Since January 6, 2014, an application for international registration of a trademark under the Madrid System (official form MM2), where BOIP would be the Office of origin, must be filed using the Madrid E-Filing Module (“MeF”). This electronic tool of the World Intellectual Property Organization (WIPO) is provided in cooperation with BOIP and available on our website.
When this tool was introduced, it did not provide a box for applicants to check to declare that the mark should be considered as a mark in standard characters (“Declaration of Standard Characters”). Such box was made available in MeF on December 1, 2016, which means that in the period from January 6, 2014 to December 1, 2016, it was not possible for applicants to make such a declaration. It is optional for the applicant to make such declaration. However, if the applicant wants to make this declaration it must in principal be made at the time of filing the international application.
WIPO and BOIP have discussed this situation in order to find a solution for the holders who filed international applications within the dates mentioned above, and who would have possibly made such declaration if the MeF had allowed for this.
These holders of international registrations will be allowed to request a correction in the International Register, under Rule 28 of the Common Regulations to the Madrid Protocol (“Common Regulations”), to record a Declaration of Standard Characters in their international registration. There is no time limit to ask for this correction.
A request for such correction must be submitted through BOIP.
Please note that the Declaration of Standard characters does not legally bind the Office or courts of a designated Contracting Party, which is free to determine what effect (if any) such a declaration has in its territory. It is up to the designated Contracting Party concerned to determine the scope of protection, in accordance with its domestic legislation and practice. In particular, an Office may consider that the mark is not in standard characters if it contains elements, such as accents, which are not standard in the language(s) used in that Contracting Party, even where a claim of standard characters has been made. Furthermore, an Office may also have considered that the mark is in standard characters even where no such claim has been made.
It should also be noted that designated Offices have the option under Rule 28(3) Common Regulations, within a time limit of 12/18 months, to issue a provisional refusal (ex officio refusal on absolute or relative grounds, opposition) – “to the international registration as corrected”. The decision whether an international registration will be re-examined upon receipt of notification of correction is to be taken by each individual Contracting Party; it cannot be excluded that some Offices will just accept the correction, while others will re-examine for the corrected part. It is not known to either WIPO or BOIP what the policy of each individual member state is in this respect. Holders that have already obtained protection in designated Contracting Parties may need to consider this before requesting correction.