By Tommas Balducci
Trademark owners who use the Madrid System for the international registration of trademarks (or their representatives, collectively “Holders”) face a range of challenges in meeting deadlines and communicating with the World Intellectual Property Organization (“WIPO”) during the COVID-19 pandemic. WIPO has issued the following guidelines to address issues likely to arise from the lockdowns in many countries.
Closures of National Offices
If the time period for a filing or other action concerning an international application or registration with the trademark office of a Contracting Party (a “National Office”) expires when that National Office is closed, the period to effect such action will instead expire the day after the National Office reopens to the public.
Each National Office that has closed due to COVID-19 is required to send a notice to WIPO detailing the anticipated time frame of the closure and include information on extensions of time or other remedies available to Holders during the closure. These notices can be found on WIPO’s website at https://www.wipo.int/madrid/en/notices/. However, other relevant information concerning the National Office’s response to COVID-19 may be available at that Office’s individual website, so it would be a good idea to check both websites.
Sending Communications to WIPO
Due to the suspension of Swiss postal services, WIPO cannot currently send or receive any hard-copy communications. WIPO has issued a notice instructing that, as of March 30, 2020, all communications addressed to the International Bureau of WIPO (“the IB”) should be sent electronically only, using one of the online filing and communications platforms available through WIPO’s website such as Contact Madrid (https://www3.wipo.int/contact/en/madrid/) or the Madrid Portfolio Manager (https://www.wipo.int/madrid/en/manage/).
If a communication to the IB concerning an international application or registration is not received by the applicable time limit because of a shutdown or delays in postal, delivery, and/or internet communication systems related to COVID-19, it will be excused and considered timely received if the original or a copy is received by the IB no later than six months after the expiry of the time limit, along with any required instructions or payments due, and a request to treat the filing as timely under Rule 5 of WIPO’s Common Regulations. While Rule 5 of the Common Regulations usually requires a Holder to submit proof of the reason why its communication was late, the IB has waived this requirement as long as the Holder notes that the communication was late due to a communication-systems failure attributable to the COVID-19 outbreak.
Communications from WIPO to Trademark Holders
For Holders who have provided the IB with their email addresses and have opted to receive email communications, the IB will continue to communicate via email only.
If a Holder has not opted to receive communications via email, the IB will send such communications to the Holder as soon as the Holder updates its contact information and provides the IB with an email address.
Additionally, where the IB has identified an irregularity in a Holder’s pending request for a recordal or pending international application, and that Holder has not opted to receive communications via email, the IB will not issue an irregularity notification until the Holder updates its contact information and enables email communication. This stay will prevent the time limit for the Holder to address the irregularity from expiring before the Holder is notified of it (the time limit to respond begins to accrue on the date the notification is issued), but it will also delay the registration of the application / acceptance of the recordal.
However, where a National Office issues a notification that requires a Holder to respond before the expiry of a prescribed time limit (such as a notice of provisional refusal), the time limit will be calculated based on the issuance/transmission date of the notice by the National Office to the IB, not from the IB to the Holder. Thus, in cases where a Holder does not enable email communications with the IB, the IB will be unable to forward the notice to the Holder, and the time limit to respond could potentially expire before the Holder receives it. However, the IB will continue to make publicly available all communications received from National Offices on the Madrid Monitor website (https://www3.wipo.int/madrid/monitor/en/).
To avoid potentially delaying the IB’s issuance of irregularity notifications and the IB’s transmission of other communications (which, as described above, may be time-sensitive), Holders should update their contact information and provide WIPO with an email address via Contact Madrid (https://www3.wipo.int/contact/en/madrid/) or the Madrid Portfolio Manager (https://www.wipo.int/madrid/en/manage/). It would also be prudent for Holders to periodically check Madrid Monitor to make sure that they have received all communications sent from National Offices to the IB.
Request for Continued Processing
In certain instances where a Holder fails to meet a time limit to (i) respond to certain types of irregularity notices issued by WIPO, (ii) pay a fee for an international application or the second-part of an individual fee for a designation, or (iii) file a request that an international registration continue its effects in a successor state, the Madrid System permits the Holder to file a Request for Continued Processing without having to submit proof of any extenuating circumstances or explain the reason the deadline was missed. The Request for Continued Processing is made by filing an MM20 form with the IB within two months from the expiration of the time limit, addressing the deficiency or requirement communicated in the original notice, and paying an additional fee (see: https://www.wipo.int/madrid/en/forms/).