Working with WIPO

14th Nov 2022

Oscar Benito shares CITMA’s priorities for improvement.


For global, interconnected economies, WIPO is undoubtedly a great IP ally.

Indeed, its Director General, Daren Tang, has started to lay out his vision of transforming WIPO into a user‑centric organisation, rather than an agency‑centric one.

During CITMA’s visit to Geneva earlier this year, Tang thanked the Institute for its proactive and constructive engagement with WIPO.

Admittedly, many things can still be improved, and CITMA’s proposals to make the Madrid system more user‑friendly were captured in the 2017 UK Position Paper.

However, CITMA is committed to work with WIPO, the UK IPO and all members of the Madrid union to make these proposals a reality.

There are two particular areas of improvement that CITMA feels could be transformational: getting dated deadlines on provisional refusals of protection; and procuring meaningful statements of grant of protection from all countries.

Dated deadlines

The time limits to respond to provisional refusals vary greatly between contracting parties: from 15 days to 15 months.

Users of the system continue to find it difficult to ascertain or calculate the actual response date relating to the provisional refusal, and often the information provided in the guidance documents does not match the advice from local attorneys in most countries.

This is obviously an area of huge concern to users. Specific proposals to deliver dated deadlines are expected to be discussed at the Working Group meeting taking place by the end of 2023.

Meanwhile, the importance for users of this potential change cannot be underestimated.

Securing statements

Users always expect to receive positive acknowledgement that a “right” has been granted and, ultimately, an official document that embodies said right.

The obligation that all countries should issue statements of grant of protection was a massive improvement to the Madrid system.

The old “no news is good news” approach was certainly not an acceptable way to manage trade mark portfolios.

However, some countries are not yet issuing statements of grant of protection, and some countries merely issue a list of registration numbers.

Also, enforcement authorities in many countries are not accepting statements of grant of protection or WIPO extracts, meaning national certificates are then required.

These difficulties undermine trust in the Madrid system.

As a potential solution, CITMA is working with WIPO on a pilot “certificate” that could potentially include the WIPO logo and the logo of the IPO of the designated country.

Please let us know if you have any suggestions on the format.

Other topics that CITMA’s WIPO Liaison Committee is focusing on include creating classification guidelines on NFTs and addressing the lack of implementation of the Madrid Protocol in some African countries (mainly Eswatini, Lesotho, Sierra Leone and Zambia).

On a domestic level, CITMA is following with hope the UK IPO’s test to set up an e‑filing system for new international registrations.

We are also looking into the root cause for the increased irregularity rates for applications from the UK (38% in 2020 to 42% in 2021) with the goal of sharing tips and learning with users. Stay tuned!

Oscar Benito is a member of the CITMA Council and leads its WIPO Liaison Commit.

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