1

WORKBOOK

Module 3
Office of Origin
Topic 3: Irregularity Notices and Responding to Them

Madrid Training Project

Workbook: Module 3 Office of Origin
Topic 3: Irregularity Notices and Responding to Them
Madrid Training Project

Introduction
Welcome to Topic 3 of Module 3 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 various responsibilities and actions

performed by the Office of origin.

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

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

1
Workbook: Module 3 Office of Origin
Topic 3: Irregularity Notices and Responding to Them
Madrid Training Project

Table of Contents
Introduction...................................................................................................................1
Module Outline..............................................................................................................4
Learning Outcomes......................................................................................................5
Scenarios Complexity Ratings......................................................................................5
Section 1: Formal Requirements for International Application.....................................6
Formal Examination by WIPO...................................................................................6
Meeting Madrid System Formal Requirements.....................................................6
Madrid System Formal Requirements Not Met.....................................................6
Section 2: Irregularity Notices.......................................................................................7
Irregularity Notice......................................................................................................7
Rule 12 – Classification of Goods and Services...................................................7
Rule 13 – Indication of Goods and Services.........................................................8
Rule 11 - Miscellaneous........................................................................................8
Irregularities to Be Remedied by the Office of origin............................................9
Irregularities to Be Remedied by the Applicant.....................................................9
Irregularities to Be Remedied either by the Office of Origin or by the Applicant 10
Sending a Response to WIPO................................................................................10
Madrid Office Portal (MOP).................................................................................10
Contact Madrid....................................................................................................11
Summary.................................................................................................................11
Knowledge Check...................................................................................................11
Section 3: Responding to Irregularity Notices............................................................13
Time Limits to Respond..........................................................................................13
Three Months......................................................................................................13
Outcomes: Responding or Not Responding to an Irregularity Notice....................13
Rule 12 - Classification of Goods and Service: Response Submitted................14
Rule 12 - Classification of Goods and Service: No Response Received...........15
Rule 13 - Indication of Goods and Services: Response Submitted....................16
Rule 13 - Indication of Goods and Services: No Response Received...............16
Rule 11 - Miscellaneous: Response Submitted..................................................16

2
Workbook: Module 3 Office of Origin
Topic 3: Irregularity Notices and Responding to Them
Madrid Training Project

Rule 11 - Miscellaneous: No Response Received..............................................17

Statement of Accounts............................................................................................17
Example 1............................................................................................................17
Expired Time Limits – Continued Processing.........................................................18
Summary.................................................................................................................19
Knowledge Check...................................................................................................19
Scenarios....................................................................................................................21
Questions and Answers..............................................................................................31
Scenario Answers.......................................................................................................33

3
Workbook: Module 3 Office of Origin
Topic 3: Irregularity Notices and Responding to Them
Madrid Training Project

Module Outline
Module 3 of the Madrid Training Project is intended to provide examiners and
administration staff in IP Offices with an overview of the role of the Office of origin as
part of the Madrid System for the International Registration of Marks.

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

Topic 3 contains three sections and includes knowledge check questions and
scenarios at various points to ensure you have understood the preceding material.
The subjects covered in Topic 3 are:

1. Formal requirements for international application, including:

o WIPO’s actions if an application meets or does not meet the formal
requirements.

2. Irregularity notices, including:

o What is an irregularity notice and what sort of issues can be raised,
and
o How to remedy and respond to an irregularity notice.

3. Responding to irregularity notices, including:

o The time limits to respond,
o The outcomes of responding and not responding, and
o If time limits have expired, how to request continued processing.

4
Workbook: Module 3 Office of Origin
Topic 3: Irregularity Notices and Responding to Them
Madrid Training Project

Learning Outcomes
This module is intended to provide current or future users of the Madrid System with
an overview of the role of the Office of origin as part of the Madrid System.

At the end of Topic 3 you should be able to:

 Recognize what an irregularity notice is and decide how it may be

remedied,
 State the timeframes involved for responding to irregularity notices,
 Identify the potential consequences of responding or not responding to an
irregularity notice, and
 Explain what continued processing is under Rule 5bis.

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

5
Workbook: Module 3 Office of Origin
Topic 3: Irregularity Notices and Responding to Them
Madrid Training Project

Section 1: Formal Requirements for International

Application
Formal Examination by WIPO

When an international application is received by WIPO, it will conduct a formal

examination to ensure the application meets the formal requirements of the Madrid
System.

This examination of an international application is restricted to formalities, including

the classification and clarity of the list of goods and/or services, and that the required
fees have been paid.

Meeting Madrid System Formal Requirements

If WIPO considers the application to meet all formal requirements, it will:

 Record the application in the International Register and allocate the
international registration number,
 Notify the Contracting Parties designated in the registration,
 Notify the Office of origin,
 Send a certificate of registration to the holder/representative, and
 Publish the recorded information in the WIPO Gazette of International
Marks.

Although the holder has received a certificate of registration, the mark has not been
granted protection in the designated Contracting Parties. It is only after a designated
Contracting Party has undertaken substantive examination that the holder will know
if their mark will be granted protection in that particular jurisdiction.

Madrid System Formal Requirements Not Met

If WIPO does not consider the international application to meet all formal
requirements, they deem the application as being irregular. In this instance, WIPO
will issue an irregularity notice.

The notice will be sent to:

 The Office of origin, and
 The applicant’s representative before WIPO (if one is appointed), or
 The applicant (if no representative is appointed before WIPO).

The notice will contain details of the problem with the application – the irregularity –
as well as an indication of how to resolve this.

6
Workbook: Module 3 Office of Origin
Topic 3: Irregularity Notices and Responding to Them
Madrid Training Project

Section 2: Irregularity Notices

Irregularity Notice

WIPO may issue a notice in relation to three categories of irregularities provided by

Rules 11-13 of the Common Regulations. An irregularity notice may relate to only
one category or all of them, with one or several items raised within each.

Categories of irregularities are:

 Rule 12 – Classification of Goods and Services.

 Rule 13 – Indication of Goods and Services.
 Rule 11 – Miscellaneous.

Let’s have a closer look at each Rule, starting with the most
common irregularities under Rule 12. You may also like to
view an example of an Irregularity Notice issued by WIPO.

Rule 12 – Classification of Goods and Services

If WIPO considers that the goods and services are not:

 Grouped in the appropriate class/es, or
 If they are not preceded by the number of the class/es, or
 If that number is not correct

it will send an irregularity notice to the Office of origin with its own proposal for the
classification and will inform the applicant at the same time.

The proposal may involve transferring goods or services to a different class. If this
transfer requires further fees to be paid, the additional amount will be indicated in the
irregularity notice.

Responses to the irregularities relating to classification must be sent to WIPO by the

Office of origin. Proposals or suggestions submitted directly by the applicant will not
be accepted.

At the same time, the information given to the applicant enables them to mediate
with the Office of origin. The applicant can therefore provide the Office of origin with
a different opinion to WIPO’s proposed regrouping of goods and services with their

7
Workbook: Module 3 Office of Origin
Topic 3: Irregularity Notices and Responding to Them
Madrid Training Project

own reasoning. Nevertheless, WIPO has the final say in the classification of goods
and services listed in the international application.

Rule 13 – Indication of Goods and Services

If WIPO considers that an indication (term) used in the list of goods and services are:
 too vague for the purposes of classification, or
 is incomprehensible, or
 is linguistically incorrect

it will send an irregularity notice to the Office of origin and inform the applicant at the
same time.

In the notice, WIPO may suggest either to substitute or delete the indication.

Responses to the irregularity notice relating to indication of goods and services must
be sent to WIPO by the Office of origin. Proposals or suggestions submitted directly
by the applicant will not be accepted.

The applicant may, however, communicate their views to the Office of origin and
propose alternative wording to clarify the indication concerned. The Office of origin
may also seek the views of the applicant.

If no satisfactory proposal for change of the indication has been received by WIPO –
and provided there are no other irregularities – WIPO will then record the
international registration with the original list of goods and services together with a
note stating that a particular term is, for example, too vague or incomprehensible in
the opinion of WIPO.

Rule 11 - Miscellaneous

WIPO will issue an irregularity notice if some information contained in the

international application is incomplete or missing.

Certain irregularities provided by Rule 11 of the Common Regulations must be

responded to by the Office of origin, while others can be remedied either by the
Office or by the applicant.

Let’s look at which types of miscellaneous irregularities are to be remedied by:

 The Office of origin.
 The Applicant.
 Either the Office of origin or the Applicant.

8
Workbook: Module 3 Office of Origin
Topic 3: Irregularity Notices and Responding to Them
Madrid Training Project

Irregularities to Be Remedied by the Office of origin

The types of irregularities to be remedied by the Office of origin include:

 The application is not presented on the correct official form (MM2), or not
typed or otherwise printed, or not signed by the Office of origin.
 Irregularities concerning the entitlement of the applicant to file the
international application; for example, the international application does
not contain information confirming the applicant’s connection to the Office
of origin, such as an address in the Contracting Party concerned.
 One or more of the following elements is missing from the application:
o applicant’s name and contact details,
o the date and the number of the basic registration or the basic
application,
o reproduction of the mark,
o indication of goods and services, and
o designated Contracting Parties.
 Irregularities relating to the certification of an international application in
Item 13 of the MM2 form.

Some of these irregularities are a straightforward matter for

the Office of origin. Others might necessitate consultation with
the applicant – for example, if WIPO considers that there are
irregularities relating to the entitlement of the applicant to file
an international application.

Irregularities to Be Remedied by the Applicant

The types of irregularities to be remedied by the applicant directly with WIPO may
include:
 The information about the applicant/representative’s name or contact
details is sufficient to identify the applicant and contact the representative,
but is incomplete,
 Transliteration of a mark consisting or containing characters other than
Latin characters, or numerals other than Arabic or Roman numerals is
missing,
 Priority information is incomplete; for example, no filing date of the earlier
application is given,
 The reproduction of the mark is not sufficiently clear,
 Color(s) is claimed, but no color reproduction of the mark is provided,
 Missing MM18 form where the USA is designated,

9
Workbook: Module 3 Office of Origin
Topic 3: Irregularity Notices and Responding to Them
Madrid Training Project

 The amount of fees paid by the applicant directly to WIPO is insufficient,

 The amount required to be debited from a current account at WIPO is not
available, and
 No fees at all have been paid.

Irregularities to Be Remedied either by the Office of Origin or by the Applicant

These irregularities concern only fees where the fees for the international application
have been paid through the Office of origin.

Where WIPO considers that the amount of fees received is insufficient, it will notify
both the Office of origin and the applicant, specifying the missing amount. The
missing fees can be paid either by the Office of origin or by the applicant.

Sending a Response to WIPO

A response to an irregularity notice can be sent to WIPO by mail or via electronic

means. WIPO’s preferred communication method for such responses is one of the
following electronic options made available via WIPO website.

These include:
 Madrid Office Portal – also referred to as MOP (for IP Offices), or
 Contact Madrid (for both IP Offices and applicants).

Madrid Office Portal (MOP)

When responding to an irregularity notice, a national or regional IP Office can upload

a response directly to WIPO by using the Madrid Office Portal (MOP).

MOP is an online tool that provides IP Offices with electronic access to the
International Register of Marks and a means of electronic communication with
WIPO. The Madrid Office Portal is one of the most secure and effective ways to
exchange documents and notifications with WIPO.

To access MOP, an individual in the Office must first set up

a WIPO user account linked to an email address. Then a
request for a private Office access should be sent through
the Contact Madrid service.

You can find more information about the Madrid Office Portal on the WIPO website:
http://www.wipo.int/madrid/en/contracting_parties/madrid_portal_info.html

10
Workbook: Module 3 Office of Origin
Topic 3: Irregularity Notices and Responding to Them
Madrid Training Project

Contact Madrid

When responding to an irregularity notice, national or regional IP Offices, applicants

and their representatives can upload responses directly to WIPO by using the
Contact Madrid service.

Contract Madrid is an online communication service, which allows users to transmit

documents and requests directly to WIPO twenty-four hours a day, seven days a
week.

You can access the Contact Madrid service from the WIPO website:
http://www.wipo.int/madrid/en/contact

Summary

You now know:

 WIPO checks whether an international application meets formal
requirements provided under the Madrid System,
 The reasons why WIPO will issue an irregularity notice, including the three
categories of irregularities,
 Who can remedy which kind of irregularity, and
 The ways that national or regional IP Offices, applicants and their
representative can use to respond to an irregularity.

Before we continue, let’s check your knowledge.

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

Knowledge Check

Question:
Is the following statement true or false?

If fees have not been paid, are underpaid or an additional amount is owed due to an
irregularity (as per Rule 12 and the classification of goods and services), the
statement of accounts included in the irregularity notice will indicate the amount
owing.

11
Workbook: Module 3 Office of Origin
Topic 3: Irregularity Notices and Responding to Them
Madrid Training Project

Answer:

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

Question:
An international application has been found to be irregular by WIPO. WIPO have
issued an irregularity notice under Rule 12.

What information can be found irregular under Rule 12?

Answer:

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

Question:
WIPO have conducted a formal examination for an international application and has
found it meets the formal requirements of the Madrid System. What will WIPO now
do?

Answer:

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

12
Workbook: Module 3 Office of Origin
Topic 3: Irregularity Notices and Responding to Them
Madrid Training Project

Section 3: Responding to Irregularity Notices

Time Limits to Respond

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

on the notice. The timeframe in which to respond will be either three months or two
months, depending on the issues raised in the irregularity.

To assist in meeting timeframes, WIPO will send a reminder to both the Office and
the applicant (or representative).

Three Months

The standard time limit to remedy the irregularities is three months from the date
when the irregularity notice was notified by WIPO.

The due date for the response is specified on the front page of the notice and in the
paragraph after the listed irregularities.

If the issues raised in the notice are not remedied by the due date, the delay may
lead to the application being abandoned.

Two Months

If the MM18 form (a declaration of intention to use the mark) required by the United
States of America is missing from the international application or does not comply
with the applicable requirements, the applicant has two months from the date of
receipt of the international application by the Office of origin to remedy the
irregularity.

If the missing or corrected MM18 form is not received within the prescribed period,
the international application will be processed for registration without the designation
of the United States of America. WIPO will reimburse any fees paid in connection
with the designation of that Contracting Party.

Let’s explore what the outcomes could be when a response is received or not
received by WIPO.

Outcomes: Responding or Not Responding to an Irregularity Notice

There are consequences where an Office of origin or an applicant does or does not
respond to an irregularity notice within the prescribed timeframe.

13
Workbook: Module 3 Office of Origin
Topic 3: Irregularity Notices and Responding to Them
Madrid Training Project

Let’s have a closer look at Rule 12, 13, and 11, starting with
the most common irregularities concerning classification of
goods and services.

Rule 12 - Classification of Goods and Service: Response Submitted

In its response to an irregularity notice concerning the classification of goods and

services, the Office of origin may agree or disagree with WIPO’s proposal.

The Office of Origin Agrees to WIPO’s Proposal

Where the Office of origin agrees with WIPO’s proposal included in the irregularity
notice and no additional fees are required to be paid, WIPO will proceed to register
the international application with the classification of goods and services as
proposed by WIPO.

If the change to the list of goods and/or services proposed by WIPO requires the
applicant to pay additional fees, the application will not be registered until these have
been paid. If the applicant does not pay the additional fees, the application will be
abandoned.

In case the applicant decides to reduce the list of goods and services to avoid paying
the additional fees, this decision has to be communicated to WIPO by the Office of
origin. WIPO will proceed to registration with the reduced list of goods and services.

The Office of Origin Disagrees with WIPO’s Proposal

Where the Office of origin disagrees with WIPO’s proposal concerning the
classification of goods and services, WIPO may, upon further consideration, either:

 Withdraw Its Initial Proposal

If the response received from the Office of origin contains further explanation
or information to show that the goods and services raised in the irregularity
notice under Rule 12 belong in the class within which they were originally
classified, and WIPO accepts that this is correct, it will withdraw its initial
proposal.

When the application is in order for registration, it will proceed with the goods
and/or services as originally indicated.

 Modify Its Initial Proposal

If the response received from the Office of origin contains a proposed

amendment to show that the goods and services raised in the irregularity

14
Workbook: Module 3 Office of Origin
Topic 3: Irregularity Notices and Responding to Them
Madrid Training Project

notice under Rule 12 belong in the class within which they were originally
classified, and WIPO agrees with the Office of origin because the additional
information provides further clarity to the nature of the goods/services, WIPO
may modify its initial proposal.

The modified proposal will be notified to the Office of origin and the applicant.

If no additional fees are required due to the modification of the initial proposal,
the international application will proceed to registration with the classification
of goods and services as per WIPO’s modified proposal.

In the case where additional fees are required due to the modification of the
initial proposal, they have to be paid within three months from the date when
the modification was notified to the Office of origin. Where the fees are paid
within that time limit, the international application will proceed to registration
with the classification of goods and services as per WIPO’s modified proposal.
However, if the applicant does not pay the additional fees, the application will
be abandoned.

 Confirm Its Initial Proposal

If the response from the Office of origin contains a proposed amendment or

further information to show that the goods and/or services raised in the
irregularity notice under Rule 12 belong in the class within which they were
originally classified, and WIPO disagrees with the Office of origin, it may
confirm that its initial proposal is correct.

The confirmation of the initial proposal will be notified to the Office of origin
and the applicant.

If no additional fees are required due to the confirmation of the initial proposal,
the international application will proceed to registration with the classification
of goods and services as per WIPO’s initial proposal.

In the case where additional fees are required, they have to be paid within
three months from the date when the confirmation of the initial proposal was
notified to the Office of origin. Where the fees are paid within that time limit,
the international application will proceed to registration with the classification
of goods and services as per WIPO’s initial proposal. However, if the applicant
does not pay the additional fees, the application will be abandoned.

Rule 12 - Classification of Goods and Service: No Response Received

If WIPO does not receive a response to an irregularity notice within the prescribed
time limit and there are no additional fees required, the application will proceed to
registration with the classification of goods and services proposed by WIPO.

15
Workbook: Module 3 Office of Origin
Topic 3: Irregularity Notices and Responding to Them
Madrid Training Project

In the case where additional fees are required, they have to be paid within four
months from the date when the irregularity notice was notified by WIPO to the Office
of origin. If the additional fees are not paid, the application will be abandoned.

Rule 13 - Indication of Goods and Services: Response Submitted

If WIPO receives a response that the Office of origin agrees with its proposal made
in an irregularity notice, or if an acceptable alternative is suggested by the Office of
origin, WIPO will change the term/s accordingly, and the application will proceed to
registration.

In case where a response has been received but an agreement is not reached
between WIPO and the Office of origin within the prescribed time limit, the irregular
term will be included in the international registration as it appears in the international
application. The international registration will, however, contain an indication that, in
WIPO’s opinion, the term is too vague for the purposes of classification, or is
incomprehensible, or is linguistically incorrect.

Rule 13 - Indication of Goods and Services: No Response Received

If no response is received within the prescribed time limit, the irregular term will be
included in the international registration as it appears in the international application.
The international registration will however contain an indication that, in WIPO’s
opinion, the term is too vague for the purposes of classification, or is
incomprehensible, or is linguistically incorrect.

However, if no class for the irregular term has been specified by the Office of origin,
WIPO will register the international application without the irregular term and will
notify the Office of origin and inform the applicant accordingly. The irregular term will
therefore be deleted from the list of goods and services.


Where an international registration is recorded with WIPO’s

opinion concerning the indication of goods and services, there is
a risk that the designated Contracting Parties may issue a
provisional refusal. The holder will need to communicate with
each Office directly to overcome the provisional refusal.

Rule 11 - Miscellaneous: Response Submitted

If the response overcomes all issues raised in the irregularity notice, including the
payment of any additional fees, WIPO will make the amendments to the international
application according to the information received, and the application will proceed to
registration.

16
Workbook: Module 3 Office of Origin
Topic 3: Irregularity Notices and Responding to Them
Madrid Training Project

Rule 11 - Miscellaneous: No Response Received

If no response is received in the prescribed time limit, the application will be

considered abandoned unless the issue was in relation to:

 Priority Details - if the irregularity only relates to the claim for priority and
it is not corrected within the prescribed period, the application will be
registered and recorded in the International Register without the priority
claim

 Form MM18 - If the MM18 form has not been annexed to the MM2
application form and has not been further received by WIPO within the
prescribed period, the international application will be registered without
the designation of the United States of America. WIPO will reimburse any
fees paid in connection with the designation of that Contracting Party.

Statement of Accounts

If the relevant fees have not been paid, are underpaid, or an additional amount is
owed due to an irregularity (as per Rule 12 and the classification of goods and
services), the statement of accounts will indicate the amount owing.

The last page of an irregularity notice will always include a statement of accounts.
Here the fees associated with the international application will be listed, including the
basic fee and those for each designated Contracting Party included in the
application.

Let’s have a look at some statement of account examples.

Example 1

17
Workbook: Module 3 Office of Origin
Topic 3: Irregularity Notices and Responding to Them
Madrid Training Project

In this statement of accounts, additional fees are required due to the reclassification
of goods or services under Rule 12. The amount owing is 375.00 Swiss francs (CHF)
as indicated by ‘Balance in our favour’.

Example 2

If the relevant fees have been paid in full, a statement of accounts will still be
included in the irregularity notice. In this statement of accounts, the ‘to date, your
payment is’ matches the total of fees due for the application and no further payment
is required.

Expired Time Limits – Continued Processing

Rule 5bis of the Common Regulations allows for continued processing where an
applicant or holder has failed to meet a time limit for an action/response before
WIPO.

For international applications, continued processing can only be requested on

irregularities raised under Rule 11(2) and (3). This means an applicant can request
more time to resolve certain irregularities or issues identified by WIPO.

A request for continued processing must be made within two months from the expiry
of the time limit concerned. The time limit must have already passed for the request
to be made. Continued processing cannot be requested as a safeguard before the
time limit has expired.

18
Workbook: Module 3 Office of Origin
Topic 3: Irregularity Notices and Responding to Them
Madrid Training Project

The request for continued processing needs to be submitted to WIPO on the official
MM20 form and must be signed by the applicant or their representative. A fee of 200
CHF is payable per MM20 form. At the same time as requesting continued
processing, the applicant must also resolve the outstanding issue within the two
months’ time limit.

If the issue has been resolved, WIPO will continue to process the international
application. WIPO will record any continued processing in the International Register
and notify the applicant.

If a request for continued processing does not meet the previously mentioned
requirements, it will not be considered as such, and WIPO will notify the applicant
accordingly.

The official MM20 form can be accessed on the WIPO website:

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

Summary

You now know:

 The time limits for responding to an irregularity notice,
 The outcomes of responding or not responding to an irregularity notice,
 What information is contained in a statement of accounts, and
 What continued processing is and the requirement of any request for
continued processing.

Before you finish the workbook for this topic, let’s

check your knowledge a final time. The correct
answers to the questions can be found at the end
of this workbook.

Knowledge Check

Question:
A response to an irregularity notice must be received by WIPO by the date indicated
on the notice. The timeframe in which to respond will be either three months or two
months, depending on the issues raised in the irregularity.

If the issues raised in the irregularity notice are not remedied by the due date what
could the outcome be for the application?

19
Workbook: Module 3 Office of Origin
Topic 3: Irregularity Notices and Responding to Them
Madrid Training Project

Answer:

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

Question:
Where a response to an irregularity from an Office disagrees with WIPO’s proposal
concerning the classification of goods and services under Rule 12, what may WIPO
do upon further consideration?

Answer:

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

20
Workbook: Module 3 Office of Origin
Topic 3: Irregularity Notices and Responding to Them
Madrid Training Project

Scenarios

Irregularities (1)

An Office of origin has received an Irregularity Notice issued under Rule 12 only. The
basic mark on which the International application is based on includes the following
goods:

Class 16: Books relating to camping; cardboard carrying cases; Catalogues

Class 18: Articles of clothing for horses; Bags for campers; Carrying bags
(other than disposable carrier bags); plastic packaging bags

Class 20: sleeping mats for camping; pillows in this class, including air
pillows, inflatable pillows and neck pillows

The notice contains the following information regarding the issue raised under Rule
12:

IRREGULARITY(IES) CONCERNING THE CLASSIFICATION OF GOODS AND

SERVICES: TO BE REMEDIED BY THE OFFICE OF ORIGIN (Rule 12).

The International Bureau considers that the goods and/or services listed in the
international application are not grouped in the appropriate classes of the
International Classification of Goods and Services (Rule 9(4)(a)(xiii)). The
International Bureau proposes therefore to transfer the following terms:

“plastic packaging bags " from class 18 to class 16 - see position 160246 of
the 11th edition of alphabetical list of the International Classification of Goods and
Services.

The proposed grouping may entail the payment of further fees (see attached
accounting statement).

An opinion on this proposal may be communicated to the International Bureau. Any

such opinion must be communicated THROUGH THE OFFICE OF ORIGIN within
three months from the date of the present notification, that is by 23 February
2018. Failing this, the mark will be registered with the classification and grouping
proposed by the International Bureau. However, if this proposal entails the
payment of further fees and such fees are not paid within four months from the date
of the present notification, the international application will be considered
abandoned.

Applicants are strongly encouraged to check the existence and classification

of terms appropriate to their needs in the Madrid Goods & Services Manager at

21
Workbook: Module 3 Office of Origin
Topic 3: Irregularity Notices and Responding to Them
Madrid Training Project

http://www.wipo.int/mgs

The applicant confirms with the Office of origin that they are willing to move “plastic
packaging bags” to Class 16. This means that their international registration, if
granted, will still contain 3 classes.

The Office of origin informs WIPO that “plastic packaging bags” should be moved
from Class 18 to Class 16.

Question
Is the response from the Office of origin sufficient for the application to meet WIPO’s
requirements and for the application to be granted registration?

Please provide the reasonings for your answer.

Answer:

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

22
Workbook: Module 3 Office of Origin
Topic 3: Irregularity Notices and Responding to Them
Madrid Training Project

Irregularities (2)

WIPO has issued an irregularity notice for an international application. The

irregularity notice contains the following information:

We acknowledge receipt of the above-mentioned international application.

The examination of this application has revealed the irregularities which are listed
hereafter:

IRREGULARITY(IES) TO BE REMEDIED BY THE APPLICANT

The international application contains several priority claims (item 6 of the

international application form). However, there is no indication of the goods and
services to which each priority claim relates (Rule 9(4)(a)(iv)).

In order to remedy this irregularity, the missing information should be furnished

directly to the International Bureau by the applicant.

The correction of the above-mentioned irregularity/ies should be received by the

International Bureau within three months from the date of this notification, that is by
25 January 2018 failing which the irregular priority claim(s) will be disregarded.

The international application is based on multiple basic marks and the international
application was received by the Office of origin on 14 November 2017, certified and
sent to WIPO on 16 November 2017.

The lodgement date and goods and/or services covered by each basic mark is:

Baisc registration number: 345864

Lodged: 5 June 2006

Class 3: non-medicated soap; cosmetics; hair shamppos and conditioners

Class 5: sanitary preparations for medical purposes; fungicides; disinfectants

Basic application number: 18038565

Lodged: 23 July 2017

Class 16: Printed matter; instructional and teaching materials; packing

[cushioning, stuffing] materials of paper or cardboard; cardboard boxes

Baisc application number: 18620495

Lodged: 15 October 2017

23
Workbook: Module 3 Office of Origin
Topic 3: Irregularity Notices and Responding to Them
Madrid Training Project

Class 25: Clothing, footwear and headgear

Class 35: Retail and wholesale services in relation to clothing, footwear and
headgear; marketing services; advertising; writing of publicity texts

Questions

Question 1
Can a priority date be claimed for all the basic marks listed in the international
application?

Question 2
If not, which of the basic marks listed in the international application can a priority
date be claimed for?

Question 3
Does the response to the irregularity notice have to come from the Office of origin?

Question 4
What information should be provided to WIPO to overcome the issue raised in the
irregularity notice?

Answer:

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

24
Workbook: Module 3 Office of Origin
Topic 3: Irregularity Notices and Responding to Them
Madrid Training Project

Irregularities (3)

WIPO has issued an irregularity notice for an international application. The

irregularity notice contains the following information:

We acknowledge receipt of the above-mentioned international application.

The international application contains the designation of the United States of

America, a Contracting Party that requires a declaration of intention to use the mark
(Rule 7(2)).

However, the declaration does not comply with the following requirement(s):

- the signatory's title has not been indicated

In order to maintain the designation of the United States of America in the

international Application, a new complete declaration of intention to use the mark, on
form MM18, complying with all the necessary requirements, should be sent to the
International Bureau by the applicant, or by the Office of origin. It must be received
by the International Bureau within two months from the date of receipt of the
international application by the Office of origin (Rule 11(6)(b)), that is, by 10
September 2017.

Failing this, the international application will be deemed not to contain the
designation of the United States of America. In that case, any designation fee paid in
respect of that Contracting Party will be reimbursed (Rule 11(6)(c)). However, in that
event, a designation of the United States of America may be effected by means of a
subsequent designation, provided that such subsequent designation is accompanied
by the required declaration of intention to use the mark, on official form MM18.

Questions

Question 1
Who can send a response to WIPO to finalise the issue raised in the irregularity
notice?

Question 2
What will the outcome be if WIPO receives no response to the irregularity notice?

Question 3
If the United States of America is removed from the Contracting Parties designated
in the application, can the applicant still use the Madrid System to get protection
there?

25
Workbook: Module 3 Office of Origin
Topic 3: Irregularity Notices and Responding to Them
Madrid Training Project

Answers:
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................
.......................................................................................................................................

26
Workbook: Module 3 Office of Origin
Topic 3: Irregularity Notices and Responding to Them
Madrid Training Project

Irregularities (4)

The Office of origin receives a telephone call from an applicant who has received an
irregularity notice from WIPO. They have a number of questions regarding how they
can resolve the issue raised by WIPO so that their application can be finalised.
The basic mark the international application is based on includes the following goods
and services:

Class 9: Video cassettes; computer game software; video games; computers.

Class 16: Paper and cardboard; printed matter; paper party goods.

Class 18: Leather and imitations of leather; animal skins and hides; luggage
and carrying bags

Class 28: Children’s toys; pet toys; game consoles; controllers for game
consoles.

Class 35: Marketing services; advertising services; retail of computers,

software, and gaming apparatus.

Class 42: Design of computers and computer software; development of

computer games and gaming apparatus.

The Office reviews their copy of the irregularity notice and finds that the irregularity
notice has been issued under Rule 13 only. The notice contains the following
information:

IRREGULARITY(IES) CONCERNING THE INDICATION OF GOODS AND

SERVICES: TO
BE REMEDIED BY THE OFFICE OF ORIGIN

The International Bureau considers that the following term(s) of the list of goods
and/or services is/are too vague for the purposes classification (Rule 13):

“video games” (class 9)

"paper party goods" (class 16)

The International Bureau suggests therefore the following:

“Video game software” (class 9) - Alternatively these goods can be reworded to

"video game apparatus" and transferred to class 28.

"paper party decorations, bags and ornaments" (class 16)

A proposal as to different terms may be communicated to the International Bureau.

27
Workbook: Module 3 Office of Origin
Topic 3: Irregularity Notices and Responding to Them
Madrid Training Project

Any such proposal must be communicated THROUGH THE OFFICE OF ORIGIN,

within three months from the date of the present notification, that is by 15
November 2017. If no proposal acceptable to the International Bureau is made
within this period, the International Bureau will include in the international registration
the terms as appearing in the international application, with an indication to the effect
that, in the opinion of the International Bureau, the specified term(s) is/are too vague
for the purposes of classification.

Applicants are strongly encouraged to check the existence and classification of

terms appropriate to their needs in the Madrid Goods & Services Manager at
http://www.wipo.int/mgs

Questions

Question 1
The applicant indicates they agree to the rewording of the goods in Class 16 and
would like to reword the goods in Class 9 and transfer the item “video game
apparatus” to class 28.

What must the applicant do in order to have the application finalize?

Question 2
The applicant asks if they do not agree with the suggested amendments what
options can they consider when responding to the irregularity notice. What options
can the Office of origin give the applicant?

Question 3
If the applicant responds with alternative wording, what action will WIPO take if the
alternative wording is acceptable? What action will WIPO take if the alternative
wording is not acceptable?

Question 4
The applicant asks what will happen to their international application if they don’t
respond. What answer can the Office of origin give the applicant?

Answers:

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

28
Workbook: Module 3 Office of Origin
Topic 3: Irregularity Notices and Responding to Them
Madrid Training Project

Irregularities (5)

On 3 August, 2017, the Office of origin receives correspondence from an applicant

regarding their international registration. They do not understand why their
international application has proceeded to registration and has been published on
the International Register with the following indications:

Class 3: Cosmetics, shampoos, soap, hair lotion, hair conditioner, softeners

for laundry use, bleaches, whiteners for laundry, Laundromat and manual
laundry powders (terms incomprehensible in the opinion of the International
Bureau - Rule 13(2)(b) of the Common Regulations), laundry and dish washer
detergent tablets, dishwasher in powder, laundry liquids.

Class 8: Cutting goods (terms considered too vague by the International

Bureau - Rule 13(2)(b) of the Common Regulations), forks and spoons;
cutlery, silverware; manicure necessaries (electric and non-electric) (terms
considered linguistically incorrect by the International Bureau - Rule 13(2)(b)
of the Common Regulations).

Class 9: Computer hardware; computer software for use in designing

integrated circuits; integrated circuits, printed circuits, blank integrated circuit
cards, blank smart cards; apparatus and instruments for conducting,
switching, transforming, accumulating, regulating or controlling electricity,
namely, integrated circuits and memory expansion modules, and radio
frequency of integrated circuits (terms incomprehensible in the opinion of the
International Bureau - Rule 13(2)(b) of the Common Regulations).

Class 28: Toys for domestic pets; toys; novelties for parties; dolls; dolls'
clothes; teddy bears; plush toys; protecting palms (terms considered too
vague by the International Bureau - rule 13(2)(b) of the Common
Regulations); protecting legs (terms considered too vague by the International
Bureau - rule 13(2)(b) of the Common Regulations).

The Office’s records show that an irregularity notice had been issued on 10 April,
2017 in relation to the international application, but no response was received
through the Office of origin by the due date of 10 July, 2017. The Office of origin has
no correspondence from the applicant recorded in relation to the irregularity notice.

Questions

Question 1
What can the Office of origin tell the holder about their international registration?

Question 2
The holder now wishes to respond to the irregularity notice. Even though the due
date has past, is it possible for the holder to address the issues raised in the notice?

Question 3

29
Workbook: Module 3 Office of Origin
Topic 3: Irregularity Notices and Responding to Them
Madrid Training Project

Is there an official form that must be used to request continued processing? Is there
a fee applicable?

Answer:

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

30
Workbook: Module 3 Office of Origin
Topic 3: Irregularity Notices and Responding to Them
Madrid Training Project

Questions and Answers

Section 1& 2

Question:
WIPO have conducted a formal examination for an international application and has
found it meets the formal requirements of the Madrid System. What will WIPO now
do?

Answer:
Once WIPO considers an application meets all formal requirements, it will:
 Record the application in the International Register and allocate the
international registration number.
 Notify the Contracting Parties designated in the registration.
 Notify the Office of origin.
 Send a certificate of registration to the holder/representative. Publish the
recorded information in the WIPO Gazette of International Marks.

Question:
Is the following statement true or false?

If fees have not been paid, are underpaid or an additional amount is owed due to an
irregularity (as per Rule 12 and the classification of goods and services), the
statement of accounts included in the irregularity notice will indicate the amount
owing.

Answer:
True

Question:
An international application has been found to be irregular by WIPO. WIPO have
issued an irregularity notice under Rule 12.

What information can be found irregular under Rule 12?

Answer:
Classification of goods and services information can be found irregular under Rule
12. This includes if WIPO considers that the goods and services are not:

 grouped in the appropriate class/es, or

 if they are not preceded by the number of the class/es, or
 if that number is not correct

31
Workbook: Module 3 Office of Origin
Topic 3: Irregularity Notices and Responding to Them
Madrid Training Project

Section 3

Question:
A response to an irregularity notice must be received by WIPO by the date indicated
on the notice. The timeframe in which to respond will be either three months or two
months, depending on the issues raised in the irregularity.

If the issues raised in the irregularity notice are not remedied by the due date what
could the outcomes be for the application?

Answer:
Three month timeframe:
The standard time limit to remedy the irregularities is three months from the date
when the irregularity notice was notified by WIPO. If the issues raised in the notice
are not remedied by the due date, the delay may lead to the application being
abandoned.

Two month timeframe:

If the MM18 form (a declaration of intention to use the mark) required by the United
States of America is missing from the international application or does not comply
with the applicable requirements, the applicant has two months from the date of
receipt to remedy the irregularity.

If the missing or corrected MM18 form is not received within the prescribed period,
the international application will be processed for registration without designation of
the United States of America. WIPO will reimburse any fee paid in connection with
the designation of that Contracting Party.

Question:
Where a response to an irregularity from an Office disagrees with WIPO’s proposal
concerning the classification of goods and services under Rule 12, what may WIPO
do upon further consideration?

Answer:
Upon further consideration WIPO may:
 Withdraw Its Initial Proposal - If the response received from the Office of origin
contains further explanation or information to show that the goods and
services raised in the irregularity notice under Rule 12 belong in the class
within which they were originally classified,
 Modify Its Initial Proposal - If the response received from the Office of origin
contains a proposed amendment to show that the goods and services raised
in the irregularity notice under Rule 12 belong in the class within which they
were originally classified
 Confirm Its Initial Proposal - If the response from the Office of origin contains
a proposed amendment or further information to show that the goods and/or
services raised in the irregularity notice under Rule 12 belong in the class

32
Workbook: Module 3 Office of Origin
Topic 3: Irregularity Notices and Responding to Them
Madrid Training Project

within which they were originally classified, and WIPO disagrees with the
Office of origin, it may confirm that its initial proposal is correct.

Scenario Answers
Irregularities (1)

Yes, the response from the Office of origin is sufficient for the application to meet
WIPO’s requirements and for the application to be granted registration.

The only issue raised in the irregularity notice was under Rule 12.

The international application already contains Class 16. Consequently, the grouping
of goods suggested by WIPO does not add an additional class which would require
additional fees.

As the correspondence from the Office of origin confirms the goods raised in the
irregularity notice should be moved, the international application’s list of goods and
services are now correctly classified according to WIPO. This means that the
application can be registered in the International Register

Irregularities (2)

Question 1:
No, a priority date cannot be claimed for all the basic marks listed in the international
application.

If an applicant wishes to claim priority of an earlier filing, the earlier filing cannot be
more than six months earlier than the date of the international registration.

In this instance some of the priority dates are older than six months.

Question 2:
Priority can be claimed from basic marks 18038565 and 18620495.

Question 3:
No, the response to the irregularity notice does not have to come from the Office of
origin, rather it should come from the applicant .

The missing information can be furnished directly to the International Bureau by the
applicant. This is listed in the irregularity notice in the heading:

IRREGULARITY(IES) TO BE REMEDIED BY THE APPLICANT

Question 4:
The priority date of each mark should clearly be linked to the goods and/or services
to which it relates:

33
Workbook: Module 3 Office of Origin
Topic 3: Irregularity Notices and Responding to Them
Madrid Training Project

basic application number 18038565 – All the goods claimed in Class

16,
 basic application number 18620495 – All the goods and services
claimed in Classes 25 and 35
Irregularities (3)

Question 1:
The Office of origin or the applicant can respond to WIPO to remedy this issue. This
is stated in the irregualrity notice:

In order to maintain the designation of the United States of America in the

international Application, a new complete declaration of intention to use the
mark, on form MM18, complying with all the necessary requirements, should
be sent to the International Bureau by the applicant, or by the Office of origin.

Question 2
The designation of the United States of America will be removed from the
application. The application will then be recorded in the International Register without
this designation.

Question 3
Yes, the applicant may still use the Madrid System to get protection for the United
States of America.

Once the application has been registered by WIPO and an international registration
number as been allocated, the holder may subsequently designate the United States
of America and include a completed MM18 form.

Irregularities (4)

Question 1:
The applicant must send their agreement to reword the goods in Class 16 and also
their agreement to reword and transfer the item in Class 9 to Class 28 as proposed
by WIPO to the Office of origin, so that it can be forwarded to WIPO.

As noted in the irregularity notice:

Any such proposal must be communicated THROUGH THE OFFICE OF

ORIGIN

Question 2:
If the applicant does not agree with the suggested wording proposed by WIPO they
can propose an alternative re-wording of the items raised in the irregularity notice.

Question 3:
If satisfied with the applicant’s alternative suggestions, WIPO will make the
amendments and the application will proceed to registration.

34
Workbook: Module 3 Office of Origin
Topic 3: Irregularity Notices and Responding to Them
Madrid Training Project

If WIPO is not satisfied with the applicant’s alternative suggestions, WIPO will send a
further notice explaining why the suggest wording is not sufficient to overcome the
issue.

However, if no agreement can be reached by the due date listed in the irregularity
notice, the application will proceed to registration with those items bearing the
indication Terms considered too vague by the International Bureau - Rule 13.2.b of
the Common Regulations.

Question 4:
If the applicant does not respond to the irregularity notice, the application will
proceed to registration with those items bearing the indication Terms considered too
vague by the International Bureau - Rule 13.2.b of the Common Regulations.

Irregularities (5)

Question 1:
The Office of origin can inform the holder that an irregularity notice had been issued
by WIPO, wherein a number of terms were considered as either too vague,
linguistically incorrect, or in comprehensible. A copy of this notice was forwarded
from WIPO to the Office of origin and the address for correspondence recorded in
the international application.

As no response was received by the due date recorded in the irregularity notice,
WIPO included in their international registration indications that, in their opinion,
these specified terms are either too vague, linguistically incorrect, or in
comprehensible.

Question 2:
Yes. The holder can submit a request for continued processing.

Under Rule 5bis of the Common Regulations, an applicant can request continued
processing where a time limit for an action/response before WIPO has failed to be
met. Such a request must be made within two months from the expiry of the time
limited concerned.

A response to the irregularity notice was due on 10 July, 2017. The trademark owner
has until 10 September, 2017 to request continued processing and remedy the
matters raised in the notice.

Question 3:
Yes, there is an official form that must be used to request continued processing. The
request for continued processing needs to be provided to WIPO on the official MM20
form and must be signed by the trademark owner or their representative.

A fee of 200 Swiss francs applies to this request.

35