MM/LD/WG/18/9
ORIGINAL: ENGLISH
DATE: OCTOBER 16, 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
SUMMARY BY THE CHAIR
approved 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.
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 will enter into force with respect to Trinidad and Tobago on January 12, 2021.

MM/LD/WG/18/9
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 is contained in document MM/LD/WG/18/INF/3 Prov. 22.

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.
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.

AGENDA ITEM 3: ADOPTION OF THE AGENDA
9.

The Working Group adopted the draft agenda (document MM/LD/WG/18/1).

10. The Working Group took note of the electronic adoption of the report ofthe seventeenth session of the Working Group.
AGENDA ITEM 4: PROPOSED AMENDMENTS TO THE REGULATIONS UNDER
THE PROTOCOL RELATING TO THE MADRID AGREEMENT CONCERNING
THE INTERNATIONAL REGISTRATION OF MARKS
11.

Discussions were based on document MM/LD/WG/18/2 Rev.
12. The Working Group agreed to recommend to the Madrid Union Assembly
the adoption of the proposed amendments to the Regulations Under the Protocol Relating
to the Madrid Agreement Concerning the International Registration of Marks (hereinafterreferred to, respectively, as “the Regulations” and “the Protocol”), as amended by
the Working Group and as set out in Annex I to the present document,with November 1, 2021, as the date of their entry into force.

2

The final list of participants will be made available as an Annex to the Report of the session.

MM/LD/WG/18/9
page 3
AGENDA ITEM 5: NEW MEANS OF REPRESENTATION
13.

Discussions were based on document MM/LD/WG/18/3.
14.

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 Administrative Instructions for the Application of the Protocol Relating to
the Madrid Agreement Concerning the International Registration of Marks(hereinafter referred to as “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.

AGENDA ITEM 6: PARTIAL REPLACEMENT
15.

Discussions were based on document MM/LD/WG/18/4.
16. The Working Group agreed to recommend to the Madrid Union Assembly
the adoption of the proposed amendments to the Regulations, as amended by theWorking 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
17.

Discussions were based on documents MM/LD/WG/18/5 and MM/LD/WG/18/5 Corr3.
18. The Working Group, recalling the decisions taken at its sixteenth andseventeenth sessions:(i)requested the Secretariat to provide, in advance of the nineteenth sessionof 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 other relevant
information, so as to address the issues raised by delegations at theeighteenth session of the Working Group, and submit it for consideration by
the Working Group at its next session; and,(ii) requested the Secretariat to consult with interested Contracting Parties of theProtocol and other WIPO Member States, in advance of the nineteenth session of
the Working Group, to clarify issues and relevant information so as to support theWorking Group in its consideration of this subject matter.

3

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

MM/LD/WG/18/9
page 4
AGENDA ITEM 8: SUMMARY BY THE CHAIR
19. 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
20.

The Chair closed the session on October 16, 2020.

[Annexes follow]

MM/LD/WG/18/9
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/18/9
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/18/9
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/18/9
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/18/9
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/18/9
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/18/9
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/18/9
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/18/9
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/18/9
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/18/9
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/18/9
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.

[End of Annex III and of document]