WIPO updates

WIPOOur World Intellectual Property Organization (WIPO) Liaison Working Group works closely with WIPO, and will be using this page to update you with news about its work. 

July 2017: Using the Madrid System - some practice points/reminders

News

In 2017, ROMARIN, Madrid E-Alert and Madrid Real-Time Status are to be replaced by the new generation “Madrid Monitor” available here: Madrid Monitor. The quick start guide is available here: Madrid Monitor Quick Start Guide

The Member Profiles Database, a portal to the trade mark laws and examination procedures of Madrid System members (including the time limits for examination, cancellation, refusals, oppositions, third party observations and more) is now available here: Member Profiles Database. The quick start guide is available here: Member Profiles Quick Start Guide.

WIPO has launched an image-based search for trade marks through its Global Brand Database which allows users to upload an image to search for visually similar trade marks and other brand-information records. It is available here: Global Brand Database (images can be uploaded under ‘FILTER BY’).

The Global Design Database consisting of more than 28,000 records from 35 national and international collections is available here: Global Design Database

Key reminders

Madrid Team 3 is the contact point for UK Users (e-mail address: madrid.team3@wipo.int), although if the base registration is an EU trade mark it’s Madrid Team 1 (e-mail address: madrid.team1@wipo.int)

The UK Intellectual Property Office has implemented e-mail filing of International Applications to support users of the Madrid System in the UK. This is an extremely efficient and quick way for filing International Registrations. The form is available here application to register an international trade mark

NB Always use the form from the UK IPO website so that the most up-to-date form is used.

The email account to be used for submitting International Applications at the UK Intellectual Property Office is internationaltrademarks@ipo.gov.uk

It’s now possible to file International applications based on EU trade marks online with the EUIPO. See under ‘Online services’ in your User Area.

Practice points

Users are advised to refer to the Madrid Goods & Services Manager (“MGS”) database before filing applications to avoid Irregularity Notices with specification objections. Available here: Madrid Goods & Services Manager. This currently contains pre-approved terms for a number of Offices: Austria, Belarus, Benelux*, Brunei Darussalam*, Canada* (ahead of its Madrid Protocol accession), China, Colombia, Denmark, the European Union*, Estonia, Finland, Georgia, Germany, Iceland, Israel, Italy, Japan, Mexico, Mongolia, New Zealand, Norway, Portugal, Russia, Serbia, Singapore, South Korea, Sweden, Switzerland, Turkey, Ukraine, the United Kingdom*, the United States of America* and Vietnam

* also available in English on TMclass

While the extent of pre-approved terms may not be as voluminous as we may be used to in the EU, MGS does also contain terms rejected by some Offices.

WIPO has issued Examination Guidelines concerning the classification of goods and services In International Applications available here: Examination Guidelines

IPO – services of the internationals team

Irregularity Notices issued by WIPO are copied to the UK Intellectual Property Office (IPO). The IPO do not follow up with applicants/representatives on responses due to WIPO but do check that any responses filed by applicants/representatives are not outside the ambit of the basic application/registration.

The IPO does provide notification to applicants/representatives of responses they have submitted to WIPO.