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
By: Ana Radoman
For more information, please contact Ana Radoman at our Serbia Office.
Source: WIPO website
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