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WIPO to Require Email Addresses for Madrid Protocol Applications & Registrations from 1 February 2021

20 January 2021

WIPO will require an email address to be provided for new and updated Madrid Protocol international trade mark applications and registrations from 1 February 2021.

The change follows amendment to the Madrid Protocol Regulations and will affect:

  • new applications for international registration under the Madrid Protocol filed with WIPO after 1 February 2021;
  • subsequent designations (applications for extension of trade mark protection to additional territories) filed after 1 February 2021;
  • requests to record a change of ownership or transfer of an existing international application or registration to a new owner (the new owner must supply an email address) filed after 1 February 2021;
  • requests to appoint or change a representative in respect of an international registration or application (the representative must supply an email address) filed after 1 February 2021;

Why is this change being introduced?

In 2020, WIPO experienced severe disruptions to its office operations and mail services, resulting in delays and shutdowns to outgoing and incoming mail correspondence.

For some time, WIPO has recommended that applicants and their representatives provide an email address to ensure efficient and timely routing of communications. This recommendation has now become mandatory.

What happens if an email address is not provided?

Where the application or request is filed by an online form, WIPO will require the email address field to be completed in order to submit the form.

However, as it is possible to submit forms in PDF format or by non-electronic means, it is important to ensure that the latest version of the form is used, and any email address field on the relevant form is correctly completed.

Failure to provide an email address on a relevant request will result in WIPO issuing an Irregularity Notice. If the irregularity is not corrected within the prescribed timeframe (3 months), the relevant request (or application for international registration) will be treated as abandoned.

What happens to existing trade mark registrations?

Existing registrations are not covered by the email address requirement. WIPO has stated it will continue to mail out correspondence where an existing registration does not have an email address, or if an email notification fails.

However, it is still strongly recommended to provide WIPO with an email address to ensure efficient and timely communication of notifications. WIPO may require owners and representatives to supply an email address upon renewal of the International Registration.

Existing applicants, holders and their representatives may voluntarily file a request for change of address to provide an email address. Such requests will be exempt from WIPO Fees.

Further Information

For further details about the requirement, see WIPO Information Notice No 78/2020 (PDF) or contact us.

This post is intended for general information only and is not intended to constitute legal advice. You should obtain appropriate professional advice for your circumstances or contact us for further assistance.
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