COVID-19: WIPO update on remedies and extension of time limits

Last week, the World Intellectual Property Organization (WIPO) published a notice in respect of the remedies and extension of time limits available for Madrid trade mark system users in light of the coronavirus outbreak.

The notice published on the official WIPO website sets out the following:

Remedies against failure to meet a time limit for a communication

Where access to electronic communication such as emails and delivery services is ‘impracticable’, WIPO has stated that it will treat favourably any request made under Rule 5(1),(2) and (3) of the Regulations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks ( the Regulations) (Irregularities in Postal and Delivery Services and in Communications Sent Electronically). Users of the Madrid System who have failed to meet a time limit for a communication, will be excused without the need to provide evidence if they cite COVID-19 related issues.

In any event, WIPO have stated that they must receive the communication no later than six months from the date on which the time limit concerned has expired.

Continued processing

Applicants or holders who fail to meet the limits set out in Rules 11(2) and (3), 20bis(2), 24(5)(b), 26(2), 34(3)(c)(iii) and 39(1) of the Regulations, have the right to request (without the need to provide evidence) for WIPO to continue processing international applications, subsequent designations and payments. To make such request, applications or holders must submit an official MM20 form to WIPO within two months from the date of which the time limits expire.

Closure of an Intellectual Property Office

Intellectual Property Offices and/or contracting partners are required to inform WIPO if they are not open to the public and they must further give indication on the dates on which they intend to close. WIPO are to be notified as soon as the offices/contracting partners re-open.

Under Rule 4(4) of the Regulations, a period that expires on a day on which an IP Office is not open to the public would expire on the first subsequent day on which that IP Office reopened. All time limits under the Madrid System that concern that IP Office would be extended accordingly.

For more information on this notice, click here.

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