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Trademark Treaties and International Law


Committee Description

The Trademark Treaties and International Law (TTIL) Committee considers the treaties of the United States and foreign countries and intergovernmental organizations, and the statutes, rules, regulations, and judicial decisions of foreign countries and intergovernmental organizations, as they relate to trademarks, trade names, and unfair competition which may affect the business of U.S. companies.

Cooperation with Others Within the AIPLA

The Committee coordinates its activities with the other trademark-related standing committees ("Content and Branding"), and with the Global Sector of the AIPLA.

Features of the TTIL Committee Home Page

The home page contains internal navigation links (left column), a "Public Calendar" and "Public Announcements" (center column, below) and a "Reference" section (right column, below). 

The links under "Reference" are to key public sector sources of information regarding trademark treaties and international law.  Collectively, they provide further insight as to the scope of the Committee's interests.

The "Public Calendar" lists key meetings and other activities--mostly of governments, intergovernmental organizations and bodies created under international law.   As the date of each entry passes, it is updated with whatever additional information might have been made available, e.g., a summary of a meeting.

"Public Announcements" provide information regarding recent developements that are useful in the practice of law, as opposed to, e.g., announcements regarding Committee business.  Typical subjects include the entry into force of a treaty or other international agreement, law, regulation or operating procedure or the release of an official publication, on-line service or other means of conveying practical information.

There is also a "Committee Members Site" that is devoted to the business and work of the TTIL Committee.  Among its features is the "TTIL Watch List [A-Z]," where topics of particular interest to the Committee are followed as they evolve and until such time as the release of a "Public Announcement" is warranted.  If you are a member of the AIPLA and of the TTIL Committee and you have logged on to the AIPLA website, a link entitled "Committee Members Site" will appear amongst the other TTIL navigation links (left column). 

 
 

 Public Calendar

 
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  Madrid Protocol EIF in Indonesia on January 2, 2018.
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 Public Announcements

 
  
Announcement Description
  
 USPTO Implements the 11th Edition of the Nice Classification

January 1, 2018

Changes to the International Classification of Goods and Services as implemented by the USPTO, may be found in the Federal Register, Volume 82, No. 230, Friday, December 1, 2017, Rules and Regulations, pages 56887-56890.  The relevant page on the Office of the Federal Register website may be found here.  The introductory Summary therein states as follows:

"The United STates Patent and Trademark Office (USPTO) issues a final rule to incorporate classification changes adopted by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Agreement).  These changes are effective January 1, 20187, and are listed in the International Classification of Goods and Services for the Pruposes of the Registration of Marks (11th ed., ver 2018), which is published by the World Intellectual Property Organization (WIPO)."

In adition to the usual detailed information, the Federal Register notice provides various means of contacting the USPTO for more information.

The page on the USPTO website that is devoted to "Guides, Manuals and Resources" with respect to trademarks may be found here.  Therein you will find various materials relating to classificaiton, including the USPTO "Acceptable Identification of Goods and Services Manual (ID Manual) Next Generation."  In addition to listing basic information about each entry, the ID Manual contains "Notes" for some entries where the choice of Class might benefit from further explanation.

  

Amendments to the Common Regulations and Administrative Instructions of the Madrid System that Entered into Force on November 1, 2017
[UPDATED]

The Madrid System news item regarding the amendments that entered into force on November 1, 2017, may be found here.  It summarizes the three key changes made to the Common Regulations that affect users directly:

1. Rule 9: Voluntary description of a mark
2. Rules 3, 25 and 32: Appointment or cancellation of a representative
3. Rule 24(5)(c): Cancellation of subsequent designation of the United States caused by irregularities with Form MM18

In due course, the International Bureau will issue an Information Notice* that is likely to include an explanation of all the amendments and a clean copy of the relevant legal texts, as well as post updated PDF copies of the Common Regulations and Administrative Instructions* here.

In the meantime, marked and clean copies of all the amendments that entered into force on November 1, 2017, may be found in MM/A/49/3 (July 7, 2015), Annexes II and IV, as adopted by the Madrid Union Assembly in MM/A/49/5 (February 5, 2015), paragraph 17, and MM/A/50/4 (August 2, 2016), Annexes II & V, as adopted by the Madrid Union Assembly in MM/A/50/5 (December 16, 2016), paragraph 22(i)-(iii).

Please note that paragraph 22(iv) in MM/A/50/5 suspended the entry into force on November 1, 2017, of certain amendments to Rule 24(5)(a) and (d) regarding the examination by the International Bureau of limitations in subsequent designations that had been proposed previously in paragraph 6 and Annexes II and IV of MM/A/49/3, and adopted by the Madrid Union Assembly in MM/A/49/5, paragraph 17.

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* UPDATE (November 9, 2017):  WIPO has since posted Information Notice No. 18/2017, "Amendments to the Common Regulations Under the Madrid Agreement and Protocol in force as from November 1, 2017."  It describes all the amendments and provides a marked up copy of the relevant legal texts.  WIPO also posted the November 1, 2017, versions of the Common Regulations and Administrative Instructions.

  
 "Contact Madrid" Will Replace intreg.mail@wipo.int as of November 1, 2017, and the Madrid Processing Team E-Mail Accounts as of December 15, 2017
 

Contact Madrid, WIPO's new service that can direct an inquiry, request or document to the right WIPO staff member, is available now.  Trademark owners or their representatives can use it to:

  • ask a question;
  • submit an official form; or
  • submit a response to an irregularity letter.

Consequently, intreg.mail@wipo.int will be discontinued on November 1, 2017, and the Madrid Processing Team email accounts (e.g., madrid.team1@wipo.int ) on December 15, 2017.

English, Spanish and French-speaking experts are and will remain available Monday to Friday, from 9.00 to 18.00 (Geneva time) to assist you by telephone at +41 (0)22 338 86 86.

The WIPO press release describing the changes in more detail may be found here.

The current "Contacts" section of the homepage of the Madrid System may be found here.

  
 Madrid Monitor To Replace ROMARIN, MEA and MRS on December 1, 2017

On December 1, 2107, ROMARIN, Madrid Electronic Alert (MEA)* and Madrid Real-Time Status (MRS)* will be discontinued.  Thereafter, the Madrid Monitor will be the only tool provided by WIPO for monitoring international applications and registrations.  The pages of the WIPO website devoted to this change may be found here.  They include, inter alia, the following information:

1. Eight-Part Tutorial on how to use the Madrid Monitor

2. Quick-Start Guide for the Madrid Monitor

3. Overview on how to monitor international applications and registrations
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* UPDATE (October 25, 2017):  It seems that the URLs for the MEA and MRS have been disabled.  Nevertheless, their functions have been incorporated into the Madrid Monitor.

  

​Madrid Protocol Enters into Force in Indonesia on January 2, 2018

On October 2, 2017, the Government of Indonesia deposited with the Director General of WIPO its instrument of accession to the Madrid Protocol, making Indonesia the 100th member of the Madrid Union and thus of the Madrid System.  The Protocol will enter into force in Indonesia on January 2, 2018.  The page on the WIPO website devoted to the accession of Indonesia may be found here.

Of the ten ASEAN Member States, eight (Brunei, Cambodia, Indonesia, Laos, Phillipines, Singapore, Thailand and Vietnam) have joined the Madrid System, and two (Malaysia and Myanmar) have yet to do so.  

All ASEAN Member States have committed to accede to the Madrid Protocol in accordance with the "ASEAN Economic Community 2025 Consolidated Strategic Action Plan (CSAP)," a document containing "key action lines" for achieving economic integration pursuant to the "ASEAN Economic Community (AEC) Blueprint 2025."  More information on the AEC may be found here.

  

EU Trade Mark (EUTM) Reform:
Provisions that Come into Effect on
October 1, 2017

 
On March 23, 2016, Regulation (EU) 2015/2424 of the European Parliament and the Council amending the Community trade mark regulation (the Amending Regulation) entered into force.  Some provisions came into effect on that date, others came into effect today, as they had to be developed by secondary legislation.
 
Accordingly, the European Intellectual Property Office (EUIPO), formerly the Office for the Harmonization of the Internal Market (OHIM), has dedicated part of its website to the changes relating to the European Union Trade Mark (EUTM), formerly the Community Trade Mark (CTM), that apply as of October 1, 2017.  The relevant pages, which may be found here, include, among other things:
 
1) A video (3:30) summarizing the scope of the changes.
 
2) Detailed explanations of the three main areas of change:  graphical representation-types of mark, EU certification marks and various procedural changes (priority, acquired distinctiveness as a subsidiary claim, opposition/cancellation proceedings, online substantiation, languages and translation, assignment of EUTM as a remedy, communication with the Office, Boards of Appeal and transitional provisions).
 
3) Information Resources
(latest news and on-going webinars, workshops and events)
 
4) Relevant Legislation and Guidelines
 
5) Awareness and Promotional Content
(videos and publications, including a downloadable brochure and 27-page summary)
 
6) FAQs and an ability to send the EUIPO a question in an e-mail.

The Alicante News, a publication of the EUIPO, published two articles on this topic in recent months: "Second Phase Legislative Reform On Sunday 1 October 2017" in its September edition, and "The countdown is on, Second Phase Legislative Reform 1 October 2017" in its June edition.

The "TTIL Watch List [A-Z]" on the Trademark Treaties and International Law (TTIL) "Committee Members Site" contains a section devoted to EU trade mark reform.

  

Cambodia and Thailand Elect to Receive An Individual Fee under the Madrid System as of October 31, 2017, and
November 7, 2017, Respectively

WIPO published two information notices regarding the election, pursuant to Article 8(7)(a) of the Madrid Protocol, of Cambodia (Information Notice No. 14/2017) and Thailand (Information Notice No. 15/2017) to receive an individual fee when designated in an international registration, in a designation subsequent to international registration and in respect of the renewal of an international registration (instead of a share in the revenue produced by the supplementary and complemnetary fees).

The Cambodian election to receive an individual fee shall have effect on October 31, 2017.  The Madrid Protocol entered into force in Cambodia on June 5, 2015.

The Thai election to receive an individual fee shall have effect on November 7, 2017, the same day the Madrid Protocol enters into force in Thailand.  See the separate Public Announcement below regarding the accession of Thailand.

  

Madrid Protocol Enters into Force in Thailand on November 7, 2017

On August 7, 2017, the Government of Thailand deposited with the Director General of WIPO its instrument of accession to the Madrid Protocol, making Thailand the 99th member of the Madrid Union and thus of the Madrid System.  The Protocol will enter into force in Thailand on November 7, 2017.  The page on the WIPO website devoted to the accession of Thailand may be found here.

Of the ten ASEAN Member States, seven (Brunei, Cambodia, Laos, Phillipines, Singapore, Thailand and Vietnam) have joined the Madrid System, and three (Indonesia, Malaysia and Myanmar) have yet to do so.  

All ASEAN Member States have committed to accede to the Madrid Protocol in accordance with the "ASEAN Economic Community 2025 Consolidated Strategic Action Plan (CSAP)," a document containing "key action lines" for achieving economic integration pursuant to the "ASEAN Economic Community (AEC) Blueprint 2025."  More information on the AEC may be found here.


  

Madrid System:  Simplified Procedure for Requesting a Change in the Legal Nature of a Holder of an International Registration that is a Legal Entity

Starting July 1, 2017, the holder of an international registration that is a legal entity can add or update its legal nature as recorded by WIPO (e.g. limited liability company, cooperative, corporation) using the same form required for a standard name or address change (Form MM9). A change in the territory where the legal entity is organized can also be requested using Section 4 of MM9.  WIPO has posted a special news release and related links here.  Regarding all amendments that enter into force on July 1, 2017, see the TTIL Committee Public Announcement of June 12, 2017, entitled, "Amendments to the Common Regulations and Schedule of Fees of the Madrid System that Enter into Force on July 1, 2017," which may be found below or, if you are not already there, on the "Trademark Treaties and International Law Home" page.

  

Amendments to the Common Regulations and Schedule of Fees of the Madrid System that Enter into Force on July 1, 2017

The amendments address the examination, by the International Bureau, of a limitation in an international application (Rule 12); the requirements with respect to a separate request filed by the holder to record a limitatiaon, and its subsequent examination by the International Bureau (Rules 25 to 27); and the ability of a holder, in a separate request, to add or amend indications regarding the legal nature and the State, and, where applicable, the territorial unit within that State, under the law of which it has been organized (Rules 25 to 27, 35, item 7.4 of the Schedule of Fees and MM9).
 

A description of the amendments, including a clean copy of the legal texts, may be found in Madrid System Information Notice No. 11/2017 (June 12, 2017).   

A track changes version of the amendments may be found in Annex I of WIPO document MM/A/50/4 (August 2, 2016), "Proposed Amendments to the Common Regulations Under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement," as adpoted by the Assembly of the Special Union for the International Registration of Marks ("Madrid Union Assembly") on October 11, 2016, at its Fiftieth (29th Extraordinary) Seesion, held from October 3 to 11, 2016, and reported in paragraph 22(i) of WIPO document MM/A/50/5 (December 16, 2016), "Report."

All legal texts of the Madrid System, including the Common Regulations​, may be found here.  MM9 may be found here.

  

​Canada:  Proposed Trade-marks Regulations Released for Public Consultations (June 19 to July 21, 2017)

In anticipation of Canada's eventual accession to the Madrid Protocol, Singapore Treaty and Nice Agreement, as well as the modernization of its opposition, section 45 and objection proceedings, the Canadian Intellectual Property Office (CIPO) posted proposed Trade-marks Regulations for public comment from June 19 to July 21, 2017.

An overview, three video information sessions, a consultation document, instructions regarding submissions and the Trade-Marks Regulations themselves, may be found here.


  

ROMARIN to be Replaced by the Madrid Monitor in "Late 2017"

WIPO has published the following notice on its website:

"Starting late 2017, ROMARIN, Madrid E-Alert [MEA] and Madrid Real-Time Status [MRS] will no longer be available on the WIPO website.  Madrid Monitor integrates the functions and content of these tools, which will be discontinued later this year.  Over the next several months, we will provide you with training and resources as we transition together towards the next era in Madrid e-services."

In anticipation of the retirement of ROMARIN and the stand-alone versions of MEA and MRS, users can become familiar with the beta version of the Madrid Monitor and its Quick Start Guide.

Although the main Madrid pages of the WIPO website no longer have links to the MEA and MRS, they may still be accessed via the former page for Madrid System "E-Services."
 
General information about the recent changes in WIPO's Madrid E-Services, as well as the aforementioned notice, may be found here
 
See also the prior Announcement of the Trademark Treaties and International Law Committee entitled, "Madrid System: WIPO to Offer Webinars in June on the Use of the Madrid System."

 

  

​TM5: "Continuation/Expansion Bad Faith Project"

The JPO is the lead office in a TM5 project entitled, "Continuation/Expansion Bad Faith."  According to the TM5 website, the project's objectives are to "share information among partner offices on (1) laws and regulations, (2) examination practices and (3) issues regarding bad-faith trademark filings" and "raise user awareness on ways they can respond to bad-faith trademark filings."  In addition to the information and documents that have been posted on the TM5 website since the project's inception, the PDF document entitled, "Case Examples [JPO, KIPO, EUIPO, SAIC and USPTO] of Bad-Faith Trademark Filings (May 21, 2017)" may be found here.

  
TM5: "Project to Improve Convenience of the Madrid Protocol by Enriching Information"

The JPO is the lead office in a TM5 project entitled, "Project to Improve Convenience of the Madrid Protocol by Enriching Information."  According to the TM5 website, "This project aims to provide users with 'easy-to-use information guide' regarding the domestic procedures and requirements of TM5 partners in the standardized format, thereby ensuring that users of the Madrid protocol file international applications, and respond to notifications of provisional refusal to the Office of Designated Parties."  A description of the project as well as PDF guides for each of the five TM5 Offices (JPO, KIPO, EUIPO, SAIC and USPTO) may be found here.


  
 WIPO's Member Profiles Database for the Madrid System Goes Online

Periodically, the International Bureau requests that the IP offices of the Contracting Parties of the Madrid System provide information about their respective trademark laws and examination procedures as they relate to the Madrid System.  This information is now available in a new and more powerful format: the Member Profiles Database (MPD). 

The MPD allows users to retrieve specific or all information about one or more or all Contracting Parties.  The results can be converted into a PDF file and downloaded.  For more information on how it works, see the "Member Profiles Database Quick Start Guide." 

While not an official publication, the MPD databse may prove to be a useful and low-cost way to get an initial idea of what to expect or where further investigation might be needed.

Information about the recent changes in WIPO's Madrid E-Services in general, as well as the launching of the MPD in particular, may be found here.

  

WIPO Publishes its "Examination Guidelines Concerning the Classification of Goods and Services in International Applications (March 2017)"

 

In an effort to better communicate the internal policies on classification applied by its Madrid System examiners, WIPO has published its “Examination Guidelines Concerning the Classification of Goods and Services in International Applications” (Guidelines).  


As stated on the WIPO website:  “Every international trademark application filed through WIPO’s Madrid System must include a list of the goods and services covered by your mark. Your list should be clear and concise, and must follow specific rules on how to categorize (or “classify”) each item—in short, it must comply with the principles of the International Classification of Goods and Services or “Nice Classification."   If these requirements are not met, your application will not pass examination and an “irregularity” notice will be issued.”

 

Another important point raised by WIPO is the benefit of using the Madrid Goods and Services Manager (MGS)​—WIPO’s database of goods and services that are acceptable to the International Bureau and more—in conjunction with the new Guidelines. 


“And more” refers to such features as the 18 languages in which the content of the MGS is available as well as the ability to translate from any one language to another (useful for enforcement), the “Check acceptance by a designated Contracting Party” feature (32 plus Canada) that indicates whether a particular good or service that is accepted by the International Bureau will be rejected nevertheless by a national or regional office for one reason or another (e.g., a higher standard of specificity) and the inclusion of group codes for Japan and Korea as well as an ability to search all terms that fall within a given group code.

 

While the Guidelines and MGS may not eliminate the need to consult national or regional databases of acceptable goods and services, they are useful tools—perhaps indispensable in view of Article 3(2) of the Madrid Protocol and Rules 12 and 13 of the Common Regulations—for drafting indications of goods and services in international applications, and even in national or regional applications which may become the subject of an international application.

 

More Information


General information on how to use the Guidelines in conjunction with the MGS database may be found here.

General information about the ever-increasing capabilities of the MGS database may be found here

The most recent official publications released by WIPO regarding the MGS database include:


1) "New Version of the Madrid Goods and Services Manager (MGS)​," Information Notice 16/2016 (March 22, 2016)

 

2) “Progress Report on the Madrid System Goods and Services Database,” Madrid Union Assembly document MM/A/50/1 (July 4, 2016)

  

All legal texts of the Madrid System, including the Madrid Protocol and the Common Regulations​, may be found here.