How to respond to WIPO Irregularity Notices.

🌍 WIPO irregularity notices

Let's say you have submitted your trademark to the WIPO. But does it mean that your trademark now is registered and protected in the designated countries? No, at least, not immediately. First, the WIPO will examine your application and check whether all the details are in order before the trademark information can be forwarded to the designated countries.

While examining the application there is a risk that the International Bureau of WIPO issues an irregularity notice, therefore, it is crucial for you to know how to deal with these notices to successfully register your trademark.

A WIPO irregularity for a Madrid trademark is a procedural error or oversight that occurs during the process of registering a trademark through the Madrid system, which is administered by the World Intellectual Property Organization (WIPO). These irregularities can include issues such as failing to pay the appropriate fees, submitting incomplete or inaccurate information, or failing to meet certain deadlines. If a WIPO irregularity is identified, the trademark registration may be delayed or denied until the issue is resolved.

There are 3 general categories of irregularities specified by the WIPO:

a. Irregularities in regard to the classification of goods/services

b. Irregularities in regard to the indication of goods/services

c. Other irregularities

🏬 a. Irregularities in regard to the classification of goods/services

  If the goods/services are not grouped in the respective class(es), the WIPO will make a proposal, and notify the Office of the base trademark and the applicant.

In case the applicant wishes to submit the response, it is required to respond within the time period set forth in the notice via the respective form provided by the Trademark Office of the country of the base trademark. The Trademark Office will review the applicant’s response and, if acceptable, will forward it to the International Bureau of WIPO.

In case the applicant does not file the response and no additional fees need to be paid, the WIPO will proceed with the classification and grouping that it considers to be correct. Please note if the notice requires the payment of respective fees, these fees must be paid directly to the WIPO. In case the applicant does not pay the required fees within the time period defined by the notice, the trademark will be considered abandoned.

 🏢 b. Irregularities with respect to the indication of goods/services

If the WIPO considers that a term used in the list of goods and services is too broad for the purposes of classification, is incomprehensible, or is linguistically incorrect, it will notify the Trademark Office of the base trademark and the applicant.

The WIPO may provide an alternative term or offer to delete the term(s). The Trademark Office of the base trademark will provide a form to submit a response to the notice ( if the applicant decides to file the response) and after reviewing the response, will forward it to the WIPO, if acceptable.

If the applicant considers that the terms suggested by the WIPO are not accurate or are outside the scope of the base application, the applicant should not accept the suggested items.

In case the applicant does not file the response to the notice, the WIPO will include the questionable item in the international register in the provided class, however, the WIPO will indicate that the item is considered to be too broad for the purposes of classification, is incomprehensible or is linguistically incorrect in the opinion of the International Bureau of the WIPO, and each designated country will receive this notation. Usually, it means that every designated country will issue an objection. 

Please note if any additional fees are due, the WIPO will not proceed with the registration of the application until the required fees are paid regardless if the applicant files the response.

❌ c. Other irregularities

This type of irregularities may be divided into 3 types:

•         Irregularities that need to be resolved by the Trademark Office of the base trademark( no actions are required on the side of the applicant)

•         Irregularities that need to be resolved by the applicant

•         Irregularities that can be resolved either by the applicant or the Trademark Office of the base country

Irregularities that can be resolved by the applicant include the following:

1.  information regarding the applicant or representative is not provided in full; 
2. priority claims issues; 
3. reproduction of the mark is not sufficiently clear; 
4. fees have not been paid; 
5. the amount of fees is not fully paid; 
6. the main list does not cover the classes the limitation of goods/services is applied for; 
7. there is no transliteration of characters other than Latin characters or Arabic numerals if any are the part of the mark; 
8. a colour is claimed as a feature of the mark, though no colour reproduction of the mark has been submitted.

How to respond to WIPO Irregularity Notices.

The instructions on how to respond are within the notice you receive. Carefully review the notice of irregularities: Make sure you understand the specific issues that WIPO has identified and what actions they are requesting you to take. If you are not sure, consult with Bonamark or with your attorney handling the case.

The applicant needs to remember that the fees associated with the response to the irregularity notice need to be submitted within the time period defined by the notice otherwise the trademark will be considered abandoned. Gather the necessary information and documents: You will likely need to provide additional information or documentation to address the irregularities. Make sure you have all the relevant materials on hand.

Submit your response: Submit your response to WIPO within the deadline specified in the notice of irregularities. 

Bonamark cooperates with local attorneys in more than 180 countries and will make sure that you do not miss the deadline to file the response to the irregularity notice if any and your trademark is filed in accordance with the requirements of WIPO.

Author: Ed Fedorovich, our WIPO specialist. Ed works at Bonamark since 2019 and participated in hundreds of trademark cases in many countries. He is especially fond of the Madrid Protocol and helps new businesses extend their marks to foreign countries.