Workbook: Module 2 Accession

Topic 2: Key Area of Preparations

Madrid Training Project

WORKBOOK

Module 5
Communication with WIPO and Online Tools and Services
Topic 1: Communication with WIPO
Madrid Training Project
Workbook: Module 5 Communication with WIPO and Online Tools and Services
Topic 1: Communication with WIPO
Madrid Training Project

Introduction
Welcome to Topic 1 of Module 5 the Madrid System eLearning Training Course.
This workbook is provided as a companion to the online learning modules and
contains questions to test your understanding of the information.

In Module 5 we will be looking at how applicants, holders of international

registrations, their representatives, and IP Offices can communicate with WIPO. We
will also explore the Madrid System online tools and services provided by WIPO.

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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Workbook: Module 5 Communication with WIPO and Online Tools and Services
Topic 1: Communication with WIPO
Madrid Training Project

Contents
Introduction...................................................................................................................1
Module Outline..............................................................................................................4
Learning Outcomes......................................................................................................5
Section 1: Communication with WIPO......................................................................6
Type of Communication............................................................................................6
Language of Communication....................................................................................7
Communications from an IP Office or an Applicant or Holder to WIPO...............7
Communications from WIPO to an IP Office.........................................................7
Communications from WIPO to an Applicant or Holder........................................8
Methods of Communication with WIPO....................................................................8
Communications by Mail.......................................................................................8
Communications by Electronic Means..................................................................9
Summary...................................................................................................................9
Knowledge Check...................................................................................................10
Section 2: Electronic Systems and Online Services for Sending Communications to
WIPO..........................................................................................................................12
Online Services available to Applicants and Holders, their Representatives and IP
Offices.....................................................................................................................12
Contact Madrid Service.......................................................................................12
Madrid eFiling......................................................................................................12
Online Services available to Applicants, Holders and their Representatives.........14
Madrid Portfolio Manger......................................................................................14
Electronic Systems and Online Services available to IP Offices............................14
Madrid Electronic CommunicAtion (MECA) service............................................15
Madrid Office Portal (MOP).................................................................................16
Summary.................................................................................................................16
Knowledge Check...................................................................................................17
Section 3: Communication Requirements..................................................................19
Forms for Communication.......................................................................................19
Official Forms......................................................................................................19

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Workbook: Module 5 Communication with WIPO and Online Tools and Services
Topic 1: Communication with WIPO
Madrid Training Project

Model Forms........................................................................................................19
Self-Generated Forms.........................................................................................19
General Letters and Requests............................................................................20
Communication Time Limits....................................................................................20
Irregularities in Postal and Delivery Services and in Communications Sent by
Electronic Means.....................................................................................................20
Rule 5(1)(i)...........................................................................................................21
Rule 5(1)(ii)..........................................................................................................21
Rule 5(1)(iii).........................................................................................................21
Rule 5(3)..............................................................................................................21
Time Limits Not Met................................................................................................21
Summary.................................................................................................................22
Knowledge Check...................................................................................................22
Questions and Answers..............................................................................................24

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Workbook: Module 5 Communication with WIPO and Online Tools and Services
Topic 1: Communication with WIPO
Madrid Training Project

Module Outline
Module 5 of the Madrid Training Project is intended to provide current and future
users of the Madrid System with an overview on how they can communicate with
WIPO and access the Madrid System online tools and services provided by WIPO.

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

Topic 1 contains three sections and includes knowledge check questions and
scenarios at various points to ensure you have understood the preceding material.

The subjects covered Topic 1 are:

1. Communicating with WIPO, including:

o Types of communication,
o Language of communication, and
o Methods of communication.

2. Electronic Systems and Online Services for sending Communications to

WIPO, including:
o Online Services Available to Both Applicants, Holders of
International Registrations, their Representatives and IP Offices,
o Online Services Available to Applicants, Holders of International
Registrations and their Representatives, and
o Electronic Systems and Online Services Available to IP Offices.

3. Communication Requirements, including:

o Forms for Communication,
o Communication Time Limits, and
o Irregularities in Postal and Delivery Services and in
Communications Sent by Electronic Means.

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Workbook: Module 5 Communication with WIPO and Online Tools and Services
Topic 1: Communication with WIPO
Madrid Training Project

Learning Outcomes
This topic is intended to provide current or future users of the Madrid System with an
overview on how to communicate with WIPO.

At the end of Topic 1 you should be able to:

 Identify how IP Offices can communicate with WIPO,

 Indicate how applicants, holders and their representatives can
communicate with WIPO,
 Recall which languages must be used for the various communications
under the Madrid System, and
 Outline the time limits for communications.

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Workbook: Module 5 Communication with WIPO and Online Tools and Services
Topic 1: Communication with WIPO
Madrid Training Project

Section 1: Communication with WIPO

Type of Communication

Communication in the Madrid System can occur between:

 WIPO and national or regional IP Offices of the Contracting Parties,
 WIPO and applicants, holders of international registrations or their
representatives, and
 Applicants, holders of international registrations or their representatives
and national or regional IP Offices.

The form and the manner, the language, and the effective date of communications
between:
 WIPO and national or regional IP Offices, and
 WIPO and applicants, holders of international registrations or their
representatives

is governed by the Common Regulations and the Administrative Instructions under

the Madrid Protocol. As you progress through this module, this type of
communications will be looked at in more detail.

You can view the Common Regulations and the Administrative Instructions on the
WIPO website: http://www.wipo.int/madrid/en/legal_texts/

Communications occurring between applicants, holders of international registrations

or their representatives and national or regional IP Offices are governed by the law
and practice of the Contracting Parties concerned.

Note, this type of communications will not be explored in this module.

To assist applicants and holders, the Madrid Member Profiles Database provides
information of the practices and procedures of the Madrid System’s members across
the globe.

The database provides information about the requirements of national or regional IP

Offices under the Madrid System, including which language(s) must be used for
notifications and responses, as well as any associated time limits.

The Madrid Member Profiles Database

(http://www.wipo.int/madrid/memberprofiles/#/) as well as a quick start guide on how
the use the database
(http://www.wipo.int/edocs/pubdocs/en/wipo_madrid_members.pdf), can be found on
the WIPO website.

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Workbook: Module 5 Communication with WIPO and Online Tools and Services
Topic 1: Communication with WIPO
Madrid Training Project

Language of Communication

The following general principles concerning the language of communication apply to:
 Communications from an IP Office or an Applicant or Holder to WIPO.
 Communications from WIPO to an IP Office.
 Communications from WIPO to an Applicant or Holder.

Communications from an IP Office or an Applicant or Holder to WIPO

An international application must be filed in English, French or Spanish, which are

the official languages of the Madrid System (working languages). The Office of
origin may restrict this choice to only one or two of the languages, or may permit the
applicant to choose between any of the three languages.

Any communication concerning an international application or registration must also

be in one of the working languages, irrespective of the language in which the
international application was filed. However, there are two exceptions to this rule:

 Where a notification of provisional refusal (whether this is ex officio or

based on opposition) refers to an application or registration of a conflicting
mark in the territory concerned, the list of goods and services covered by
the conflicting mark can be in the language of that application or
registration.

 Where a Contracting Party has notified WIPO that it requires a declaration

of intention to use the mark, it may require that the declaration be
specifically in one of the three working languages of the Madrid System,
irrespective of the language in which the international application was
filed.

Communications from WIPO to an IP Office

Any notification concerning an international application or registration that WIPO

sends to an
IP Office will be in the language in which the international application was filed.

However, an IP Office may notify WIPO that it wishes to receive notifications in

another official language of the Madrid System, which is different from the language
in which the international application was filed. This enables an IP Office to accept
notifications only in the specific language it requires.

Where notifications by WIPO concern the recording in the International Register of

an international registration, the notification will indicate the language in which the
relevant international application was filed.

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Workbook: Module 5 Communication with WIPO and Online Tools and Services
Topic 1: Communication with WIPO
Madrid Training Project

Communications from WIPO to an Applicant or Holder

Any notification concerning an international application or registration that WIPO

sends to an applicant or holder will be in the language in which the international
application was filed.

However, an applicant or holder may notify WIPO that they wish to receive all such
notifications in English, French or Spanish, irrespective of the language in which the
international application was filed. The applicant can simply check the relevant box in
the international application form to make such a request, and a similar box is made
available for the new owner in the MM5 form for changing ownership.

Methods of Communication with WIPO

Communications between WIPO and applicants, holders or their representatives

must be in writing. They can be transmitted to WIPO, preferably by electronic means
using the Contact Madrid service, but can be sent to WIPO by mail.

Communications between WIPO and national or regional IP Offices is preferably by

electronic transmission of data but can also be sent to WIPO by mail. The electronic
transmission of data is made in the manner agreed between WIPO and the Office
concerned. WIPO encourages IP Offices to send their communications preferably
through the XML exchange with WIPO, or via Madrid Office Portal (MOP) or the
Contact Madrid service.

Any communication in writing submitted to WIPO must be typed or otherwise printed.

Handwritten communications are not acceptable.

The communication must be signed. The signature may be handwritten, printed or

stamped, or may be replaced by a seal. There is no need to indicate in letters the
name of the person whose seal is used.

Communications by Mail

Communications may be sent to WIPO by mail, through a postal or other delivery

service.

If several documents are mailed in the one envelope, they should be accompanied
by a list identifying each one of them. WIPO will inform the sender of any
discrepancy between the list and what is actually received.

WIPO’s mailing address is:

World Intellectual Property Organization (WIPO)
34, Chemin des Colombettes
CH-1211 Geneva 20
Switzerland

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Workbook: Module 5 Communication with WIPO and Online Tools and Services
Topic 1: Communication with WIPO
Madrid Training Project

While the communications by mail are fully accepted, WIPO would

prefer to receive and send communications by electronic means.
Applicants, holders or their representative can therefore provide
their email address and WIPO will communicate electronically with

Communications by Electronic Means

WIPO actively encourages all users of the Madrid System to communicate

electronically, and has provided a number of online systems and services to enable
this type of communication.

Some of the online systems and services proposed by WIPO can be used by
applicants and holders, their representatives and IP Offices, whereas others are
designed for a specific group of users only.

In the next section, we will find out which online services and electronic systems are
available to each group.

Summary

You now know:

 The types of communications that can occur in the Madrid System and the
languages in which they must be made,
 Communications between WIPO and IP Offices, applicants, holders or
their representatives are governed by the Common Regulations and
Administrative Instructions under the Madrid Protocol,
 Communications between IP Offices and applicants, holders or their
representatives are governed by the law and practice of the Contracting
Parties concerned, and
 Communications can be transmitted to WIPO by mail or by electronic
means.

Before we continue, let’s check your knowledge. The

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

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Workbook: Module 5 Communication with WIPO and Online Tools and Services
Topic 1: Communication with WIPO
Madrid Training Project

Knowledge Check

Question:
When an IP Office or an applicant or holder sends communication to WIPO
concerning an international application or registration, that communication must be in
one of the working languages, irrespective of the language in which the international
application was filed. However, there are two exceptions to this rule. What are those
exceptions?

Answer:

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

Question:
Any notification concerning an international application or registration that WIPO
sends to an applicant or holder will be in the language in which the international
application was filed. Is this always the case? Please explain your answer.

Answer:

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

Question:
Communications between WIPO and national or regional IP Offices may be in typed
or otherwise printed writing or in the form of electronic transmission of data. The
communications in writing can be sent to WIPO by mail (in hard copies) or by
electronic means.

What is WIPO’s preferred method of receiving correspondence?

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Workbook: Module 5 Communication with WIPO and Online Tools and Services
Topic 1: Communication with WIPO
Madrid Training Project

Answer:

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

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Workbook: Module 5 Communication with WIPO and Online Tools and Services
Topic 1: Communication with WIPO
Madrid Training Project

Section 2: Electronic Systems and Online Services for

Sending Communications to WIPO
Online Services available to Applicants and Holders, their Representatives
and IP Offices

Contact Madrid Service

Contact Madrid is an online communication service, which allows applicants,

holders, their representatives and IP Offices to ask questions, reply to irregularity
letters and submit various requests for recording of changes to an international
registration under the Madrid System. Users can send their requests and enquires in
English, French or Spanish.

Contact Madrid is the preferred and most effective way to connect with the Madrid
Customer Service team.

Contact Madrid allows the user to:

 Upload documents, forms, notifications and responses,
 Request extracts from the International Register,
 Request technical support for any of WIPO’s e-services and online tools,
 Enquire about invoices and payments, and
 Send questions or comments directly to WIPO twenty-four hours a day,
seven days a week.

The Madrid Customer Service team can also be contacted

on:
Telephone: +41 22 338 86 86
Opening hours: Monday - Friday, 9:00 am to 6:00 pm
(Geneva time).
Internet: http://www.wipo.int

Madrid eFiling

Madrid eFiling is a web-based filing system that allows for the easy filing of
international applications electronically.

What is Madrid eFiling?

Madrid eFiling is a modern, web-based filing system that allows for the easy
filing of international applications electronically. It consists of a module for
applicants and a module for Offices of origin.

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Workbook: Module 5 Communication with WIPO and Online Tools and Services
Topic 1: Communication with WIPO
Madrid Training Project

Benefits to the Applicant

An applicant is able to file an international application electronically just as
they would with the MM2 form. The information provided in the applicant’s
basic mark is automatically imported into their international application and
once complete, the application is sent to their national or regional IP Office for
certification. An applicant can also save a partially completed application to
return to at a later time.

Benefits to the Office of origin

The Office of origin module allows Offices to review, validate, and certify that
the information contained in the international application corresponds with the
particulars of the basic application or registration before transmitting this to
WIPO.

The system is currently being used by IP Australia and the Benelux Office for
Intellectual Property (BOIP). Both Offices have reported a decrease in the
number of filing irregularities to be resolved and a marked decrease in the
pendency time between receiving an international application and
transmission to WIPO.

Integration
There are two primary integration points between Madrid eFiling and a
national or regional IP Office that need to be implemented before the service
can be considered fully functioning:
 User authentication and registration is done with WIPO’s external
authentication service, and
 Electronic access to the registry from which the basic mark information
is retrieved. This could be the register of the national or regional Office
of origin, the WIPO Global Brand Database or TMview (hosted by the
European Union Intellectual Property Office (EUIPO)). If an Office of
origin opts to use the WIPO Global Brand Database or the EUIPO
TMview to access information about the basic mark, WIPO will perform
the implementation.

Applicant filing Tools

For national or regional IP Offices, whose domestic filing language is not one
of the Madrid filing languages, applicants can use the WIPO Madrid Goods
and Services Manager (MGS), the EUIPO TMclass or Google Translate to
assist translating and validating the classification of the electronically imported
list of goods and services.

Getting Started
Any interested IP Office can request a sandbox trial (isolated computing
environment) of the Madrid eFiling service. This will allow them to evaluate
the feasibility of the service for filing, examining and validating prepopulated
applications, from the perspective of both an applicant and an Office user.
Requests can be sent through the Contact Madrid service (identify yourself as

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Workbook: Module 5 Communication with WIPO and Online Tools and Services
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Madrid Training Project

an IP Office, then select “technical assistance”). Contract Madrid is available

through the WIPO website.

Online Services available to Applicants, Holders and their Representatives

Madrid Portfolio Manger

Madrid Portfolio Manager (MPM) is an online service that facilitates electronic

communication with WIPO for applicants, holders and their representatives.

Users are able to:

 Upload requests for changes, renewals, subsequent designations (forms),
 Check the status of the requests,
 Pay fees, and
 View and securely download communications from IP Offices and WIPO.

The Madrid Portfolio Manager will be looked at more closely in

Topic 2 of this Module.

Electronic Systems and Online Services available to IP Offices

The Industrial Property Administration System (IPAS) is a flexible, modular system

that can be customized to individual Industrial Property Offices to automate their IP
business and administrative processes from application reception to registration,
including post-registration actions such as amendments, assignments, renewal and
annuities.

It is one of the key components of the global IP infrastructure that is developed and
used by WIPO, along with a set of modernization services, to offer a comprehensive
sustainable automation solution to requesting Offices from developing countries with
diverse levels of development, resources, capacity, skills and infrastructure. It is
operational in IP Offices across regions and has become an integral part of their day-
to-day work.

What is IPAS?
IPAS is a flexible, modular web-based system that can be customized to the
needs of individual IP Offices to automate their IP business and administrative
processes. IPAS will handle the complete process of national /regional
trademark processing in the Office. In addition, where the Madrid Module is
installed, IPAS can be used from the start of the Madrid process to receive
designations of international registrations from WIPO, and notifications from

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Madrid Training Project

WIPO on any post-registration actions, such as amendments, change of

name/address of holders/representatives, change in ownership and renewal.

What it Does
IPAS simplifies procedures and deals with the end-to-end processing of
marks throughout their life cycle.

Customization
IPAS is extensively customizable to adapt to individual national requirements
and may include: national/regional IP legislation, workflow processes, actions
and statuses, legal time-periods and deadlines, templates of official
correspondences, certificates, gazettes, language, calendar support, data
migration from legacy databases. No software programming is required in
IPAS at customization but close collaboration between the IP Office and
WIPO is expected during the customization and verification process.

Cost/Training
As IPAS is owned by WIPO, it is compliant with WIPO and industry standards,
and can be provided at no cost to requesting IP Offices to develop and
improve their capacity and efficiency of IP registration activities and to enable
them to better serve their IP stakeholders. WIPO provides training and
knowledge transfer to IP Office staff to increase their self-reliance. WIPO also
provides technical online or on-site support to resolve any system related
problems, if required, and new releases as appropriate.

Development
Ongoing enhancement of IPAS is an integral part of its development and
maintenance. The system is continually improved in functionality and updated
based on feedback from IP Offices and kept up-to-date to take advantage of
new emerging technologies.

Availability
New releases of IPAS are provided online via the Internet.

Madrid Electronic CommunicAtion (MECA) service

The Madrid Electronic CommunicAtion (MECA) service is an easy way to exchange

documents with WIPO securely and efficiently. Any communication that is sent in
hardcopy format can be sent to WIPO electronically (in XML format) using the MECA
service.
Likewise an Office can also request that all notifications from WIPO to the Office be
sent electronically through the MECA service.

Access to and/or technical support for the MECA service can be requested through
Contact Madrid (identify yourself as an IP Office, then select “technical assistance”).

Contract Madrid is available through the WIPO website:

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

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Madrid Training Project

Madrid Office Portal (MOP)

The Madrid Office Portal (MOP) is an online service providing IP Offices with
comprehensive electronic access to the International Register of Marks and a means
of electronic communication with WIPO.

MOP allows IP Offices to:

 View real-time status of examination and registration processes,
 View and search WIPO’s back office systems and have access to official
documents received by WIPO,
 View decisions from designated Contracting Parties – grants of protection,
provisional refusals, etc.,
 View irregularity notices issued by WIPO and upload responses to the
notices, and
 Upload one or multiple documents at a time to WIPO, including all MM
forms and decisions, such as grants of protection, provisional refusals,
final decisions, notifications of ceasing of effect of the basic mark, etc.

To access MOP, an individual must first create a WIPO account using their office
email address. Once a WIPO account has been established, the individual needs to
send a request via Contact Madrid to open a MOP account.

The MOP and Contract Madrid are available through the WIPO website:
Madrid Office Portal (MOP): https://www3.wipo.int/mop

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

Summary

You now know:

 WIPO has made available various online services and systems to
facilitate electronic communication with users,
 Contact Madrid is the preferred way to connect with the Madrid Customer
Service team,
 Madrid eFiling is a modern, web-based filing system that allows for the
easy filing of international applications electronically, and
 The Madrid Office Portal provides IP Offices with comprehensive
electronic access to the International Register of Marks and a means of
electronic communication with WIPO.

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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:
Madrid eFiling is a web-based filing system that WIPO offers that allows for the easy
filing of international applications electronically. It consists of a module for applicants
and a module for Offices of origin. When used what benefits does this system
provide to applicants and to an Office of origin?

Answer:

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

Question:
The Madrid Office Portal (MOP) is an online service providing IP Offices with
comprehensive electronic access to the International Register of Marks and a means
of electronic communication with WIPO.

What can IP Offices access in the Madrid Office Portal?

Answer:

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

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Question:
What is the most effective way to connect with the Madrid Customer Service team to
ask questions, submit various requests and reply to irregularity letters under the
Madrid System?

Answer:

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

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Madrid Training Project

Section 3: Communication Requirements

Forms for Communication

WIPO accepts three different types of forms, as well as general letters and requests:
 Official Forms,
 Model Forms,
 Self-Generated Forms, and
 General Letters and Requests.

Official Forms

Forms that are required for filing international applications and requesting changes to
international registrations are referred to as official forms, established by WIPO. All
forms are available in the three working languages of the Madrid System – English,
French and Spanish.

The official forms are available on WIPO’s website

(http://www.wipo.int/madrid/en/forms/).

Model Forms

There are no official forms for the IP Offices of designated Contracting Parties to use
to communicate decisions on the scope of protection. WIPO has made available a
set of standardized forms for this purpose. They are referred to as model forms.

Model forms reflect the essential applicable requirements under the Common
Regulations. Therefore, they may require some adaptation to suit the particular
needs of each Office.

The Model forms, along with explanatory notes for each form, are available on
WIPO’s website:
http://www.wipo.int/madrid/en/contracting_parties/model_forms.html

Self-Generated Forms

As an alternative to using a form produced by WIPO, IP Offices and users may

generate their own forms. Such self-generated forms will be acceptable to WIPO
provided they have the same contents and format as the official forms and meet the
applicable requirements under the Common Regulations.

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An advantage of producing such forms is that as much space can be allocated to a

given item as is needed; for example, where an international application is in the
names of several applicants, or there is a particularly long list of goods and services,
use of such self-produced forms can avoid the need for continuation sheets.

As with official and model forms, self-generated forms must be completed legibly, by
means of a typewriter or other machine. Handwritten forms are not acceptable.

Where self-generated forms are established, the Office would need to ensure that
any changes to the official forms by WIPO be reflected in their self-generated forms.

General Letters and Requests

WIPO will also accept and respond to general letters and requests that do not
require the use of an official form.

These types of communications must be typed or otherwise printed, and be signed

by the sender.

The sender must include the details of the international application or registration the
general letter or request relates to, including international registration number or
number of the basic application or registration, details of the mark, applicant’s or
holder’s details and contact details of the sender.

Communication Time Limits

The Madrid Protocol and the Common Regulations lay down time limits within which
certain communications must be made.

Normally, the date on which the time limit expires is the date on which the
communication must be received by WIPO.

An exception to this is the time limit within which the Office of a designated
Contracting Party must notify refusal of protection. In this case, the decisive date is
the date on which the Office sends the notification to WIPO.

If a period within which a communication must be received by WIPO would expire on

a day on which WIPO is not open to the public, it will expire on the next subsequent
day on which WIPO is open.

Irregularities in Postal and Delivery Services and in Communications Sent

by Electronic Means

Where a time limit for a communication with WIPO is not met due to an irregularity in
a postal, delivery services, or in communications sent electronically, this may be

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excused provided due care has been exercised by the sender and the
communication was dispatched in good time (Rule 5 of the Common Regulations).

Sufficient evidence must be provided by the sender in cases of failure to meet time
limits showing, to the satisfaction of WIPO, that the delay was the result of
circumstances outside of their control.

Let’s learn more about the types of delays that may be excused with sufficient
evidence.

Rule 5(1)(i)
The communication was mailed or sent to WIPO at least five days prior to the expiry
of the time limit, or where the postal or delivery service was, on any of the ten days
preceding the day of expiry of the time limit, interrupted on account of war,
revolution, civil disorder, strike, natural calamity, or other like reason, the
communication was mailed or sent not later than five days after postal or delivery
service was resumed.

Rule 5(1)(ii)
The mailing of the communication was registered, or details of the communication
were recorded by the postal or delivery service at the time of mailing or sending.

Rule 5(1)(iii)
In the case of a communication sent by a postal service from a location from which
not all classes of mail normally reach WIPO within two days of mailing, that the
communication was either mailed by a class of mail which normally reaches WIPO
within two days of mailing, or was sent by airmail.

Rule 5(3)
In the case of a communication sent electronically, failure of an interested party to
meet a time limit would be excused where the interested party submits satisfactory
evidence showing that the time limit was not met because of:
 A failure in the electronic communication with WIPO, or
 A failure that affects the locality of the interested party due to
extraordinary circumstances beyond the control of the interested party.

Time Limits Not Met

Failure to meet a time limit shall be excused only if the evidence in support and the
communication (or a duplicate thereof) are received by WIPO not later than six
months after the expiry of the time limit.

In the case of a communication sent electronically, a new communication must be

effected not later than five days after electronic communication services are
restored.

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Workbook: Module 5 Communication with WIPO and Online Tools and Services
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Madrid Training Project

Where an international application or a subsequent designation is received from an

IP Office by WIPO more than two months after it was filed with that Office, the
international registration or the designation would normally bear the date on which it
was actually received by WIPO.

However, where an IP Office provides sufficient evidence to support that the late
receipt resulted from an irregularity in the postal, delivery service, or communications
sent electronically, the application or subsequent designation will be considered to
have been received within the time limit (and will therefore be able to keep the date
on which it was filed with that Office).

Summary

You now know:

 WIPO accepts three different types of forms as well as general letters and
requests,
 The Madrid Protocol and the Common Regulations lay down time limits
within which certain communications must be made, and
 If time limits are not met they may be excused if the sender can provide
sufficient evidence that the delay was the result of circumstances outside
of their control.

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:
WIPO will accept and respond to general letters and requests that do not require the
use of an official form.

What details must the sender include in this type of communication?

Answer:

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

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Workbook: Module 5 Communication with WIPO and Online Tools and Services
Topic 1: Communication with WIPO
Madrid Training Project

Question:
If a time limit for a communication with WIPO is not met due to an irregularity in a
postal or delivery services, or in communications sent electronically will the
correspondence still be accepted?

Answer:

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

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Workbook: Module 5 Communication with WIPO and Online Tools and Services
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Madrid Training Project

Questions and Answers

Section 1

Question:
When an IP Office or an applicant or holder sends communication to WIPO
concerning an international application or registration, that communication must be in
one of the working languages, irrespective of the language in which the international
application was filed. However, there are two exceptions to this rule. What are those
exceptions?

Answer:
Those exceptions are:

 Where a notification of provisional refusal (whether ex officio or based on

opposition) refers to an application or registration of a conflicting mark in the
territory concerned, the list of goods and services covered by the conflicting
mark can be in the language of that application or registration.

 Where a Contracting Party has notified WIPO that it requires a declaration of

intention to use the mark, it may require that the declaration be specifically in
one of the three working languages of the Madrid System, irrespective of the
language in which the international application was filed.

Question:
Any notification concerning an international application or registration that WIPO
sends to an applicant or holder will be in the language in which the international
application was filed. Is this always the case? Please explain your answer.

Answer:
No, this is not always the case.

An applicant or holder may notify WIPO that they wish to receive all such
notifications in English, French or Spanish, irrespective of the language in which the
international application was filed. The applicant can simply check the relevant box in
the international application form to make such a request.

Question:
Communications between WIPO and national or regional IP Offices may be in typed
or otherwise printed writing or in the form of electronic transmission of data. The
communications in writing can be sent to WIPO by mail (in hard copies) or by
electronic means.

What is WIPO’s preferred method of receiving correspondence?

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Workbook: Module 5 Communication with WIPO and Online Tools and Services
Topic 1: Communication with WIPO
Madrid Training Project

Answer:
WIPO’s preference is to receive correspondence by electronic means.

WIPO actively encourages all users of the Madrid System to communicate

electronically, and has provided a number of online systems and services to enable
this type of communication.

WIPO encourages IP Offices to send their communications preferably through the

XML exchange with WIPO, or via Madrid Office Portal (MOP) or the Contact Madrid
service.

Section 2

Question:
Madrid eFiling is a web-based filing system that WIPO offers that allows for the easy
filing of international applications electronically. It consists of a module for applicants
and a module for Offices of origin. When used what benefits does this system
provide to applicants and to an Office of origin?

Answer:
Benefits to the Applicant

An applicant is able to file an international application electronically just as

they would with the MM2 form. The information provided in the applicant’s
basic mark is automatically imported into their international application and
once complete, the application is sent to their national or regional IP Office for
certification.

An applicant can also save a partially completed application to return to at a

later time.

Benefits to the Office of origin

The Office of origin module allows Offices to review, validate, and certify that
the information contained in the international application corresponds with the
basic application or registration before transmitting to WIPO.

Question:
The Madrid Office Portal (MOP) is an online service providing IP Offices with
comprehensive electronic access to the International Register of Marks and a means
of electronic communication with WIPO.

What can IP Offices access in the Madrid Office Portal?

Answer:
The Madrid Office Portal provides IP Offices access to:

 View real-time status of examination and registration processes

 View and search WIPO’s back office systems and have access to official
documents received by WIPO

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Workbook: Module 5 Communication with WIPO and Online Tools and Services
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Madrid Training Project

 View decisions from designated Contracting Parties – grants of protection,

provisional refusals, etc.
 View irregularity notices issued by WIPO and upload responses to the
notices, and
 Upload one or multiple documents at a time to WIPO, including all MM forms
and decisions, such as grants of protection, provisional refusals, final
decisions, notifications of ceasing of effects of the basic mark, etc.

Question:
What is the most effective way to connect with the Madrid Customer Service team to
ask questions, submit various requests and reply to irregularity letters under the
Madrid System?

Answer:
The most effect way to connect with the Madrid Customer Service team is through
the Contact Madrid Service.

Section 3

Question:
WIPO will accept and respond to general letters and requests that do not require the
use of an official form.

What details must the sender include in this type of communication?

Answer:
The sender must include the following details in their correspondence:
 The details of the international application or registration the general letter or
request relates to, including international registration number or number of the
basic application or registration,
 Details of the mark,
 Applicant’s or holder’s details, and
 The contact details of the sender.

Question:
If a time limit for a communication with WIPO is not met due to an irregularity in a
postal, delivery services, or in communications sent electronically will the
correspondence still be accepted?

Answer:
Failure to meet time limits will only be excused if sufficient evidence (to the
satisfaction of WIPO) is provided by the sender to show that the delay was the result
of circumstances outside of their control.

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