Further Changes to Madrid System Regulations Enter into Force

Further amendments to the Regulations under the Protocol Relating to the Madrid Agreement entered into force on February 1, 2023, following recent changes that became effective on November 1, 2022.

Representation of Marks

Applications no longer need to include graphical reproductions of the mark which fit into a designated box. Now, applicants need to file a representation of the mark in or with the application. This representation may be visual, not exceeding 20 centimeters in length or width, or it may be provided in a single digital file in the following formats:

• JPEG, PNG or TIFF for images;
• WAV or MP3 (not exceeding 5 MB) for sounds; or
• MP4 (not exceeding 20 MB) for videos.

However, Member States of the Madrid Protocol will continue to apply the relevant domestic legal provisions. Those states that still require a graphical representation of the mark might not grant protection to sound, motion or multimedia marks.

Representation of Color Marks

If an applicant’s mark is represented in black and white in their basic application or registration, and color is claimed as a distinctive feature of the mark in their international application, the applicant now only needs to provide a representation of the mark in color in their international application. It is no longer necessary to provide the representation both in black and white and in color.

Color as Distinctive Feature

Applicants can now claim color as a distinctive feature when their basic mark is protected or meant to be protected in color, even when a corresponding color claim does not appear in the basic mark and the representation of the basic mark is not in color. Such a claim must be certified by the Intellectual Property Office (IPO) of origin.

Representation of Marks in Provisional Refusal Notifications

If a provisional refusal is based on an earlier mark, local IPOs no longer need to provide a representation of the earlier mark in the notification on provisional refusal. They may now only indicate to the applicant how to access this representation, i.e. by providing a link to an online database or publication.

Communication with WIPO

All communication with the International Bureau of WIPO must now be conducted electronically, either through Contact Madrid or by using eMadrid.

By: Ana Radoman

For more information, please contact Ana Radoman at our Serbia Office.

Source: WIPO website