On 1 February 2019 new rules are scheduled to be added to the Common Regulations under the Madrid Agreement concerning the International Registration of Marks and the Protocol Relating to that Agreement. The new rules will be accompanied by new fees.

The Madrid System already provided for the possibility to transform international registrations as a possible strategy for the continued prosecution of the part of a mark not affected by a given obstacle. However, in addition to being a complex procedure, transformation does not produce the same effects or serve the same purpose as the division of a mark, and it is not the same thing in legal terms.

Therefore, these new provisions may be very useful as an alternative procedure in cases where it may be convenient to separate a designated Contracting Party of an international mark.

The new Rule 27bis, item 7.7 of the Common Regulations will establish a provision, when it enters into force on 1 February 2019, for requesting the division of an international registration in respect of a designated Contracting Party.

The procedure for division of an international mark explained in 9 simple steps:

  1. The request for division must be filed with the Office of the designated Contracting Party in respect of which the international registration is to be divided.
  2. To this end, a new form has been established (MM22), which will be the form that must be used for this purpose.
  3. The division request is subject to the payment of 177 Swiss francs to the International Bureau of WIPO. The Offices of the Contracting Parties may in any case reserve the right to charge their own fees for this procedure.
  4. The Office in question may examine the request for division to ensure that it conforms to the locally applicable legislation. If the outcome of said examination is positive, the application will be passed to WIPO.
  5. The Office where the request for division of an international mark is filed may also include, together with the request, a statement of interim status of the mark (Rule 18bis) or a statement of grant of protection (Rule 18ter).
  6. WIPO will examine the request for division on the basis of the requirements of Rule 27bis and notify any irregularity to the Office which presented the request while also notifying the owner of the mark.
  7. The request for division will be deemed abandoned if the Office in question does not remedy the irregularity within a term of three months from the date of its notification.
  8. WIPO will record the division of the international registration in respect of a designated Contracting Party when the request for division meets the requirements of Rule 27bis. The date of recordal of the division will be the date on which WIPO received the request or, in the event of an irregularity, the date on which it was remedied.
  9. WIPO will create a divisional international registration for the goods and services specified in the request, with the Contracting Party concerned as the sole designated Contracting Party.
Author: Cristina Arroyo

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