Responding to a WIPO Rule 12 Irregularity Notice: Actionable Guide

Receiving official communication from the World Intellectual Property Organisation (WIPO) about an international trademark application made under the Madrid System can be very intimidating for brand owners and IP managers. Of all the notifications sent as part of the international registration process, a WIPO Rule 12 irregularity notice is an obstacle specifically related to the classification of goods and services.

To protect your international brand strategy and prevent your trademark rights from being abandoned or restricted, you must know how to correctly interpret, assess, and respond to a WIPO Rule 12 irregularity notice within strict statutory time limits.

It is an official notice of a defect served by the International Bureau (IB) of WIPO pursuant to Rule 12 of the Regulations under the Madrid Protocol when the International Bureau believes that any of the goods and services listed in an international trademark application are wrongly classified according to the Nice Classification (International Classification of Goods and Services for the Purposes of the Registration of Marks).

Under the Madrid System’s operational workflow, the point-of-origin office (for example, the UK Intellectual Property Office (UKIPO) or the European Union Intellectual Property Office (EUIPO)) performs an initial verification before certifying the application and forwarding it to WIPO. However, WIPO carries out its own examination of the list of goods and services to make sure that it complies completely with the current active edition of the Nice Classification. When WIPO’s examiners find classification errors or terms that do not legally belong in the class declared, they send out a formal Rule 12 notice outlining the mandatory reclassifications or amendments needed.

• Misclassification: Placing goods or services in the wrong classes relative to the official Nice Classification alphabetical list (for example, putting ‘downloadable mobile apps’ in Class 35 rather than in Class 9, or ‘software as a service [SaaS]’ in Class 9 rather than in Class 42).
• Errors Involving Unspecified Classes: Including items that legally belong in a class that was not originally selected or paid for in the international application, thereby requiring additional class fees.
• Outdated Nice Classification Editions: Using terms from older editions of the Nice Classification that have since been reclassified, amended, or moved to entirely different classes in the current active edition.

• • Standard Response Window: The applicant and/or the office of origin has three (3) calendar months from the date of the notification by WIPO to remedy the irregularity or pay any outstanding fees.
  • Payment of Supplementary Fees: When WIPO suggests a reclassification that involves the addition of one or more Nice classes: the required individual or supplementary class fees must be paid within the same three-month timeframe.
  • Office of Origin Communication: Depending on national procedure, responses regarding classification modifications under Rule 12 are often routed through or require the official concurrence of the office of origin.

1. Talking to an IP agent for assistance.
2. Performing analysis of WIPO’s suggested classification
3. Verification of basic application alignment.
4. Determination of procedural route (accepting WIPO’s proposal, proposing an alternative classification, or contesting the finding)
5. Calculating additional fee obligations

• Registration with WIPO’s Proposed Classes: If no response is received but no additional fees are due, WIPO will register the trademark under the classification structure they proposed.
• Public Irregularity Stamping: WIPO will display a public indication on the International Register stating that the International Bureau considers the goods or services to be incorrectly classified. This can cause significant confusion and unexpected refusals when individual designated countries examine the mark later.
• Total Abandonment for Unpaid Fees: If WIPO’s proposed reclassification requires supplementary class fees and those fees are not paid within the three-month deadline, the entire international application will be declared abandoned.
• Forfeiture of Fees: Application fees paid for an application that subsequently becomes abandoned due to non-payment of Rule 12 fees are non-refundable.

A: This is a formal notice sent out by the International Bureau of WIPO stating that one or more of the goods or services included in an international trademark application are incorrectly classified in accordance with the Nice Classification criteria.

A: You have exactly three (3) calendar months from the date of issuance stated on the notification from WIPO to submit corrections or pay any required additional classification fees.

A: No. Any amendments submitted in response to a Rule 12 notice must remain strictly within the scope of the basic application or registration registered at your office of origin (such as the UKIPO or EUIPO). You can never expand your scope of goods during an irregularity response.

A: If you agree with WIPO’s proposal and no additional classes or fees are required, WIPO will update the record, register the mark, and notify the designated Contracting Parties.

A: Acnova Ltd. provides international IP portfolio management and digital filing proxy services, helping foreign law firms and transnational companies in China, the United States, the EU, the United Kingdom, and in countries globally to analyse classification defects, prepare compliant goods and services descriptions, and submit administrative responses to international IP offices.

A: No. Acnova Ltd. is a private international IP services company registered in England and Wales. It acts as an administrative filing intermediary and IP support provider.