16 December 2011

Protocol progress

Will 2012 see the membership of the Madrid Protocol increase?

Where do you see new members coming from, if at all?

In the words of Elvis Presley, "a little less conversation, a bit more action please" could be in order and I think the last few years have brought many false dawns. Political factors, economic factors and the clout of local legal professionals (when the majority are against membership) put barriers to membership. I say barriers as it's clear we see these as barriers from Europe and the US but I have heard the arguments against. The one that suggests, "the Protocol is a great way of reducing the trade mark spend of large primarily US and European trade mark owners but what benefits does it bring to small local applicants in emerging markets and the developing world?" is prominent, and we do need to guard against arrogance in this respect.

I'll wager that 2012 will see two new members of the Protocol. There might be the addition of a Common Law African country, but don't count on the amendment of the local law to make an International Registration enforceable. I can get a bit annoyed when WIPO secure a new membership but don't follow up vigorously on the adaptation of the local law to accommodate it. It's like receiving a signed cheque when the account has no money in it, or take it the other way, like saying get this amazing Madrid Protocol software when you don't have the hardware to run it.

Anyway, I will even goes as far as saying that the two new members will be Colombia and New Zealand. I don't think I've really put my head on the block here as legal developments in Colombia and New Zealand point towards this.

When WIPO made Spanish an official language of the Madrid Protocol it was expected to facilitate waves of membership from Latin America. This hasn't happen but Colombian membership will bring a sigh of relief from Geneva.

New Zealand is a logical extension. It's legislation is in order, they'll benchmark with countries with similar laws (Australia, Singapore, United Kingdom) and their IPO is very organised so the 18-month examination timeline is no problem. New Zealand IP firms may feel a decline in filings, but Australian IP firms have been filing direct in New Zealand for a few years now due to bilateral arrangements and I think it is an outward looking profession that will adapt, despite some natural reservations.

India and South Africa represent possible future membership but I believe most of us would not want them to rush things. They generally see the benefits and the legislative amendments required should not prove problematic. However, backlogs in the examination of applications should be addressed before they commit to membership. India has made significant progress but I feel some consolidation would be sensible.

I think it's difficult to see much action from Latin America aside from Colombia. I'd anticipate other possible members coming from North Africa. Algeria, the final sole member of the Madrid Agreement may bring some sadness to European quarters as it will bring the curtain down on the Madrid Agreement. Tunisia, a former member of the Madrid Agreement in years gone by may also be ripe for membership.

We shall see and we wait with baited breath.

On another point, as the Madrid Protocol can feel highly politicised at times, you may wish to keep an eye out on International Registration No. 1090797 filed on 10 August 2011 designating, amongst others, Iran and Syria.  Office of origin: Israel...