On 1st February 2023, changes came into effect which will impact how some trade mark applications are treated under the Madrid Protocol. A summary of these changes is provided below:
Only one representation of the mark
In cases where colour is a distinctive feature of the mark, rather than having to provide two representations (one in colour, one in black and white), only the colour representation is now required.
Claim of colour as a distinctive feature of the mark
Applicants are now able to claim colour as a distinctive feature of the mark when the basic mark is protected or meant to be protected in colour, even when a corresponding colour claim does not appear in the basic mark and the representation of the basic mark is not in colour; in such cases, the colour claim of the basic mark must be certified by the office of origin.
Representation of non-traditional marks
Sound, motion or multimedia marks are now able to be represented separately, such as by submission in a single digital file, rather than being required to fit within the box provided on the WIPO application form. This does depend on the designated Member State of the Madrid Protocol and its national laws allowing the submission of sound, motion or multimedia marks.
Representation of a cited mark in a notification of provisional refusal
When a mark is provisionally refused due to a citation, there is no longer a requirement for the national office to provide a representation of the earlier mark. They can instead indicate how to access the mark in question, for example, by providing a link to the relevant online database or publication accessible to the public.
Electronic communication only
Although the majority of communication with WIPO has recently been done electronically, the changes mean that all communication must now be via the Contact Madrid online platform or the e-Madrid online service. It is necessary to ensure, without delay, that holders and representatives have provided their email address to WIPO.
Expert advice is recommended to navigate these and other trade mark issues, with Two IP’s Chartered trade mark attorneys on hand to help. Get in touch here or email hello@two-ip.com
