WIPO: What's in the pipeline for the Madrid Protocol?

19th Aug 2021

Oscar Benito brings us up to date on what’s up at WIPO.

A number of important changes were approved at the meeting of WIPO’s Madrid Working Group last October.

This is the forum in which Contracting Parties to the Madrid Protocol and official observer organisations such as CITMA work to improve the international trade mark system. Changes included the partial replacement and the removal of the graphic representation requirement when filing an International Registration (IR).

Currently, replacement is only possible if the goods and services of the earlier national right are fully encompassed by the specification of the IR. Partial replacement will mean that earlier rights that only cover some of the goods and services listed in the IR can also be replaced. This improvement should help trade mark holders to consolidate their portfolios and save costs. Contracting Parties are required to implement this change by 1st February 2025.

Major improvement

The removal of the graphic representation requirement when filing an IR is another significant improvement to the Madrid system. Contracting Parties are required to implement this by 1st February 2023.

It should be noted that there is no actual requirement to amend the national legislation among the Contracting Parties. Therefore, users will need to check carefully whether a graphic representation is still necessary in each of the countries in which they designate an IR.

Over the past two years, there have been discussions about the feasibility of adding Arabic, Chinese and Russian as working languages of the Madrid system. WIPO’s Secretariat is preparing a revised study of the cost implications and technical feasibility of gradually introducing these languages. Adding languages is likely to come at a cost, and there is a concern that this will be passed on to users at a time when businesses are struggling as a result of the COVID-19 pandemic.

Added complexity

Also of concern is that these new languages will add complexity to the Madrid system and increase timelines. Members of the CITMA WIPO Liaison Committee have met with the legal team at WIPO to discuss the risks and the opportunities that these new languages will offer, especially if new countries join the Madrid Protocol. WIPO intimated to CITMA that these costs are not expected to be passed on to users and that if the new languages are introduced in stages, there should be no bottlenecks or significant delays. This topic will be further discussed at the Madrid Working Group meeting scheduled for November this year.

At the November meeting, it is also expected that a proposal from the UK Government, prompted by CITMA, will be discussed – namely to introduce clear deadlines for replying to provisional refusals. This has been a longstanding request from CITMA; CITMA and MARQUES published a joint paper on this topic last year requesting that the date of the deadline for a response to a provisional refusal be clearly stated on the communication from the International Bureau of WIPO to the holder of the IR. This joint paper was also signed by AIM, ECTA and APRAM. It is critical for users to know the exact deadline date for a response to a provisional refusal.

So, on this subject: stay tuned.

Oscar Benito leads CITMA’s WIPO Liaison Committee and is a Legal Consultant at Gavi, The Vaccines Alliance (COVAX)

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