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WIPO'S NEW REGULATION REGARDING THE TIMEFRAME FOR APPEALS AGAINST PROVISIONAL REFUSAL

DECISIONS OF CONTRACTING PARTIES



Several significant decisions were made at the 25th Ordinary General Assembly¹ of the Madrid Union. The most crucial change directly affecting both the offices of contracting parties ("Contracting Parties") of the Madrid Agreement ("Agreement") and the parties applying for an international trademark registration ("IR") is related to the amendment of Article 17 of the Regulations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks².


The mentioned amendment pertains to the timeframes granted by the Contracting Parties to the IR applicants to respond to or appeal against the refusal decision of an IR application in their countries. These refusal decisions include both decisions made ex officio (known as the first examination) and decisions made as a result of opposition from third parties during the publication period of trademarks (or both)³.


As of November 1, 2023, according to the amendment, the Contracting Parties under the Agreement must provide a period of no less than 2 months for the IR applicants to respond to or appeal against the aforementioned refusal decisions⁴. The specified period is defined as 2 months or 60 consecutive days or 60 calendar days⁵.

So, why is this amendment important? As known, using the Madrid System allows us to file trademark applications in multiple countries simultaneously. However, the convenience we have at the application stage is not consistently experienced during the subsequent process. Applications undergo examination progress according to the national legislation of each country and many subsequent procedures are determined based on the practices of that country. Thus, differences in the timeframes for responding to refusal decisions by the Contracting Parties, which can be too limited in some countries or show variations in the calculation methods, pose a significant challenge for IR applicants. The mentioned amendment is a significant step towards resolving this issue.


The amendment aims to ensure both the uniformity of minimum periods to respond to the refusal decisions in all Contracting Parties and to provide a more reasonable period in Contracting Parties that currently allow insufficiently short timeframes for such responses and appeals. As a well-known example, only 15-day period is granted for filing an appeal against a provisional refusal decision in China (CTMO), which is considered quite short for many applicants (when another 15-day notification period of the notice is not taken into account).


The Contracting Parties are given until February 1, 2025, to make the necessary local adaptations in their legislation to implement this change⁶. The necessary adaptation may also be completed after February 1, 2025, if a notification is sent to the International Bureau before this date⁶.

There is no change or development for IR applications in which Türkiye is designated. The period for filing an appeal against the refusal decisions given by the Turkish Patent and Trademark Office is already 2 months⁷.


At the background of this amendment, which is a positive development for the IR applicants, lies a significant effort by the Working Group on the Legal Development of the Madrid System for the International Registration of Marks ("Working Group"). The reports from 2019⁸ and 2021⁹ indicate that these efforts have been on the agenda for a long time.


In conclusion, I believe that this amendment, which is a positive development for the IR applicants, will increase their preference for the Madrid System. The concrete results of such harmonization efforts over time are crucial for streamlining, accelerating, and making processes related to the global protection of intellectual and industrial property rights more efficient.


References:

²: Regulations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (as in force on November 1, 2023): https://www.wipo.int/wipolex/en/text/588448

³: Rule 17 (1) (a) of Regulations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks

⁴: Rule 17 (2) (vii) of Regulations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks

⁶: Rule 40 (8) of Regulations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks

⁷: Industrial Property Code No. 6769, Article 20-(2) https://www.mevzuat.gov.tr/mevzuatmetin/1.5.6769.pdf


Esra BÖĞÜRCÜ SÜNGERLİ

Trademark Attorney

info@juniper-ip.com

November 11, 2023

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