WIPO Announces New Madrid System Trademark Services

by Brian Fletcher on July 31, 2013

wipoThe International Bureau of the World Intellectual Property Organization (WIPO) announced that it will provide new special services to better serve the needs of users of the Madrid Agreement and Protocol Concerning the International Registration of Marks system.  These new special services will be available upon request and with the payment of a fee, in accordance with Item 9 of the Schedule of Fees, in force on September 1, 2008.

As of August 1, 2013, users of the Madrid system will be able to request the following new special services:

(a) Issuance of a certified copy of a certificate of an international registration and of a certificate of its renewal

The International Bureau of WIPO may issue certified copies of certificates of international registrations effected as from January 1, 2006, as well as of the certificates corresponding to their renewals. Please note that holders of international registrations effected as from January 1, 2011, or their recorded representatives, may download, free of charge, simple copies of the above-mentioned certificates using the Madrid Portfolio Manager, available here. Certified copies of a certificate of an international registration and a certificate of its renewal will be issued for a fee of 50 Swiss francs per certified copy.

(A certified copy consists of a reproduction of the certificate issued at the time of the international registration or its renewal.  A certificate presents, among other things, information concerning the holder, the list of goods and services and the designated Contracting Parties at the time of the international registration or its renewal.  A certified copy would not result in a new or updated version of the corresponding certificate.)

(b) Expedited establishment of a certified extract from the International Register

Along with a request for the establishment of a simple or detailed certified extract from the International Register, users may also request that such establishment be expedited. In these cases, the International Bureau of WIPO will produce the simple or detailed certified extract within five working days, following the receipt of a request for its expedited establishment. Following a request for this new special service, users will have to pay the corresponding new special service fee, in addition to the fee corresponding to the establishment of a simple or detailed certified extract, as provided for in Item 8 of the abovementioned Schedule of Fees. The International Bureau of WIPO will expedite the establishment of a simple or detailed certified extract upon the payment of a fee of 100 Swiss francs per extract.

(Users may request a simple certified extract from the International Register comprising copies of all the inscriptions related to an international registration, as published in the WIPO Gazette of International Marks, including those following requests for recordings and decisions transmitted by the Offices of the designated Contracting Parties.  Users may also request a detailed certified extract from the International Register listing all the inscriptions related to an international registration and indicating the goods and services in respect of which protection has been granted or refused per designated Contracting Party, as communicated by the Office concerned.  Further information on extracts from the International Register may be found here)

(c) Legalization of a certified extract from the International Register

Along with a request for the establishment of a simple or detailed certified extract from the International Register, users may also request that such extract be legalized with a view to their production in non-Contracting Parties of the Madrid system. Pursuant to Article 5ter(3) of the Madrid Agreement Concerning the International Registration of Marks and Article 5ter(3) of the Protocol Relating that Agreement, extracts from the International Register with a view to their production in one of the Contracting Parties of the Madrid system shall be exempt from any legalization. Following a request for this new special service, users will have to pay the corresponding new special service fee, in addition to the fees charged by the competent authorities effecting the legalization as well as the abovementioned fee corresponding to the establishment of a simple or detailed certified extract. All of the aforesaid fees shall be paid to the International Bureau of WIPO. The International Bureau of WIPO will provide for the legalization of a simple or detailed certified extract upon the payment of a fee of 75 Swiss francs per extract.

Users of the Madrid system will be able to request these new special services to the Client Records Unit of the Madrid Operations Service by sending a detailed communication, indicating the new special service requested and the international registration number to which the request relates, to the following address: madrid.records@wipo.int.

For further information, users may call the Client Records Unit of the Madrid Operations Service at +41 22 338 84 84.

 

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