Workbook: Module 2 Accession

Topic 2: Key Area of Preparations

Madrid Training Project

WORKBOOK

Module 6
Post Registration Management
Madrid Training Project
Workbook: Module 6 Post Registration Management
Madrid Training Project

Introduction
Welcome to Module 6 the Madrid System eLearning Training Course. This workbook
is provided as a companion to the online learning modules and contains questions
and scenarios to test your understanding of the information.

In this module we will be looking at the post registration management of international

registrations, including subsequent designations and various changes that holders or
their representatives may request to be recorded in the International Register.

Hi! My name is Lumi. I’ll be here with you as

your guide, directing you to valuable insights
along your learning journey.

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Contents
Introduction...................................................................................................................1
Module Outline..............................................................................................................4
Learning Outcomes......................................................................................................5
Scenarios Complexity Ratings......................................................................................5
Section 1: Subsequent Designation.....................................................................................6
Subsequent Designation...........................................................................................6
When is a Subsequent Designation not Possible?...................................................6
Entitlement to File..................................................................................................7
Submission............................................................................................................7
Formal Examination by WIPO...............................................................................8
Period of Protection...............................................................................................8
Date.......................................................................................................................9
Priority...................................................................................................................9
Official MM4 Form.....................................................................................................9
Item 4 - Designations..........................................................................................10
European Union...................................................................................................10
United States of America........................................................................................11
Item 6 - Miscellaneous Indications......................................................................11
Subsequent Designation resulting from Conversion - European Union (EU)........11
Fees Payable to WIPO for a Subsequent Designation...........................................12
The basic fee:......................................................................................................12
Fees for designated Contracting Parties:............................................................12
Irregularities............................................................................................................12
Irregularities: Time Limits........................................................................................13
Summary.................................................................................................................13
Knowledge Check...................................................................................................14
Section 2: Changes to be recorded in the International Register.............................16
Recording Changes to an International Registration..............................................16
Limitations...........................................................................................................16
Cancellation.........................................................................................................17

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Renunciation........................................................................................................18
Change in Ownership..........................................................................................18
Change in the Name or Address of the Holder...................................................19
Change in the Name or Address of the Representative.....................................20
Appointment of a new Representative................................................................20
Cancellation of a Representative........................................................................21
Restriction of the Holder’s right to Dispose of an International Registration......21
Recording of Licenses.........................................................................................22
Recording of Licenses: No Effect........................................................................22
Renewal...............................................................................................................23
Renewal: Fees.....................................................................................................24
Summary.................................................................................................................25
Knowledge Check...................................................................................................25
Scenarios....................................................................................................................27
Questions and Answers..............................................................................................38
Scenario Answers.......................................................................................................41

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Module Outline
Module 6 of the Madrid Training Project is intended to provide holders, their
representatives and IP Offices with an overview of post registration management of
international registrations under the Madrid System.

The module is self-paced but it is estimated it should take no more than two hours to
complete.

The module contains two sections and includes knowledge check questions and
scenarios at various points to ensure you have understood the preceding material.

The subjects covered in this module are:

1. Subsequent designations, including:

o What is a subsequent designation and the requirements for
filing, and
o Irregularities and time limits to respond.

2. Changes to be recorded in the International Register, including:

o Limitation, cancellation and renunciation,
o Changes concerning the holder and representative,
o Restriction of the holder’s right of disposal,
o Recording of licenses, and
o Renewal.

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Learning Outcomes
This training is intended to provide an overview of post registration management of
post registration management within the Madrid System.

At the end of Module 6 you should be able to:

 Identify the filing requirements for subsequent designations,

 Explain how to submit a subsequent designation request,
 Identify changes that can be recorded in the International Register, and
 Explain how changes to be recorded in the International Register can be
requested.

Scenarios Complexity Ratings

Simple:
The scenario can be answered by the learner reviewing the
information contained in the workbook.

Intermediate:
The scenario needs the learner to consider multiple items or
multiple types of information

Complex:
The scenario needs the learner to consider multiple items and
multiple concepts

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Section 1: Subsequent Designation

Subsequent Designation

Subsequent designation is a way for the holder of an international registration to

expand the geographical scope of protection of their mark to additional Contracting
Parties. This means the holder can add further Contracting Parties to their existing
international registration, including new members of the Madrid System, without
having to file a new international application.

Additionally, a subsequent designation can be requested for a Contracting Party that

was previously designated but where the mark is not protected, or is protected for
only some of the goods and services of the international registration, for example, as
a result of a refusal, limitation, invalidation or a renunciation.

The holder can subsequently designate one or several Contracting Parties, and a
subsequent designation may be made for all or only part of the goods and services
recorded in the International Register. The list of goods and services must, however,
remain within the scope of the international registration.

When is a Subsequent Designation not Possible?

Subsequent designation is not possible in two situations:

1. Where the Contracting Party concerned is also the Office of origin.

It is not possible to self-designate in an international registration; meaning

that the Contracting Party whose Office is the Office of origin cannot be
subject of a subsequent designation, even where the basic mark is no
longer in force.

2. Where the Contracting Party has made a declaration under Article 14(5) of
the Madrid Protocol.

A few members (5 out of 102 members per October 2018) have made such
declaration, meaning that it may not be possible to record a subsequent
designation for those Contracting Parties where the date of the international
registration is prior to the date of when the Madrid Protocol entered into
force in that Contracting Party concerned.

In this case, to use the Madrid System for protecting the mark in the
Contracting Party concerned, a new international application designating
that Contracting Party has to be filed.

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Subsequent Designation Process

A subsequent designation can be recorded once there is an international

registration, meaning the international application has been registered by WIPO.

The official form for submitting a subsequent designation is the MM4 and it is
available in English, French and Spanish.

You can access the official MM4 form from the WIPO website:
http://www.wipo.int/madrid/en/forms/.

Let’s learn more about the subsequent designation process.

Entitlement to File

A Contracting Party may be the subject of a subsequent designation where, at the

time of the designation, the holder fulfills the conditions (of nationality, domicile or
establishment) to be the holder of an international registration.

This entitlement to file will have already been confirmed as the holder listed in the
subsequent designation must be the same as in the international registration.

Submission

A subsequent designation can be submitted to WIPO using the official MM4 form via
Contact Madrid or online through the Madrid e-Subsequent Designation service.

Unlike an international application, the holder can submit the subsequent designation
directly to WIPO, without the need to present the request through the national or
regional IP Office of the Contracting Party of the holder. However, a holder can
submit the MM4 form through their IP Office, if that Office so permits.

It is important to note that the Madrid e-Subsequent Designation service is not

recommended when a holder wishes to include special instructions to WIPO, such
as a request that the subsequent designation should be processed after the
recording of another change with regard to the international registration concerned.
The holder should instead submit the MM4 form.

You can access Contact Madrid and the Madrid e-Subsequent Designation service
from the WIPO website where you can also watch a tutorial on how to use the e-
Subsequent Designation online service:

Contact Madrid:
https://www3.wipo.int/contact/en/madrid/

E-Subsequent Designation:
https://www3.wipo.int/osd/?lang=en

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Tutorial on how to use e-Subsequent Designation:

http://www.wipo.int/madrid/en/video/osd.html

Formal Examination by WIPO

The MM4 form is examined by WIPO for formalities issues.

Where WIPO considers that the subsequent request is irregular, it will notify the
holder and if the form was submitted through an Office, that Office.

WIPO will record the subsequent designation once it meets all the requirements, and
notify the designated Contracting Parties for substantive examination.

Any subsequently designated Contracting Party can grant or refuse protection of the
international registration, from the date of the subsequent designation, either totally
or partially, in their territory, in accordance with their national or regional legislation.

It does not matter to the Contracting Party whether it is designated in the

international registration or subsequently to this, the time limit for issuing a
provisional refusal begins from the date on which WIPO has notified the Office of the
designated Contracting Party of the international registration or the subsequent
designation concerned (notification date).

Period of Protection

A subsequent designation does not have an independent lifetime, but follows the 10-
year protection cycle of the international registration.

The period of protection for a subsequent designation expires on the same date as
the international registration to which it relates. For this reason, the date of renewal
of the international registration should be taken into consideration when
subsequently designating new Contracting Parties.

At the time of the subsequent designation, the holder needs to pay fees for
subsequently designating the Contracting Party concerned, and at the time of
renewal, the holder has to pay renewal fees for all the Contracting Parties covered in
the international registration concerned including those subsequently designated.

The holder can request that the recording of the subsequent designation only take
effect after the recording of another change in the International Register or after the
renewal of the international registration.

However, where a subsequent designation contains a request that it only take effect
immediately after renewal or some other event, the date of the subsequent
designation will be the day after the date of the recording of that other event, rather
than the date it was received by WIPO.

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Date

A subsequent designation presented directly to WIPO will bear the date on which it
was received by WIPO.

If the subsequent designation is presented through an Office, it will bear the date it
was received by the Office, provided that WIPO received it within the two-month time
limit from that date. If WIPO received the subsequent designation after the expiry of
that time limit, it will bear the date it was received by WIPO.

The date of a subsequent designation may be affected if it contains a request that it

takes effect after the recording of another change in the International Register or
after renewal of the international registration, or it contains irregularities.

Priority

The subsequent designation may benefit from a priority claim in the international
registration.

If the subsequent designation is considered received less than six months after any
priority date recorded in respect of the international registration concerned, the
priority date of the international registration will also have effect in the Contracting
Parties covered by the subsequent designation.

Official MM4 Form

A number of requirements must be met when completing the MM4 form, including:
 The subsequent designation can only relate to one international
registration,
 The holder’s name and address must be the same as recorded in the
International Register, and
 The holder must indicate the list of goods and services the subsequent
designation is intended to cover and specify which Contracting Party they
apply to. The list may be narrower but it cannot be broader or contain
different goods or services to what is contained in the international
registration.

Let’s find out more about the requirements of completing Item 4 – designations and
Item 6 Miscellaneous Indications of the MM4 form.

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Item 4 - Designations

The holder must indicate the Contracting Parties where protection is subsequently
sought by checking the corresponding boxes in Item 11. The holder must select at
least one Contracting Party, which cannot be the Office of origin.

The holder can also designate a Contracting Party already included in the
international registration for those goods and services of the international registration
not already protected in the Contracting Party.

Some Contracting Parties require specific information to be indicated either in the

MM4 form or provided on a separate form.

Let’s take a closer look at the additional information required for the European Union
and the United States of America.

European Union

A Second language

Where the European Union (EU) is subsequently designated, the holder must
indicate a second language. The second language must be chosen from those
indicated in Item 4: English, French, German, Italian or Spanish, but it cannot be the
language used when the international application was filed.

This second language serves exclusively as a language in which third parties may
lodge opposition or cancellation proceedings before the European Union Intellectual
Property Office (EUIPO).

Seniority

A holder subsequently designating the EU may claim seniority of an earlier mark

registered in a member State of the European Union.

If such a claim has been made and accepted by the EUIPO, the holder may later
surrender the earlier mark or allow it to lapse. Protection in the EU is deemed to
continue to be afforded the same rights in the member State concerned, as it would
have had if the earlier mark had continued to be registered.

The earlier mark must not have lapsed at the time the seniority is claimed. Therefore,
when subsequently designating the EU, protection must still be valid in the EU
member State concerned.

To claim seniority of an earlier mark registered in or for a member State of the

European Union, the holder must submit the official MM17 form.

You can access the official MM17 form on the WIPO website:
http://www.wipo.int/export/sites/www/madrid/en/forms/docs/form_mm17.pdf

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United States of America

When subsequently designating the United States of America, the holder must
submit the official MM18 form: a declaration of intention to use. The declaration is
required to be in English, regardless of the language in which the subsequent
designation is filed.

The MM18 form should be annexed to the MM4 form.

You can access the official MM18 form on the WIPO website:
http://www.wipo.int/export/sites/www/madrid/en/forms/docs/form_mm18.pdf

Item 6 - Miscellaneous Indications

Item 6 contains information that may need to be provided depending on the nature of
the mark.

If the miscellaneous indications covered by Item 6 have already been given in the
international registration, they need not be repeated here. This information will
automatically be included in the notification of the subsequent designation to the
Offices concerned.

The holder also has the option of adding a voluntary description of their mark in Item
6(e). However, the holder can only add a voluntary description where one has not
already been recorded for the international registration concerned.

Subsequent Designation resulting from Conversion - European Union (EU)

Where an international registration contains a designation of the EU which has later

been withdrawn, refused or has ceased to have effect, the holder may, by submitting
form MM16, subsequently designate one or more of the member States of the EU.

The applicable date of protection of a subsequent designation of the member State

of the EU resulting from a conversion of an EU designation, would be the date of
international registration or date of subsequent designation of the EU (including any
priority date of the international registration), and where appropriate, any seniority
claim.

Subsequent designations resulting from conversion must be presented on the official

MM16 form to WIPO through the Office of the Contracting Organization (EU), and
indicate the ground for the conversion.

You can access the official MM16 form from the WIPO website:
http://www.wipo.int/export/sites/www/madrid/en/forms/docs/form_mm16.pdf

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Fees Payable to WIPO for a Subsequent Designation

The fees for a subsequent designation are payable to WIPO in Swiss francs (CHF)
and consist of:

The basic fee:

 300 Swiss francs (CHF), regardless of whether the mark is in black/white or

color.

Please note, even though the protection for a subsequent designation

expires on the same date as the international registration to which it
relates, the amount of fees is 300 Swiss francs regardless of the number of
years the subsequent designation will have effect until renewal.

Fees for designated Contracting Parties:

The holder must pay either a complementary fee or an individual fee for each of the
designated the Contracting Parties.
 Complementary Fee - 100 CHF per each designated Contracting Party for
which no individual fee is payable.
OR
 Individual Fee – Amounts are determined by each Contracting Party
having made declaration of charging individual fees.

Fees are due at the time of presenting the request. The subsequent designation will
not be recorded until the necessary fees are received. If payment is not received, the
subsequent designation will be abandoned.

Information about Contracting Parties charging individual fees together with the
amounts due is available on the WIPO website:
http://www.wipo.int/madrid/en/fees/ind_taxes.html

Irregularities

WIPO will examine a subsequent designation for compliance with formality

requirements and an irregularity notice will be issued if WIPO considers the
subsequent designation to be irregular.

WIPO will notify the holder and if the request was presented through an Office, that
Office.

If the subsequent designation has an irregularity relating to:

 The number of the international registration,
 Indication of the Contracting Parties,
 List of goods or services, or
 A missing or incomplete declaration of intention to use,

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the date of the subsequent designation will be the date on which the irregularity is
remedied.

However, where the subsequent designation is submitted via an Office, the date will
not be affected by the above irregularities if they are resolved within two months of
the date on which the subsequent designation was received by the Office.

Irregularities: Time Limits

A response to an irregularity notice must be received by WIPO by the date noted on

the notice. This will be three months from the date of the notification by WIPO.

If the irregularities are not remedied by the due date, it may lead to the subsequent
designation being abandoned.

Continued Processing is available in respect of time limits concerning irregularities

for subsequent designations. The request for continued processing needs to be
provided to WIPO on the official MM20 form and must be signed by the holder or
their representative.

A request for continued processing must be made within two months from the expiry
of the time limit concerned. If the request does not meet requirements, WIPO will
abandon the request and notify the holder of this action.

A fee of 200 CHF applies to this request.

You can access the official MM20 form from the WIPO website:
http://www.wipo.int/export/sites/www/madrid/en/forms/docs/form_mm20.pdf

Summary

You now know:

 A holder of an international registration may subsequently expand the
geographical scope of protection of their mark to additional Contracting
Parties,
 How a subsequent designation can be submitted to WIPO, and
 The lifetime and the priority date of a subsequent designation depends on
the international registration to which it relates.

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Before we continue, let’s check your knowledge.

The correct answers to the questions can be
found at the end of this workbook.

Knowledge Check

Question:
Subsequent designation is not possible in two situations. The first is where the
Contracting Party concerned is also the Office of origin. What is the second? Please
provide an explanation with your answer.

Answer:

.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................

Question:
For a Contracting Party subsequently designated, when does the time limit begin for
refusing protection, either totally or partially, in their territory, in accordance with their
national or regional legislation?

Answer:

.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................

Question:
When does the period of protection for a subsequent designation expire?

Answer:

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.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
Question:
WIPO will examine a subsequent designation for compliance with formality
requirements and an irregularity notice will be issued if WIPO considers the
subsequent designation to be irregular.

If the subsequent designation was submitted directly to WIPO, who will be notified of
the irregularity?

Answer:

.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................

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Section 2: Changes to be recorded in the International

Register
Recording Changes to an International Registration

Changes to an international registration that have effect in some or all of the

Contracting Parties concerned may occur during its lifetime.

The main rule is that such changes, once recorded in the International Register, will
have a direct effect in the designated Contracting Parties concerned, without the
national or regional IP Office having any say in this.

There are exceptions to this rule. A Contracting Party may declare that a change in
ownership, limitation to the list of goods and services, or the recording of a given
licence has no effect in the designated territory. More information regarding this can
be found in Topic 3 of Module 4.

In this section, we will explore types of changes a holder can request to be recorded
in the International Register with regard to their international registration, namely:
 Limitations,
 Cancellation,
 Renunciation,
 Change in ownership,
 Changes of the name and address of the holder and representative,
 Appointment and cancellation of a representative,
 Restriction of the holder’s right of disposal,
 Recording of licenses, and
 Renewal of an international registration.

Limitations

A holder may request the recording of a limitation of the list of goods and services in
respect of all or some of the designated Contracting Parties in an international
registration.

While the limited goods and services will no longer have effect in the designated
Contracting Party concerned, they will not be removed from the main list of the
international registration and these can later be subject of a subsequent designation
for the same Contracting Party.

A request for the recording of a limitation must be submitted to WIPO using the
official MM6 form, and may be presented by:
 The holder or their recorded representative, or

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 The Office of the Contracting Party of the holder, if the Office so permits.

One form may be used for the recording of a limitation for several international
registrations if the holder is the same, the same limitation applies to all designated
Contracting Parties, or to the same designated Contracting Party for each of the
international registrations.

A fee of 177 CHF is payable per MM6 form.

You can access the official MM6 form from the WIPO website:
http://www.wipo.int/export/sites/www/madrid/en/forms/docs/form_mm6.pdf

Cancellation

A holder may request the recording of a cancellation for some or all of the goods and
services with respect to all designated Contracting Parties in an international
registration (partial or total cancellation).

By recording a partial cancellation, the goods and services concerned will be

permanently removed from the international registration as recorded in the
International Register. To re-establish protection for the goods and services that
were the subject of a cancellation, a new international application would need to be
filed. Where a partial cancellation has been recorded, those goods and services
cannot be subject to either a subsequent designation or transformation.

Cancellation of an international registration may be:

 Total – that applies to all designated Contracting Parties and all goods
and services covered by the international registration. With the recording
of a total cancellation, the international registration will no longer be in
force.
 Partial – that applies to all designated Contracting Parties, but concerns
only some of the goods and services covered by the international
registration. The international registration is still in force, but the recording
of a partial cancellation has permanently reduced the list of goods and
services covered by the international registration.

A request for cancellation must be submitted to WIPO using the official MM8 form.

The request for a cancellation may be presented to WIPO by:

 The holder or their recorded representative, or
 The Office of the Contracting Party of the holder, if the Office so permits.

One form may be used to request a total cancellation for multiple international
registrations, provided that they are all in the name of the same holder.

However, if the request is for a partial cancellation, a separate MM8 form must be
submitted for each international registration concerned.

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There is no fee for the recording of cancellation.

You can access the official MM8 form from the WIPO website:
http://www.wipo.int/export/sites/www/madrid/en/forms/docs/form_mm8.pdf

Renunciation

A holder may request the recording of renunciation to abandon the effects of the
international registration for all the good and services in respect of some (but not all)
of the designated Contracting Parties.

Where a renunciation has been recorded, the international registration will have no
effect or have no protection in those designated Contracting Parties which are the
subject of the renunciation.

It is possible for the holder, at a later date, to record a subsequent designation for
the designated Contracting Parties which are the subject of the renunciation.
However, the holder cannot request a transformation of the renounced part of the
international registration into a national or regional application in the territories
concerned.

A request for renunciation must be submitted to WIPO using the official MM7 form.

The request may be presented to WIPO by:

 The holder or their recorded representative, or
 The Office of the Contracting Party of the holder, if the Office so permits.

One form may be used to request renunciation for several international registrations
having the same holder, provided the designated Contracting Parties for which the
international registration is renounced are the same for each of the international
registrations concerned.

There is no fee for recording of a renunciation.

You can access the official MM7 form from the WIPO website:
http://www.wipo.int/export/sites/www/madrid/en/forms/docs/form_mm7.pdf

Change in Ownership

A change in ownership from one legal entity to another may only be recorded if the
new holder is a person who is entitled to file international applications under the
Madrid System.

The change in ownership may be a:

 Total change – this relates to all the designated Contracting Parties and to
all the goods/services covered by the international registration, or

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 Partial change – this relates to only some of the designated Contracting

Parties and/or only some of the goods/services covered by the
international registration.

The request for recording must be submitted to WIPO on the official MM5 form.

The request may be presented to WIPO by:

 The holder or their recorded representative, or
 The Office of the Contracting Party of either the holder or of the new
holder (transferee), if the Office so permits.

One form may be used to request the recording of the change in ownership for
several international registrations, provided that:
 The registrations are being transferred from the same holder to the same
transferee, and
 For each registration, the change applies to all the designated Contracting
Parties and concerns all the goods and services.

Otherwise, multiple separate MM5 forms will be required in respect of the designated
Contracting Parties concerned, and/or the goods and services affected.

Supporting documents such as copies of the deed of assignment or other contracts

should not be sent to WIPO.

A fee of 177 Swiss francs (CHF) is payable for the recording of the change per
international registration indicated in the MM5 form.

You can access the official MM5 form from the WIPO website:
http://www.wipo.int/export/sites/www/madrid/en/forms/docs/form_mm5.pdf

Change in the Name or Address of the Holder

Where the holder of an international registration has changed their name or address,
the request for the recording of this change can be submitted to WIPO, using the
official MM9 form.

The request may be presented to WIPO by:

 The holder or their recorded representative, or
 The Office of the Contracting Party of the holder, if the Office so permits.

One form may be used for several international registrations, provided they are all
recorded in the name of the same person or legal entity, and are at the same
address.

A fee of 150 CHF is payable for the recording of the change per form MM9.

You can access the official MM5 form from the WIPO website:

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http://www.wipo.int/export/sites/www/madrid/en/forms/docs/form_mm9.pdf

Change in the Name or Address of the Representative

A request to record a change in the name and/or address of an existing

representative must be submitted using official MM10 form.

The request may be presented to WIPO by:

 The holder or their recorded representative, or
 The Office of the Contracting Party of the holder, if the Office so permits.

One form can be used for several international registrations, provided the
representative is recorded in the International Register for all applicable registrations,
and that the international registrations are specified.

There is no fee for the recording of such change.

You can access the official MM10 form from the WIPO website:
http://www.wipo.int/export/sites/www/madrid/en/forms/docs/form_mm10.pdf

Appointment of a new Representative

A request to record a person or company to be a holder’s representative before

WIPO, for one or more international applications or registrations, can be submitted
using the official MM12 form.

This form is not mandatory. However, it is preferable that the form is used. A
representative may also be appointed in most of the official forms, see for example,
MM2 item 4.

As per international procedure, the representative does not have to be domiciled in a

member of the Madrid System.

The request may be presented to WIPO by:

 The holder or their recorded representative, or
 The Office of the Contracting Party of the holder, if the Office so permits.

A single MM12 form can be used to request the appointment of a representative for
several international applications or registrations, provided that all applications and
registrations are in the name of the same applicant/holder.

There is no fee for this request.

You can access the official MM12 form from the WIPO website:
http://www.wipo.int/export/sites/www/madrid/en/forms/docs/form_mm12.pdf

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Cancellation of a Representative

The appointment of a representative may be cancelled by a holder and/or by the

representative itself.

If a holder appoints a new representative, the recording of the new representative

will replace any previously recorded representative.

WIPO will cancel the recording of a representative upon receiving a communication

signed by the holder or the representative. The request should indicate the
international application or registration to which the cancellation applies. There is no
official form available for this type of request.

In general, the cancellation will take effect from the date WIPO receives the request.

There is no fee for the recording of the cancellation of a representative.

Restriction of the Holder’s right to Dispose of an International Registration

A request to record in the International Register the restriction of a holder’s right to

dispose of an international registration can be submitted to WIPO using the official
MM19 form. This form is not mandatory. However, it is preferable that the form is
used.

The request may be presented to WIPO by:

 The holder, or
 The Office of the Contracting party of the holder.

The restriction may apply to the international registration as a whole or in respect of

only some of the goods and services for the designated Contracting Parties.

The Office of a designated Contracting Party may also inform WIPO that the holder’s
right of disposal has been restricted but, in this case, the information may only relate
to a restriction in the territory of that Contracting Party.

One form may be used in respect of several international registrations of the same
holder, if the Contracting Parties in respect of which the international registration
restricted are the same for all the international registrations concerned.

The request should contain a summary statement of the main facts concerning the
restriction, for example, that it results from a court order concerning the disposal of
the assets of the holder. This statement should be brief, and in a form suitable for
recording in the International Register. Copies of court decisions or deeds should not
be sent to WIPO.

There is no fee for such recording.

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You can access the official MM12 form from the WIPO website:
http://www.wipo.int/export/sites/www/madrid/en/forms/docs/form_mm19.pdf
Recording of Licenses

A request to record a license in an international registration must be submitted to

WIPO on the official MM13 form and be signed by the holder or the Office through
which it is presented.

The request may be presented to WIPO by:

 The holder,
 The Office of the Contracting Party of the holder, or
 The Contracting Party in respect of which the license is granted.

WIPO cannot accept a request from a licensee.

The MM13 must indicate:

 The designated Contracting Parties, and
 The goods and services for which the license is granted.

No supporting documents, such as copies of the license agreement, should be sent

to WIPO.

If the request does not meet the requirements, WIPO will issue an irregularity notice.
If the irregularity is not remedied within three months, the request will be considered
abandoned.

If the holder failed to meet the given time limit, it is possible for the holder to request
continued processing.

A fee of 177 CHF is payable for the recording per license in respect of an
international registration.

You can access the official MM13 form from the WIPO website:
http://www.wipo.int/export/sites/www/madrid/en/forms/docs/form_mm13.pdf

Recording of Licenses: No Effect

The recording of a license is not mandatory in all Contracting Parties of the Madrid
System and will have no effect in certain Contracting Parties that have made a
declaration to that effect.

For example:
 Australia, Germany and New Zealand do not provide in their laws for the
recording of trademark licenses. A request to record a license will
therefore have no effect in those Contracting Parties.

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 While the domestic and regional laws of the African Intellectual Property
Organization (OAPI), Cambodia, China, Colombia, Georgia, India,
Indonesia, Japan, Kyrgyzstan, Lao People's Democratic Republic,
Mexico, Republic of Korea, Republic of Moldova, Russian Federation,
Singapore, Thailand and The Gambia provide for the recording of license,
the recording of licenses in the International Register has no effect in their
territory.

Any license to be recorded in an international registration with effect for

any of these Contracting Parties must be submitted directly with the IP
Office of the Contracting Party concerned, following the national or
regional procedures.

Renewal

Once a mark has been recorded in the International Register, the international
registration is valid for 10 years and can be renewed every 10 years directly with
WIPO. Six months before expiry of each 10-year term of protection, the holder will
receive an unofficial notice from WIPO reminding of the exact date of expiry of their
international registration.

The holder can renew their registration either, three months prior to the expiration of
the 10-year term of protection or within the six-month grace period following its
expiry. If the international registration is renewed during the grace period, a
surcharge will apply.

The holder can renew their international registration by using:

 Madrid e-Renewal Service
 The Official MM11 Form

Let’s have a closer look at each option.

Madrid e-Renewal Service

The Madrid e-Renewal service allows a holder to renew an international registration

three months prior to its expiration date or within the six-month grace period
following this date.

The Madrid e-Renewal provides:

 Detailed and up-to-date information on the international registration
(international registration number, holder details, Office of origin,
representative, designated Contracting Parties),
 Visual reproduction of the mark. when applicable,
 Status of protection per designated Contracting Party,

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 Calculation table of applicable fees displayed per type and Contracting

Party, and
 Automatic confirmation e-mail with the details of the renewal.

With the Madrid e-Renewal service the holder can simply enter their international
registration number they would like to renew on the e-Renewal web page, select the
designated Contracting Parties for the renewal, and pay the due fees using a WIPO
Current Account or a credit card.

The Madrid e-Renewal service can be accessed via the WIPO website:
https://webaccess.wipo.int/trademarks_ren/

The Official MM11 Form

The holder may also renew the international registration by using official form MM11
rather than the Madrid e-Renewal service.

A separate form is required for the renewal of each international registration.

The request may be presented to WIPO by:

 The holder or their recorded representative, or
 The Office of the Contracting Party of the holder, if the Office so permits.

The person signing the form must declare that they are entitled to do so under the
applicable law.

You can access the official MM11 form from the WIPO website:
http://www.wipo.int/export/sites/www/madrid/en/forms/docs/form_mm11.pdf

Renewal: Fees

Fees payable for the renewal of an international registration consist of:

 A basic fee of:

o 653 Swiss francs (CHF)

 A Complementary fee of:

o 100 Swiss francs per designated Contracting Party

 Supplementary fee of:

o 100 Swiss francs for each class of goods and services beyond
three classes

OR

 Individual fees depending on the designated Contracting Party

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If a holder renews their international registration during the grace period, they will
incur a surcharge (50% of the basic fee).

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Summary

You now know:

 The different types of changes that can be recorded for an international
registration in the International Register and the forms associated with
each,
 The fees associated with each request, and
 Who can request the recordal of different changes.

Before we continue, let’s check your knowledge.

The correct answers to the questions can be found
at the end of this workbook.

Knowledge Check

Question:
Changes to an international registration that have effect in some or all of the
Contracting Parties concerned may occur during its lifetime. There are exceptions to
this rule. What are those exceptions?

Answer:

.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................

Question:
A holder requests a limitation of the list of goods and services in an international
registration in respect of all or some of the designated Contracting Parties. Will this
request affect the goods and services of the main list of the international application?
Please explain your answer.

Answer:

.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................

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Question:
What is the outcome for an international registration where WIPO has recorded a
total cancellation?

Answer:

.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................

Question:
A holder has requested the recording of renunciation of some of the Contracting
Parties designated in the international registration. Is it possible for the holder, at a
later date, to subsequently designate the Contracting Parties that were renounced?

Answer:

.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................

Question:
Are there any requirements that must be met by the transferee before a change in
ownership of an international registration may be recorded by WIPO?

Answer:

.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................

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Scenarios

Lifetime of a Subsequent Designation

A holder has an international registration designating Japan and Australia.

Renewal for the international registration is due on 20 August 2019.

The holder has decided to extend the geographical scope of their international
registration by subsequently designate New Zealand.

The holder files their subsequent designation directly with WIPO using e-Subsequent
Designation online system on 1 September 2018.

WIPO determines that the subsequent designation meets all requirements and the
date of the subsequent designation is recorded as 1 September 2018.

Question:
The renewal fees for the international registration are due on 20 August 2019. Which
of the designated Contracting Parties are the renewal fees to be paid for?

Please provide the reasonings for your answer.

Answer:

.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................

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Subsequent Designation

The holder of international registration 6050000, which has the date of registration
16 June 2003, has requested a subsequent designation on the following MM4 form:

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Question:

Can the holder designate the three designated Contracting Parties they have
selected on the MM4?

Please provide the reasonings for your answer.

Answer:

.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................

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Subsequent Designation – holder of the international registration

XYZ Pty Ltd is the holder of an international registration with designations in Japan,
New Zealand and the United Kingdom. They now wish to subsequently designate
the United States of America and Mexico.

However, prior to submitting the subsequent designation the holder had submitted a
MM9 form to request to change the name of the holder to 123XYZ Pty Ltd. This
change has yet to be recorded and the holder’s name is still recorded as XYZ Pty Ltd
in the International Register.

The holder submits the subsequent designation directly to WIPO.

Question:
Will WIPO record the subsequent designation based on the information in the MM4
form below? Please provide the reasonings for your answer.

Answer:

.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................

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Goods and services concerned by the Subsequent Designation

An international registration contains the following list of goods and services:

Class 9: sunglasses: sunglass cases; phone cases; mobile phones;

downloadable electronic publications; computer games software; computer
games programmes; data communications equipment; computer monitors;
computers; computer mouse pads; bags adapted for laptops; electronic
notebooks; headphones; camcorders; cameras; cases adapted for cameras;
battery chargers; electronic locks; fire resistant clothing; protective helmets;
car navigation apparatus

Class 25: Clothing, footwear, headgear

Class 35: Retail of goods; advertising; business management; public relations

The holder of the international registration wishes to subsequently designate
France for all the goods and services contained in the international
registration and New Zealand and Singapore for a limited list of goods.

The holder checks these Contracting Parties in item 4 (Designations) of the MM4
form. The holder has then completed the continuation sheet on the MM4 form
below:

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Question:
Based on the continuation sheet which box in item 5 of the MM4 below form should
the holder check? Please provide the reasonings for your answers.

Answer:

.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................

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Complete MM4 Form

An Office of origin has received the following MM4 form (designation subsequent to
the international registration).

The subsequent designation is based on the following international registration.

International Registration
602966

Holder
Rachel Dancer

Mark
ILoveDancing

Goods and Services

Class 25: Clothing

Class 41: Dance tuition

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Question:

Is the subsequent designation complete and ready to be presented to WIPO?

Please provide the reasonings for your answer.

Answer:

.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................

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Questions and Answers

Section 1

Question:
Subsequent designation is not possible in two situations. The first is where the
Contracting Party concerned is also the Office of origin. What is the second? Please
provide an explanation with your answer.

Answer:
A subsequent designation is also not possible where the Contracting Party has made
a declaration under Article 14(5) of the Madrid Protocol.

Some members have made such declaration, meaning that it may not be possible to
record a subsequent designation for those Contracting Parties where the date of the
international registration is prior to the date of when the Madrid Protocol entered into
force in that Contracting Party concerned.

In this case, to use the Madrid System for protecting the mark in the Contracting
Party concerned, a new international application designating that Contracting Party
has to be filed.

Question:
For a Contracting Party subsequently designated; when does the time limit begin for
issuing a provisional refusal, either totally or partially, in their territory, in accordance
with their national or regional legislation?

Answer:
For a subsequent designation, the time limit for issuing a provisional refusal begins
from the date on which WIPO has notified the Office of the designated Contracting
Party of the subsequent designation concerned (notification date).

Question:
When does the period of protection for a subsequent designation expire?

Answer:
A subsequent designation does not have an independent lifetime, but follows the 10-
year protection cycle of the international registration.

The period of protection for a subsequent designation expires on the same date as
the international registration to which it relates.

Question:
WIPO will examine a subsequent designation for compliance with formality
requirements and an irregularity notice will be issued if WIPO considers the
subsequent designation to be irregular.

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If the subsequent designation was submitted directly to WIPO, who will be notified of
the irregularity?

Answer:
WIPO will notify the holder.

Section 2

Question:
Changes to an international registration that have effect in some or all of the
Contracting Parties concerned may occur during its lifetime. There are exceptions to
this rule. What are those exceptions?

Answer:
A Contracting Party may declare that a change in ownership, limitation to the list of
goods and services, or the recording of a given licence has no effect in the
designated territory.

Question:
A holder requests a limitation of the list of goods and services in an international
registration in respect of all or some of the designated Contracting Parties. Will this
request affect the goods and services of the main list of the international
registration? Please explain your answer.

Answer:
No, the request for limitation will not affect the goods and services of the main list of
the international registration.

While the goods and services subject of the limitation will no longer have effect in the
designated Contracting Party concerned, they will not be removed from the main list
of the international registration and these can later be subject of a subsequent
designation for the same Contracting Party.

Question:
What is the outcome for an international registration where WIPO has recorded a
total cancellation?

Answer:
A total cancellation applies to all the designated Contracting Parties and all goods
and services covered by the international registration. With the recording of a total
cancellation, the international registration will no longer be in force.

Question:
A holder has requested the recording of a renunciation of some of the Contracting
Parties designated in the international registration. Is it possible for the holder, at a
later date, to subsequently designate the Contracting Parties that were renounced?

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Answer:
Yes, it is possible for the holder, at a later date, to record a subsequent designation
for the designated Contracting Parties which are the subject of the renunciation.

Question:
Are there any requirements that must be met by the transferee before a change in
ownership of an international registration may be recorded by WIPO?

Answer:
Yes, the change in ownership from one legal entity to another may only be recorded
if the new holder is a person who is entitled to file international applications under the
Madrid System.

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Scenario Answers
Lifetime of a Subsequent Designation

The renewal fees are for all Contracting Parties covered by the international
registration on the due date of 20 August 2019. In this case, Japan, Australia, and
New Zealand.

A subsequent designation has no independent protection period, but the period of

protection for a subsequent designation expires on the same date as the
international registration to which it relates. Renewal fees for all the designated
Contracting Parties must be paid at the time of renewal of the international
registration. Therefore, in this case, if the subsequent designation of New Zealand is
granted protection, it will expire on 20 August 2029 (rather than 1 September 2029).

Holders can request the subsequent designation to take effect after the recording of
a change, of the international registration; however, they must use the Official MM4
form to convey this instruction to WIPO.

Subsequent Designation

No, the holder cannot designate the three designated Contracting Parties they have
selected on the MM4.

Footnote 7 on the form states that it is not possible to subsequently designate India
and the Philippines in respect of an international registration effected prior to them
joining the Madrid Protocol. In the case of India, the relevant date is 8 July 2013, and
the Philippines 25 July 2012.

The date of international registration 605000 is 16 June 2003, so it is not possible for
the holder of this international registration to subsequently designate India and the
Philippines.

They may, however, subsequently designate the European Union.

Subsequent Designation – holder of the international registration

No, WIPO will not record the subsequent designation based on the information in the
MM4 form.

The holder’s name is still recorded as XYZ Pty Ltd on the International Register.
Because of this, the subsequent designation should have been submitted in that
name.
If the holder had checked box (b) in Item 7 and requested the subsequent
designation take effect immediately after the change of name is recorded, then
WIPO would record the subsequent designation after the change of name has been
recorded.

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Goods and Services concerned by the subsequent designation

The holder should check Box (c) in item 5 of the MM4 form.

The subsequent designation is made for all the Contracting Parties checked in item
4, for all the goods and services covered by the international registration for France,
but for a limited list goods (listed in the continuation sheet) for New Zealand and
Singapore.

Complete MM4 Form

No, the subsequent designation is not complete and ready to be presented to WIPO

The MM4 is either missing information or the information does not match the
international registration.

The subsequent designation has the following issues:

 Two holders are listed on the subsequent designation, however, the
international registration is in the name of Rachael Dancer only.
 The holder has not indicated the goods and services concerned by the
subsequent designation in Item 5.

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