Trade Mark Update: Providing an email address to WIPO for communications under the Madrid System

The World Intellectual Property Organisation (WIPO) now requires that an applicant’s email address be included when filing a Madrid application.

The new requirement applies to international applications received by the Office of origin (e,g. IP Australia) on or after 1 February 2021.

Applicants with an appointed representative (i.e. an attorney) must still provide an email address to WIPO

It is not possible to indicate a representatives’ email as an applicant’s email – an irregularities notice will issue if a new Madrid application is lodged which includes the same email address for the representative and applicant.

Although WIPO now requires an email address for applicants, as a general rule they will continue to communicate with your appointed representative i.e. trade marks attorney. However, WIPO will communicate directly with applicants in the following few situations:

  • where the appointment of your representative is irregular or cancelled, at your request or at the request of your representative;
  • six months before the expiry of the renewal due date, an unofficial notice will be sent to you and your representative, reminding both of you of the exact date of expiry of the international registration;
  • in case of non-renewal of the international registration, the notification of such non-renewal will be sent to you and your representative.

WIPO advises that this change has come about as a result of continued postal disruptions during the COVID-19 pandemic, and is intended to avoid inadvertent loss of rights where physical correspondence is not received in a timely manner.

What this means for Madrid Protocol applicants

There is nothing existing Madrid applicants need to do.  For all new Madrid applications, we will be required to enter the applicant’s email address as part of the application process.  The email will not be made publicly available.  Madrid rights-holders should be aware that they may receive correspondence from WIPO from time to time, although in most instances such correspondence will be copied to their attorney as well.

We take this opportunity to remind IP holders that from time to time you may receive unsolicited correspondence about your IP.  Before paying fees for any IP related service, we strongly recommend you confirm with us that the correspondence is legitimate. 

If you have any concerns or questions relating to  amendments to the Regulations under the Protocol Relating to the Madrid Agreement concerning the International Registration of Marks, please do not hesitate to contact Kellie Jukkola or Geraldine Rimmer.

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