Amendments relating to International Trademark Registration

26.04.2002

The Common Regulations under the Madrid Agreement and Protocol has been amended.



The Common Regulations under the Madrid Agreement and Protocol has been amended. The main amendments relate to the following rules :Rule 7 relating to subsequent designations (amendment that entered into force on October 4, 2001).Paragraph (1) of Rule 7 has been deleted. The Contracting Parties may therefore no longer require that subsequent designations made under the Protocol be presented through their Office when it is the Office of origin.Slovakia and Czech Republic have already adapted their law to new Rule. Germany, Italy, Republic of Lithuania and Sweden are at that moment the only Contracting Parties for which Rule 7 Paragraph 1 still remains effective.Rule 34 : Individual fee (amendment that entered into force on October 4, 2001).The individual fee to be paid in respect of a designation of some Contracting Parties may comprise :- a first part to be paid at the time of filing the international application or subsequent designation ;- a second part to be paid at a later date (corresponding to a registration fee).Rule 9 : Contents of the international application (amendment that entered into force on April 1st, 2002)It is now possible :- to request registration of a color or a combination of colors ;- to include a disclaimer ;- to indicate that a sign has no meaning and could not be translated.Rule 15 : Date of international registration (amendment that entered into force on April 1st, 2002)The sole irregularities which cannot be regularized without affecting the date of international registration are those allowing to identify :- the applicant ;- the Contracting Parties which are designated ;- the trademark ;- the designated goods and services.Rules 20 and 25 : Recording of a restriction or change (amendment that entered into force on April 1st, 2002)It is now possible to request the recording of a restriction or a change directly to the WIPO.New Rule 20bis : Recording of licenses (amendment that entered into force on April 1st, 2002)The licences in respect of international registrations shall now be recorded in the International Register (officiel fee : 177 CHF) ; for example it will no longer be possible to record licenses in the French Register.It has to be noted that some states do not recognize the effect of a license recorded in the International Register (updated list of the states which do not recognize the effect of such an international record) and that some national laws do not provide for the recording of trademark licences, so that the recording in the International Register of licences relating to an international registration of a mark has no effect in these states.