12 July 2012

WIPO Madrid Highlights - Issue 2‏

WIPO have issued their second edition of their e-zine Madrid Highlights following on from their first edition in March.

Most of the publication is, of course, self-explanatory but as lots of it uses "WIPO speak", which is not a criticism as they are obliged to use this language, I will comment in simpler English.

In the first Madrid Working Group section, point 1 refers to the deletion of a section which has become obsolete. This needs to be agreed but would appear a formality.

The second point refers to Article 9sexies of the Madrid Protocol. It is not often anyone would regard the Madrid Protocol as sexy! What this currently means is that if contracting parties are both members of the Madrid Agreement and Madrid Protocol when it comes to examination and fees they follow the Madrid Agreement. For example, if you happened to be a Swiss applicant (basing your International application on a Swiss registration) designating China then the Chinese Office would have to examine the mark within 12 months and a complementary fee (not an individual fee) would be charged for China. Switzerland and China are members of the Madrid Agreement and Madrid Protocol.

This does put applicants from countries that are parties to both the Madrid Agreement and Madrid Protocol at an advantage in terms of being able to obtain quicker protection and cheaper protection for some countries. Applicants from the likes of the United States, the UK, Australia and Japan (i.e. Madrid Protocol only members) may consider this unfair.

On the flip side, Trade Marks Offices in the likes of China are under more pressure to examine quickly and they are losing out on official fees. China lost out on nearly 10 million Swiss francs last year. That may represent a relative drop in the ocean to an economy the size of China's but it could pay for a few examiners. The Office of Belarus, as another example, lost out on over 4 million Swiss francs last year. With processing delays of 3-4 years on national applications think of the number of examiners and support staff they could recruit to reduce their backlog.

Of course, our Swiss applicant as per the example above, is happy - a cheap trade mark within 12 months. The WIPO document is merely asking the Working Group to consider Article9sexies but, reading between the lines from how the information has been presented, it is encouraging them to close this "loophole".

For now, applicants from EU countries that are Agreement and Protocol members (e.g. France, Germany) would find it advantageous to file International applications based on national applications/registrations rather than Community Trade Marks.

The third point relates to a suggestion from the Association romande de propriété intellectuelle (a professional IP association for French-speaking Switzerland) to introduce division in International Registrations. This was back in 2008 so you can see it takes a while for things to progress in the corridors of power at WIPO.

It basically provides for a designation of an International application (i.e. not the entire application for all countries) to be divided specifically when, during examination, some goods/services have been accepted but others are subject to objections. It would allow the accepted goods/services to move forward to obtain a Statement of Grant and the objections raised can be argued against separately.

The merger provisions will allow divided designations to be merged back together, assuming the objections are overcome.

This has not been agreed yet but I can anticipate it coming into force. It will only be applicable to member states that have division provisions within their national laws. For example, division is possible for Community Trade Marks. Their current guidelines do not allow it through the Madrid Protocol: "The division is not available for an international application under the Madrid Protocol designating the EC: Their Register is exclusively kept at WIPO. The OHIM does not have the authority to divide an international designation."

Point 4 relates to translations between the three official languages (English, French, Spanish) and, in my opinion, will not impact users too much. It is more to manage WIPO workloads and not to translate for translation's sake.

The Madrid System Legal Forum is set up "to facilitate the free exchange of ideas concerning the present and future of the Madrid system". Well, not quite. Disappointingly, this is restricted (as you can see) to staff from member state Trade Mark Offices. I can appreciate WIPO not wishing all and sundry making comments and suggestions but they could at least give access to professional bodies such as INTA, ECTA, ITMA, etc. It is my usual criticism of WIPO that it is a "closed shop" or like an old state monopoly that does not seek the opinions and feedback from its customers (trade mark owners and representatives) enough.

Most of us will already be aware that the Philippines and Colombia have joined the Madrid Protocol. I have heard that, like with national applications, Affidavits of Use will be required for IRs designating the Philippines to be filed with the Intellectual Property Office of the Philippines, not WIPO.

The rest of the document requires little explanation. I was keen on the 'Madrid Tips' section on Second Part Individual Fees. However, because they must keep to their "WIPO speak" they cannot use everyday IP language to most of us: these are basically registration fees. I would also recommend using WIPO's excellent E-Payment facility to pay these which gives you an immediate e-mail confirmation.