Permanent Mission, Geneva
KAZAKHSTAN
Manshuk ABILMAZHINOVA (Ms.), Head of Division on Examination of International
Trademarks, Department of Trademarks, Appellations of Origin and Industrial Designs,
National Institute of Intellectual Property, Ministry of Justice of the Republic of Kazakhstan,
Nur-Sultan
Aibek OMAROV (Mr.), Acting Head, Division of International Law and Cooperation,
National Institute of Intellectual Property, Ministry of Justice of the Republic of Kazakhstan,
Nur-Sultan
Kulparan DYUSSENBAYEVA (Ms.), Chief Examiner of International Trademarks,
Department of Trademarks, Appellations of Origin and Industrial Designs, National Instituteof Intellectual Property, Ministry of Justice of the Republic of Kazakhstan, Nur-Sultan
Mira ERMEKOVA (Ms.), Chief Examiner, Department of Trademarks, Appellations of Origin
and Industrial Designs, National Institute of Intellectual Property, Ministry of Justice of
the Republic of Kazakhstan, Nur-Sultan
Daniyar KAKIMOV (Mr.), Chief Specialist, National Institute of Intellectual Property,
Ministry of Justice of the Republic of Kazakhstan, Nur-Sultan

MM/LD/WG/18/10
Annex IV, page 10
Akerke KUNGAZYKYZY (Ms.), Chief Examiner of International Trademarks,
Department of Trademarks, Appellations of Origin and Industrial Designs, National Instituteof Intellectual Property, Ministry of Justice of the Republic of Kazakhstan, Nur-Sultan
Saule MOLDABEK (Mr.), Chief Specialist, National Institute of Intellectual Property,
Ministry of Justice of the Republic of Kazakhstan, Nur-Sultan
Eldar ZHAHIN (Mr.), Chief Examiner, Department of Trademarks, Appellations of Origin
and Industrial Designs, National Institute of Intellectual Property, Ministry of Justiceof the Republic of Kazakhstan, Nur-Sultan
Diana ASSILBEKOVA (Ms.), Senior Examiner of International Trademarks,
Department of Trademarks, Appellations of Origin and Industrial Designs, National Instituteof Intellectual Property, Ministry of Justice of the Republic of Kazakhstan, Nur-Sultan
Diliya CHANYSHEVA (Ms.), Senior Examiner, Department of Trademarks, Appellationsof Origin and Industrial Designs, National Institute of Intellectual Property of the Ministryof Justice of the Republic of Kazakhstan, Nur-Sultan
Gulnaz HAMZINA (Ms.), Senior Examiner, Department of Trademarks, Appellations of Origin
and Industrial Designs, National Institute of Intellectual Property of the Ministry of Justiceof the Republic of Kazakhstan, Nur-Sultan
Dina KABYKENOVA (Ms.), Senior Examiner of International Trademarks,
Department of Trademarks, Appellations of Origin and Industrial Designs, National Instituteof Intellectual Property, Ministry of Justice of the Republic of Kazakhstan, Nur-Sultan
Akezhan AMANGELDIN (Ms.), Examiner of International Trademarks, Department ofTrademarks, Appellations of Origin and Industrial Designs, National Institute of Intellectual
Property, Ministry of Justice of the Republic of Kazakhstan, Nur-Sultan
Mahat KENESBAYEV (Mr.), Expert, Department of Trademarks, Appellations of Origin
and Industrial Designs, National Institute of Intellectual Property of the Ministry of Justiceof the Republic of Kazakhstan, Nur-Sultan
Nurdaulet YERBOL (Mr.), Specialist, Division of International Law and Cooperation,
National Institute of Intellectual Property, Ministry of Justice of the Republic of Kazakhstan,
Nur-Sultan
KIRGHIZISTAN/KYRGYZSTAN
Almaz YKTYBAEV (Mr.), Head, International Relations Division, State Service of Intellectual
Property and Innovation under the Government of the Kyrgyz Republic (Kyrgyzpatent), Bishkek
almaz.yktybaev@patent.kg
Sulpukor OMOKEEV (Mr.), Trademark Examination Department, State Service of Intellectual
Property and Innovation under the Government of the Kyrgyz Republic (Kyrgyzpatent), Bishkek
sulpukor.omokeev@patent.kg

MM/LD/WG/18/10
Annex IV, page 11
LESOTHO
Mmari MOKOMA (Mr.), Counsellor, Permanent Mission, Geneva
LETTONIE/LATVIA
Baiba GRAUBE (Ms.), Director, Department of Trademarks and Industrial Designs,
Patent Office of the Republic of Latvia, Riga
Ilze KORTE (Ms.), Head, Division of Examination, Patent Office of the Republic of Latvia, Riga
LITUANIE/LITHUANIA
Rasa BASIUL (Ms.), Examiner, Trade Marks and Designs Division, State Patent Bureau of the
Republic of Lithuania, Vilnius
rasa.basiul@vpb.gov.lt
Asta DAPKĖ (Ms.), Examiner, Trade Marks and Designs Division, State Patent Bureauof the Republic of Lithuania, Vilnius
asta.dapke@vpb.gov.lt
Rasa SVETIKAITĖ (Ms.), Justice and Intellectual Property Attaché, Permanent Mission, Geneva
rasa.svetikaite@urm.lt
MADAGASCARSalohy RAKOTONDRAJERY RANDRIANARISOA (Mme), directrice générale,
Direction générale des affaires judiciaires, des études et des réformes, Ministère de la justice,
Antananarivo
Nadia Volatiana RAKOTOMALALA (Mme), directrice, Direction des études et des réformes,
Ministère de la Justice, Antananarivo
nadiarktm@gmail.com
Nirina LAZA (Mme), vice-présidente, Tribunal de première instance d’Antananarivo,
Ministère de la Justice, Antananarivo
Elysée RASOAHANTA (Mme), premier substitut du procureur de la République,
Tribunal de première instance d’Antanarivo, Ministère de la Justice, Antananarivo
Nirihanta RAJOHSON (Mme), Direction générale des affaires judiciaires, des études etdes réformes, Ministère de la justice, Antananarivo
Anja Valisoa RABARISON (M.), Ministère de la justice, Antananarivo
Harimalala Tatiana RAMAROSON (Mme), cheffe, Division des relations multilatérales,
Office malgache de la propriété industrielle (OMAPI), Ministère de l’industrie, du commerce
et de l’artisanat, Antananarivo
Jane Roberta RAMBELOARISON (Mme), cheffe, Division des organisations financièreset techniques, Ministère des affaires étrangères, Antananarivo
rambeloarisonjr@gmail.com

MM/LD/WG/18/10
Annex IV, page 12
Mathilde Manitra RAHARINONY (Mme), cheffe, Service de l’enregistrement internationaldes marques, Office malgache de la propriété industrielle (OMAPI), Ministère de l’industrie,
du commerce et de l’artisanat, Antananarivo
marques.int.omapi@moov.mg
Onisoa Lalao RANDRIANARIMANANA (Mme), assistante auprès du Service desenregistrements internationaux, Office malgache de la propriété industrielle (OMAPI),
Ministère de l’industrie, du commerce et de l’artisanat, Antananarivo
onisoa.randrianarimanana@omapi.mg
Solofo Nantoanina RAVALIARIJAONA (M.), assistant auprès de la Coordination juridique,
Office malgache de la propriété industrielle (OMAPI), Ministère de l’industrie, du commerce etde l’artisanat, Antananarivo
nantoaninasolofo@gmail.com
Tivo Hely RASAMIMANANA (M.), conseiller, Mission permanente, Genève
Vola Miray RAMIHAROSOA (Mme), stagiaire, Mission permanente, Genève
MALAISIE/MALAYSIA
Zaiton HARIS (Ms.), Assistant Registrar, Intellectual Property Corporation of Malaysia (MyIPO),
Ministry of Domestic Trade and Consumer Affairs, Kuala Lumpur
zaitonh@myipo.gov.my
Nur Mazian MAT TAHIR (Ms.), Assistant Director, Policy and International Affairs Division,
Intellectual Property Corporation of Malaysia (MyIPO), Ministry of Domestic Tradeand Consumer Affairs, Kuala Lumpur
Iylia HASHIM (Ms.), Legal Officer, Legal Division, Intellectual Property Corporationof Malaysia (MyIPO), Ministry of Domestic Trade and Consumer Affairs, Kuala Lumpur
iylia@myipo.gov.my
Muhammad Azfar AB. MALEK (Mr.), Intellectual Property Officer, Policy and International Affairs
Division, Intellectual Property Corporation of Malaysia (MyIPO), Ministry of Domestic Tradeand Consumer Affairs, Kuala Lumpur
azfar@myipo.gov.my
Zaitilakhtar Binti MOHAMED YUNUS (Ms.), Intellectual Property Officer, Trademarks,
Intellectual Property Corporation of Malaysia (MyIPO), Ministry of Domestic Tradeand Consumer Affairs, Kuala Lumpur
Nur Azureen MOHD PISTA (Ms.), First Secretary, Permanent Mission, Geneva
MALAWI
Chikumbutso NAMELO (Mr.), Registrar General, Department of the Registrar General,
Ministry of Justice and Constitutional Affairs, Blantyre
chiku.namelo@registrargeneral.gov.mw

MM/LD/WG/18/10
Annex IV, page 13
MAROC/MOROCCO
Mouna KARIE (Mme), cheffe, Service marques, Département d’examen des signes distinctifs,
Office marocain de la propriété industrielle et commerciale (OMPIC), Casablanca
karie@ompic.ma
Khalid DAHBI (M.), conseiller, Mission permanente, Genève
MEXIQUE/MEXICO
Pedro Damián ALARCÓN ROMERO (Sr.), Subdirector Divisional de Procesamiento
Administrativo de Marcas, Dirección Divisional de Marcas, Instituto Mexicano de la Propiedad
Intelectual (IMPI), Cuidad de México
damian.alarcon@impi.gob.mx
Rubén MARTÍNEZ CORTE (Sr.), Especialista en Propiedad Intelectual, Dirección Divisionalde Relaciones Internacionales, Instituto Mexicano de la Propiedad Industrial (IMPI),
Ciudad de México
ruben.martinez@impi.gob.mx
Hosanna MORA GONZÁLEZ (Sra.), Coordinadora Departamental de Asuntos Multilaterales,
Dirección Divisional de Relaciones Internacionales, Instituto Mexicano de la Propiedad
Intelectual (IMPI), Cuidad de México
hosanna.mora@impi.gob.mx
María del Pilar ESCOBAR BAUTISTA (Sra.), Consejera, Misión Permanente, Ginebra
pescobar@sre.gob.mx
MONGOLIE/MONGOLIA
Oyuntsetsen BADARCH (Ms.), Examiner, Intellectual Property Office, Ministry of Justice andHome Affairs, Ulaanbaatar
MONTÉNÉGRO /MONTENEGRO
Milka SLJIVANCANIN (Ms.), Senior Advisor, Department for Intellectual Property, Directorate
for Internal Market and Competition, Ministry of Economy, Podgorica
NAMIBIE/NAMIBIA
Vivienne E. KATJIUONGUA (Ms.), Chief Executive Officer, Business and Intellectual Property
Authority (BIPA), Ministry of Industrialization and Trade (MIT), Windhoek
vivienne@bipa.na
Ainna V. KAUNDU (Ms.), Executive, Intellectual Property Registration Services, Business andIntellectual Property Authority (BIPA), Ministry of Industrialization and Trade (MIT), Windhoek
kaundu@bipa.na

MM/LD/WG/18/10
Annex IV, page 14NORVÈGE/NORWAY
Pål LEFSAKER (Mr.), Senior Legal Advisor, Design and Trademark Department,
Norwegian Industrial Property Office (NIPO), Oslo
ple@patentstyret.no
Rikke LØVSJØ (Ms.), Senior Legal Advisor, Design and Trademark Department,
Norwegian Industrial Property Office (NIPO), Osloril@patentstyret.no
NOUVELLE-ZÉLANDE/NEW ZEALAND
Steffen GAZLEY (Mr.), Hearings Manager, Intellectual Property Office of New Zealand (IPONZ),
Ministry of Business, Innovation and Employment, Wellington
steffen.gazley@iponz.govt.nz
Rebecca JAMES (Ms.), Manager, Trade Marks and Geographical Indications,Intellectual Property Office of New Zealand (IPONZ), Ministry of Business,
Innovation and Employment, Wellington
rebecca.james@iponz.govt.nz
OMAN
Hilda AL HINAI (Ms.), Deputy Permanent Representative, Permanent Mission to the World
Trade Organization (WTO), Geneva
Ali AL MAMARI (Mr.), Director, Department of Intellectual Property, Ministry of Commerce,
Industry and Investment Promotion, Muscat
Badriya AL RAHBI (Ms.), Head, Trademarks and Geographical Indications Section, Intellectual
Property Department, Ministry of Commerce Industry, and Investment Promotion, Muscat
ORGANISATION AFRICAINE DE LA PROPRIÉTÉ INTELLECTUELLE (OAPI)/AFRICANINTELLECTUAL PROPERTY ORGANIZATION (OAPI)
Jacqueline Taylord HELIANG (Mme), cheffe, Service des marques, Yaoundé
Sidonie FOUDA (Mme), juriste, examinatrice (marques), Service des marques, Yaoundé
sidonie.fouda@oapi.int
Sonia TEKAM (Mme), juriste, Yaoundé
sonia.tekam@oapi.int
Moise Stéphane AFANA MEDANG (M.), examinateur (marques), Service des marques,
Yaoundéstephane.afanam@oapi.int
OUZBÉKISTAN/UZBEKISTAN
Jakhongir MANSUROV (Mr.), Head, Trademarks and Appellations of Origins Department,
Agency on Intellectual Property under the Ministry of Justice of the Republic of Uzbekistan,
Tashkentj.mansurov@ima.uz

MM/LD/WG/18/10
Annex IV, page 15
PHILIPPINES
Valerie Laura MARQUINA (Ms.), Head, Madrid Unit, Intellectual Property Rights Specialist III,
Bureau of Trademarks, Intellectual Property Office of the Philippines (IPOPHL), Taguig City
valerie.marquina@ipophil.gov.ph
Kristinne Dianne VILORIA (Ms.), Senior Consultant, Policy and International Affairs Office,Intellectual Property Office of the Philippines (IPOPHL), Taguig City
kristinne.viloria@ipophil.gov.ph
POLOGNE/POLAND
Ala GRYGIEŃĆ-EJSMONT (Ms.), Expert, Trademark Department, Patent Office of
the Republic of Poland, Warsaw
ala.grygienc-ejsmont@uprp.gov.pl
Ewa MROCZEK (Ms.), Expert, Receiving Department, Patent Office of the Republic of Poland,
Warsaw
ewa.mroczek@uprp.gov.pl
PORTUGAL
Ana Cristina FERNANDES (Ms.), Jurist, Legal Relations Department, Portuguese Institute ofIndustrial Property (INPI), Ministry of Justice, Lisbon
Francisco SARAIVA (Mr.), Counsellor, Permanent Mission, Geneva
RÉPUBLIQUE ARABE SYRIENNE/SYRIAN ARAB REPUBLIC
Reem ABID (Ms.), Head, International Trademarks Registration, Trademark Department,
Directorate of Industrial and Commercial Property Protection (DCIP), Ministry of Internal Tradeand Consumer Protection, Damascus
Mohamadia ALNASAN (Ms.), Counsellor, Permanent Mission, Geneva
mohamadia.alnasan.7@gmail.com
RÉPUBLIQUE DE CORÉE/REPUBLIC OF KOREALEE Jumi (Ms.), Deputy Director, Korean Intellectual Property Office (KIPO), Daejeon
KANG Seung-Gu (Mr.), Deputy Director, Trademark Examination Policy Division,
Korean Intellectual Property Office (KIPO), Daejeon
seraphwing@korea.kr
KIM Insook (Ms.), Examiner, International Application Division, Korean Intellectual Property
Office (KIPO), Daejeon
PARK Si-Young (Mr.), Counsellor, Permanent Mission, Geneva

MM/LD/WG/18/10
Annex IV, page 16
RÉPUBLIQUE DE MOLDOVA/REPUBLIC OF MOLDOVANatalia MOGOL (Mme), vice-directrice générale, Agence nationale de la propriété
intellectuelle (AGEPI), Chisinau
natalia.mogol@agepi.gov.md
Ludmila COCIERU (Mme), cheffe, Section marques internationales, Direction marques etmodèles industriels, Agence nationale de la propriété intellectuelle (AGEPI), Chisinau
ludmila.cocieru@agepi.gov.md
Galina BOLOGAN (Mme), consultante principale, Agence nationale de la propriété
intellectuelle (AGEPI), Chisinau
galina.bologan@agepi.gov.md
RÉPUBLIQUE TCHÈQUE/CZECH REPUBLIC
Zlatuše BRAUNŠTEINOVÁ (Mme), examinatrice, Département des marques internationales,
Office de la propriété industrielle, Prague
Petr FIALA (M.), troisième secrétaire, Mission permanente, Genève
ROYAUME-UNI/UNITED KINGDOM
Jeff LLOYD (Mr.), Head, International Trade Mark and Design Policy, UK Intellectual Property
Office (UK IPO), Newport
jeff.lloyd@ipo.gov.uk
Gareth WOODMAN (Mr.), Senior Trade Mark Examiner, Trade Mark Operations, UK Intellectual
Property Office (UK IPO), Newport
gareth.woodman@ipo.gov.uk
Melanie OLIVER (Ms.), Examiner Technical Lead, Trade Mark Operations, UK Intellectual
Property Office (UK IPO), Newportmelanie.oliver@ipo.gov.uk
Jan WALTER (Mr.), Senior Intellectual Property Advisor, Permanent Mission, Geneva
jan.walter@fcdo.gov.uk
Nancy PIGNATARO (Ms.), Intellectual Property Attaché, Permanent Mission, Geneva
nancy.pignataro@fcdo.gov.uk
RWANDA
Yvette TUMUKUNDE (Ms.), Intellectual Property Registration and Promotion Analyst, Office of
the Registrar General, Rwanda Development Board (RDB), Kigali
yvette.tumukunde@rdb.rw
Marie-Providence UMUTONI HIBON (Ms.), Counsellor and Multilateral Officer, Permanent
Mission to the World Trade Organization (WTO), Geneva
pumutoni@embassy.gov.rw

MM/LD/WG/18/10
Annex IV, page 17
SAO TOMÉ-ET-PRINCIPE/SAO TOME AND PRINCIPE
Elga DOS SANTOS FERNANDES DE SOUSA SANTIAGO (Ms.), Trademarks Examiner,
Trademarks Department, National Intellectual Property and Quality Service (SENAPIQ-STP),
Secretary of State, Trade and Industry, Ministry of Tourism, Culture, Commerce and Industry,
Sao Tome
elgasousa2011@hotmail.com
Luiz Manuel GAMBOA DA SILVA (M.), Trademark Examiner, Trademarks Department,
National Intellectual Property and Quality Service (SENAPIQ-STP), Secretary of State, Tradeand Industry, Ministry of Tourism, Culture, Commerce and Industry, Sao Tomelumagasilva7@gmail.com
SINGAPOUR/SINGAPORE
Isabelle TAN (Ms.), Director, Registry of Trade Marks, Intellectual Property Officeof Singapore (IPOS), Singapore
isabelle_tan@ipos.gov.sg
Constance LEE (Ms.), Principal Trade Mark Examiner, Registry of Trade Marks, Intellectual
Property Office of Singapore (IPOS), Singapore
Gladys SIM (Ms.), Trade Mark Examiner, Intellectual Property Office of Singapore (IPOS),
Singaporegladys_sim@ipos.gov.sg
Benjamin TAN (Mr.), Counsellor, Permanent Mission to the World Trade Organization (WTO),
GenevaSLOVAQUIE/SLOVAKIA
Eva KOKAVCOVÁ (Ms.), Expert, Trademarks, Industrial Property Office of the Slovak Republic,
Banská Bystrica
eva.kokavcova@indprop.gov.sk
Janka ORAVCOVÁ (Ms.), Expert, Industrial Property Office of the Slovak Republic, Banská
Bystrica
janka.oravcova@indprop.gov.sk
SLOVÉNIE/SLOVENIA
Saša POLC (Mr.), Senior Trademark Examiner, Trademark and Design Department,
Slovenian Intellectual Property Office (SIPO), Ministry of Economic Development
and Technology, Ljubljanas.polc@uil-sipo.si
Amalia KOCJAN (Ms.), Trademark Examiner, Trademark and Design Department,
Slovenian Intellectual Property Office (SIPO), Ministry of Economic Development andTechnology, Ljubljana
amalia.kocjan@uil-sipo.siMM/LD/WG/18/10
Annex IV, page 18
SOUDAN/SUDAN
Iman ATABANI (Ms.), Registrar General of Intellectual Property, Office of Registrar Generalof Intellectual Property (IPO-SUDAN), Ministry of Justice, Khartoum
iman.atabani.58@gmail.com
Sahar Mohammed Isshag GASMELSEED (Ms), Third Secretary, Permanent Mission, GenevaSUÈDE/SWEDEN
Martin BERGER (Mr.), Legal Advisor, Design and Trademark Department, Swedish Intellectual
Property Office (PRV), Söderhamn
martin.berger@prv.se
Kristian BLOCKENS (Mr.), Legal Officer, Design and Trademark Department, Swedish
Intellectual Property Office (PRV), Söderhamn
kristian.blockens@prv.se
SUISSE/SWITZERLAND
Charlotte BOULAY (Mme), conseillère juridique, Division du droit et des affaires internationales,
Institut fédéral de la propriété intellectuelle (IPI), Berne
Tanja JÖRGER (Mme), conseillère juridique, Division du droit et des affaires internationales,
Institut fédéral de la propriété intellectuelle (IPI), Berne
Julie POUPINET (Mme), juriste, Division des marques, Institut fédéral de la propriété
intellectuelle (IPI), Berne
Sébastien TINGUELY (M.), coordinateur (marques internationales), Division des marques,
Institut fédéral de la propriété intellectuelle (IPI), Berne
TADJIKISTAN/TAJIKISTAN
Parviz MIRALIEV (Mr.), Deputy Director, National Center for Patents and Information, Ministryof Economic Development and Trade of the Republic of Tajikistan (NCPI), Dushanbe
parviz.info@gmail.com

MM/LD/WG/18/10
Annex IV, page 19THAÏLANDE/THAILAND
Pornpimol SUGANDHAVANIJA (Ms.), Minister, Deputy Permanent Representative,
Permanent Mission to the World Trade Organization (WTO), Geneva
pornpimol@thaiwto.com
Navarat TANKAMALAS (Ms.), Minister Counsellor, Permanent Mission to the World Trade
Organization (WTO), Geneva
navarat@thaiwto.com
Chayaknit KANCHANAKAROON (Ms.), Trade Officer, Trademark Registrar for International
Trademark Registration Application, Department of Intellectual Property (DIP), Ministry ofCommerce, Nonthaburichayaknit@gmail.com
Nutcha SOOKCHAYEE (Ms.), Trademark Registrar, Madrid Group, Department of Intellectual
Property (DIP), Ministry of Commerce, Nonthaburi
TRINITÉ-ET-TOBAGO/TRINIDAD AND TOBAGO1
Lyrinda PERSAUD (Ms.), Legal Counsel I, Intellectual Property Office, Ministry of the Attorney
General and Legal Affairs, Port of Spainlyrinda.persaud@ipo.gov.tt
Sarah JAGESAR (Ms.), Trademark Operation Administrator Madrid, Trademark Unit,Intellectual Property Office, Ministry of the Attorney General and Legal Affairs, Port of Spainsarah25_1989@outlook.com
Tiffany ROBERTS (Ms.), Trademark Operations Officer, Intellectual Property Office,Ministry of the Attorney General and Legal Affairs, Port of Spain
shannellroberts89@gmail.com
Anelia BAIJOO (Ms.), Trademark Systems Specialist, Madrid Trademark Examiner,Intellectual Property Office, Ministry of the Attorney General and Legal Affairs, Port of Spainanelia.baijoo@ipo.gov.tt
Steffi MOHAMMED (Ms.), Trademark Systems Specialist, Madrid Trademark Examiner,Intellectual Property Office, Ministry of the Attorney General and Legal Affairs, Port of Spainsteffi.mohammed@ipo.gov.tt

1

Le 12 octobre 2020, le Gouvernement de la Trinité-et-Tobago a déposé son instrument d’adhésion
au Protocole relatif à l’Arrangement de Madrid concernant l’enregistrement international des marques. Le Protocole
de Madrid entrera en vigueur à l’égard de la Trinité-et-Tobago, le 12 janvier 2021.
*
On October 12, 2020, the Government of Trinidad and Tobago deposited its instrument of accession to
the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. The MadridProtocol will enter into force with respect to Trinidad and Tobago, on January 12, 2021.

MM/LD/WG/18/10
Annex IV, page 20
TUNISIE/TUNISIA
Rihad SOUSSI (M.), directeur général, Institut national de la normalisation et de la propriété
industrielle (INNORPI), Tunis
TURKMÉNISTAN/TURKMENISTAN
Dovletmyrat TORAYEV (Mr.), Attaché, Permanent Mission, Geneva
TURQUIE/TURKEY
Mustafa Kubilay GÜZEL (Mr.), Head, Trademarks Department, Turkish Patent and Trademark
Office (TURKPATENT), Ankara
mustafa.guzel@turkpatent.gov.tr
Erman VATANSEVER (Mr.), Expert, Trademarks Department, Turkish Patent and Trademark
Office (TURKPATENT), Ankara
erman.vatansever@turkpatent.gov.tr
UKRAINE
Andriy NIKITOV (Mr.), First Secretary, Permanent Mission, Geneva
andriy.nikitov@mfa.gov.ua
UNION EUROPÉENNE (UE)/EUROPEAN UNION (EU)Asta LUKOSIUTE (Ms.), Head, Legal Practice Service, International Cooperation and Legal
Affairs Department, European Union Intellectual Property Office (EUIPO), Alicanteasta.lukosiute@euipo.europa.eu
Soraya BERNARD (Ms.), Project Manager Specialist, International Cooperation and Legal
Affairs Department, European Union Intellectual Property Office (EUIPO), Alicante
Soraya.BERNARD@euipo.europa.eu
Susana PALMERO (Ms.), Expert, International Cooperation and Legal Affairs Department,
European Union Intellectual Property Office (EUIPO), Alicantesusana.palmero@euipo.europa.eu
Myriam TABURIAUX (Ms.), Senior Examiner, Operations Department, European Union
Intellectual Property Office (EUIPO), Alicante
myriam.taburiaux@euipo.europa.eu
Patricia LOPEZ LOPEZ (Ms.), Intellectual Property Assistant, Operations Department,
European Union Intellectual Property Office (EUIPO), Alicantepetra.lopez@euipo.europa.eu
Oscar MONDEJAR ORTUNO (Mr.), First Counsellor, Permanent Mission, Geneva
Pascal DELISLE (Mr.), Counsellor, Permanent Mission, Geneva

MM/LD/WG/18/10
Annex IV, page 21
VIET NAM
DAO Nguyen (Mr.), Second Secretary, Permanent Mission, Geneva
ZIMBABWE
Willie MUSHAYI (Mr.), Deputy Chief Registrar, Zimbabwe Intellectual Property Office (ZIPO),
Ministry of Justice, Legal and Parliamentary Affairs, Harare
wmushayi@gmail.com
Melody TANGA (Ms.), Principal Examiner, Zimbabwe Intellectual Property Office (ZIPO),
Ministry of Justice, Legal and Parliamentary Affairs, Harare
mldytanga@gmail.com
Tanyaradzwa Milne MANHOMBO (Mr.), Counsellor, Permanent Mission, Geneva
tanyamilne2000@yahoo.co.uk

II.

OBSERVATEURS/OBSERVERS

1.

ÉTATS MEMBRES DE L’OMPI/WIPO MEMBER STATESARABIE SAOUDITE/SAUDI ARABIA
Shayea Ali ALSHAYEA (Mr.), Advisor, Office of the Chief Executive Officer, Saudi Authority forIntellectual Property (SAIP), Riyadh
sshayea@saip.gov.sa
Mashael ALHAWTI (Ms.), Senior Legislative and Regulations Analyst, Saudi Authority forIntellectual Property (SAIP), Riyadh
Heba ALSHIBANI (Ms.), Senior Trademark Examiner, Trademarks and Industrial Designs,
Saudi Authority for Intellectual Property (SAIP), Riyadh
hshibani@saip.gov.sa
Abdullatif ALALSHEKH (Mr.), First Secretary, Permanent Mission, Geneva
ungeneva@hotmail.com
BANGLADESH
Md. Mahabubur RAHMAN (Ms.), First Secretary, Permanent Mission, Geneva
mahabub31@mofa.gov.bd
EL SALVADOR
Diana HASBUN (Sra.), Ministra Consejera, Misión Permanente ante la Organización Mundial
del Comercio (OMC), Ginebra

MM/LD/WG/18/10
Annex IV, page 22
ÉMIRATS ARABES UNIS/UNITED ARAB EMIRATES
Shaima AL-AKEL (Ms.), International Organizations Executive, Permanent Mission to the World
Trade Organization (WTO), Geneva
ÉTHIOPIE/ETHIOPIA
Girma Bejiga SENBETA (Mr.), Special Advisor to the Director General, Ethiopian Intellectual
Property Office (EIPO), Addis Ababa
Tebikew ALULA (Mr.), Third Secretary, Permanent Mission, Geneva
tebkterefe@gmail.com
JORDANIE/JORDAN
Akram HARAHSHEH (Mr.), Counsellor, Deputy Permanent Representative, Permanent Mission,
Genevaakram.h@fm.gov.joKOWEÏT/KUWAIT
Abdulaziz TAQI (Mr.), Commercial Attaché, Permanent Mission, Geneva
MYANMARAye Thiri WAI (Ms.), Director, Intellectual Property Department, Ministry of Commerce,
Nay Pyi Taw
ms.ayethiriwai@gmail.com
Seint THANDA TUN (Ms.), Director, Trademark Section, Intellectual Property Department,
Ministry of Commerce, Nay Pyi Taw
NICARAGUA
María Fernanda GUTIÉRREZ GAITÁN (Sra.), Consejera (Propiedad Intelectual),
Misión Permanente, Ginebra
NIGÉRIA/NIGERIA
Smaila AMINA (Ms.), Minister, Permanent Mission, Geneva
smailaamira@gmail.com
Shafiu Adamu YAURI (Mr.), Registrar, Trademarks Office, Commercial Law Department,
Trademarks, Patents and Designs Registry, Ministry of Industry, Trade and Investment, Abuja
sayauri@yahoo.com

MM/LD/WG/18/10
Annex IV, page 23
OUGANDA/UGANDA
Allan Mugarura NDAGIJE (Mr.), Third Secretary, Permanent Mission, Geneva
alanndagije@gmail.com
PAKISTAN
Muhammad RAFIQ (Mr.), Registrar and Head of Trade Marks Registry, Trademarks Registry,Intellectual Property Organization of Pakistan (IPO-Pakistan), Karachi
tmr@ipo.gov.pk
Muhammad Salman Khalid CHAUDHARY (Mr.), Third Secretary, Permanent Mission, Geneva
salman_khalid9@hotmail.com
PÉROU/PERU
Alejandro Kiyoshi MATSUNO REMIGIO (Sr.), Asesor Legal, Dirección de Negociaciones
Económicas Internacionales, Ministerio de Relaciones Exteriores, Lima
amatsunor@rree.gob.pe
Sergio CHUEZ (Sr.), Subdirector, Dirección de Signos Distintivos, Instituto Nacional de Defensa
de la Competencia y de la Protección de la Propiedad Intelectual (INDECOPI), Lima
schuezs@indecopi.gob.pe
Sandy Norberto BOZA ALZAMORA (Sr.), Ejecutivo 1, Dirección de Signos Distintivos,
Instituto Nacional de Defensa de la Competencia y de la Protección de la Propiedad
Intelectual (INDECOPI), Limasboza@indecopi.gob.pe
TOGO
Kokuvi Fiomegnon SEWAVI (M.), premier secrétaire, Mission permanente, Genève
fiomegnon@yahoo.fr
URUGUAY
Gabriela ESPÁRRAGO CASALES (Sra.), Encargada del Área de Signos Distintivos,
Dirección Nacional de la Propiedad Industrial (DNPI), Ministerio de Industria, Energía y Minería,
Montevideo
gabriela.esparrago@miem.gub.uy

MM/LD/WG/18/10
Annex IV, page 24
VENEZUELA (RÉPUBLIQUE BOLIVARIENNE DU)/VENEZUELA (BOLIVARIAN
REPUBLIC OF)
Ricardo Javier SÁNCHEZ NIÑO (Sr.), Director General, Servicio Autónomo de la Propiedad
Intelectual (SAPI), Ministerio del Poder Popular de Comercio Nacional, Caracas
ricardojavier517@gmail.com
Luis Alejandro SALAZAR RAMÍREZ (Sr.), Director del Despacho del Director General, Servicio
Autónomo de la Propiedad Intelectual (SAPI), Ministerio del Poder Popular de Comercio
Nacional, Caracassalazar.luis.alejandro@gmail.com
YÉMEN/YEMEN
Salem SALMAN (Mr.), Deputy Minister, Ministry of Industry and Trade, Aden
Mohamed Ali Mohamed MAJAWAR (Mr.), Counsellor, Permanent Mission, Geneva
2.

AUTRES/OTHERSPALESTINE
Nada TARBUSH (Ms.), Counsellor, Permanent Mission, Geneva
ntarbush.un@gmail.com
3.

ORGANISATIONS INTERNATIONALES INTERGOUVERNEMENTALES/INTERNATIONAL INTERGOVERNMENTAL ORGANIZATIONSORGANISATION BENELUX DE LA PROPRIÉTÉ INTELLECTUELLE (OBPI)/BENELUXORGANIZATION FOR INTELLECTUAL PROPERTY (BOIP)
Camille JANSSEN (Mr.), Legal Officer, Legal Affairs Department, The Hague
cjanssen@boip.int
ORGANISATION MONDIALE DU COMMERCE (OMC)/WORLD TRADE
ORGANIZATION (WTO)
Ishita RONY (Ms.), Intern, Intellectual Property, Government Procurement and Competition
Division, Geneva
ishita.rony@wto.org
ORGANISATION RÉGIONALE AFRICAINE DE LA PROPRIÉTÉINTELLECTUELLE (ARIPO)/AFRICAN REGIONAL INTELLECTUAL PROPERTYORGANIZATION (ARIPO)
Maxwell CHIKUNI (Mr.), Registry Associate (Formalities Examination), Hararemchikuni@aripo.org

MM/LD/WG/18/10
Annex IV, page 25
4.

ORGANISATIONS INTERNATIONALES NON GOUVERNEMENTALES/INTERNATIONAL NON-GOVERNMENTAL ORGANIZATIONSAssociation américaine du droit de la propriété intellectuelle (AIPLA)/American Intellectual
Property Law Association (AIPLA)
Kathleen LEMIEUX (Ms.), Representative, Arlington
klemieux@blg.com
Association communautaire du droit des marques (ECTA)/European Communities Trade Mark
Association (ECTA)
Barbara ABEGG (Ms.), Representative, Zurichbarbara.abegg@lenzstaehelin.com
Centre d'études internationales de la propriété intellectuelle (CEIPI)/Centre for International
Intellectual Property Studies (CEIPI)
François CURCHOD (M.), chargé de mission, Genolier
f.curchod@netplus.ch
Fédération internationale des conseils en propriété intellectuelle (FICPI)/International
Federation of Intellectual Property Attorneys (FICPI)
Paula SAILAS (Ms.), European Trademark and Design Attorney, Helsinki
paula.sailas@berggren.fi
International Trademark Association (INTA)
Tat-Tienne LOUEMBE (Mr.), Representative Africa Middle East and IGOs, New-Yorktlouembe@inta.org
Japan Intellectual Property Association (JIPA)
FUJII Shinya (Mr.), Vice-Chair, Trademark Committee, Tokyos1-fujii@bandai.co.jp
SUGISAKI Toru (Mr.), Vice-Chair, Trademark Committee, Tokyo
toru.sugisaki@takeda.com
Japan Patent Attorneys Association (JPAA)ENARI Fumie (Ms.), Member, Tokyo
info.jpaa@jpaa.or.jp
MARQUES - Association des propriétaires européens de marques de commerce/
MARQUES - Association of European Trademark Owners
Jessica LE GROS (Ms.), Chair, MARQUES International Trade Mark Law and Practice Team,
LondonTove GRAULUND (Ms.), Member, MARQUES International Trademark Law and Practice Team,
Copenhagen
Gavin STENTON (Mr.), Member, MARQUES International Trademark Law and Practice Team,
OxfordThe Chartered Institute of Trade Mark Attorneys (CITMA)
Oscar BENITO (Mr.), Chair, CITMA-WIPO Liaison Committee, London
oscar.m.benito7@gmail.com
Romina SARTI (Ms.), Trade Mark Counsel, London
romina_sarti@bat.com
Rita KHAITAN (Ms.), Member, Brentford
rita.x.khaitan@gsk.com
Claire LAZENBY (Ms.), Member, London
info@clairelazenby.com

MM/LD/WG/18/10
Annex IV, page 26
III.

BUREAU/OFFICERS

Président/Chair:

Nicolas LESIEUR (M./Mr.) (Canada)

Vice-présidents/Vice-Chairs: María José LAMUS BECERRA (Mme/Ms.) (Colombie/Colombia)
Tanyaradzwa MANHOMBO (M./Mr.) (Zimbabwe)
Secrétaire/Secretary:IV.

Debbie ROENNING (Mme/Ms.) (OMPI/WIPO)SECRÉTARIAT DE L’ORGANISATION MONDIALE DE LA PROPRIÉTÉINTELLECTUELLE (OMPI)/SECRETARIAT OF THE WORLD INTELLECTUAL
PROPERTY ORGANIZATION (WIPO)

Daren TANG (M./Mr.), directeur général/Director General
WANG Binying (Mme/Ms.), vice-directrice générale/Deputy Director General
David MULS (M./Mr.), directeur principal, Service d’enregistrement de Madrid, Secteur desmarques et des dessins et modèles/Senior Director, Madrid Registry, Brands and Designs
Sector
Debbie ROENNING (Mme/Ms.), directrice, Division juridique du système de Madrid, Service
d’enregistrement de Madrid, Secteur des marques et des dessins et modèles/Director, Madrid
Legal Division, Madrid Registry, Brands and Designs Sector
Juan RODRÍGUEZ GUERRA (M./Mr.), conseiller juridique principal, Division juridique dusystème de Madrid, Service d’enregistrement de Madrid, Secteur des marques et des dessins
et modèles/Senior Legal Counsellor, Madrid Legal Division, Madrid Registry, Brands andDesigns Sector
Tetyana BADOUD (Mme/Ms.), juriste principale, Division juridique du système de Madrid,
Service d’enregistrement de Madrid, Secteur des marques et des dessins et modèles/Senior
Legal Officer, Madrid Legal Division, Madrid Registry, Brands and Designs Sector
Lucy HEADINGTON-HORTON (Mme/Ms.), juriste principale, Division juridique du système de
Madrid, Service d’enregistrement de Madrid, Secteur des marques et des dessins etmodèles/Senior Legal Officer, Madrid Legal Division, Madrid Registry, Brands and Designs
SectorSAWASATO Kazutaka (M./Mr.), juriste, Division juridique du système de Madrid, Service
d’enregistrement de Madrid, Secteur des marques et des dessins et modèles/Legal Officer,
Madrid Legal Division, Madrid Registry, Brands and Designs Sector
Marie-Laure DOUAY (Mme/Ms.), juriste adjointe, Division juridique du système de Madrid,
Service d’enregistrement de Madrid, Secteur des marques et des dessins et modèles/AssistantLegal Officer, Madrid Legal Division, Madrid Registry, Brands and Designs Sector
Aurea PLANA (Mme/Ms.), administratrice adjointe aux réclamations, Division juridique dusystème de Madrid, Service d’enregistrement de Madrid, Secteur des marques et des dessins
et modèles/Associate Complaints Officer, Madrid Legal Division, Madrid Registry, Brands andDesigns Sector[End of Annex IV and of document]