27 March 2012

WIPO Madrid Highlights‏

WIPO have launched a new and welcomed 'Highlights' newsletter. To subscribe, go here.

The publication is decent in itself and so I will only briefly comment.

WIPO has been suffering from backlogs of late. It received 173,000 Statement of Grants (mandatory since 1 January 2011) during last year which is a clear pressure on WIPO. It seems some national Offices were reporting these in bulk but to streamline WIPO operations they have now requested these on an individual basis. This makes sense; holders and representatives do not need to receive information on third parties' International Registrations.

In May 2012, WIPO will introduce three web-based communication services. The "Madrid Electronic Alert" service should be useful. You can receive your watch notices from your provider upon publication in the WIPO Gazette and then, for applicable countries, get notified by WIPO if and when a designation is published and opposable. This could be similar to the alerts offered through TMView. We have had this (available offline upon payment of a fee) in the UK for as long as I know. We call it a Caveat; they're now available online for free.

The two further services, "Madrid Real-time Status" and "Madrid Portfolio Manager" should - although there may well be teething problems - speed up various recordals and provide holders and representatives with a lot more clarity with their progress. Delays are so much at the moment that it can feel that these things are going into an uncertain black hole.

The translation steps seem sensible whereby certain translations will not be made into all three official languages but are available on request for free thus not discriminating users. This is contrary to OHIM who are obliged to translate into 22 EU languages.

I knew they existed but I've not seen the Operations Teams clarified before. Feasibly, the volumes may be too high but I would have liked to have seen the individual EU countries serviced through the same team as the European Community. Currently, applicants from Austria, Benelux, Cyprus, Denmark, Estonia, Finland, Germany, Greece, Ireland, Italy, Latvia, Lithuania, Slovakia, Slovenia, Sweden and the United Kingdom will work with one team when filing based on a national right, and with another team when filing based on a Community Trade Mark.

I can be a bit critical of WIPO. Their emphasis on recruiting civil servants from other Trade Marks Offices is flawed in my opinion. I feel they should be looking to get some people on board that have been customers of WIPO and who can give them this perspective. That is clearly not to suggest that civil servants are untalented and they have a notable advantage in understanding the bureaucracies of government and international organizations but a more balanced workforce could see improvements in customer empathy.

Overall, to finish positively, the web-based communication services look like an impressive leap into the right direction together with other pragmatic suggestions.