Colombia - Individual fees under the Madrid Protocol

WIPO have clarified the Individual fees that Colombia wishes to be paid with respect to the Madrid Protocol designations when it becomes possible to designate Colombia in a Madrid Protocol application from 29 August 2012.

Quite strangely, should you wish to file in more than 24 classes then it will be cheaper to file in all 45 classes than it would be to file for 25 to 44 classes. Clearly, this could be a false economy as the more classes there are the higher chances of Provisional Refusals, oppositions, non-use cancellations, etc. but I cannot comprehend the logic behind Colombia's chosen fee structure.

If there has been typographical errors - although the same are quoted on the general Individual fees page - then presumably WIPO will pick up on this shortly.

Madrid madness!

The Philippines accession was perhaps more surprising as Colombia joining the Madrid Protocol was anticipated. However, they have shocked us somewhat with the speed of their accession. As I understand it they were aiming for the end of the year with local practitioners more conservatively expecting an early 2013 joining date.

There is not much to add to WIPO's announcement. As they say, India, Mexico and New Zealand have made a number of internal measures meaning Madrid Protocol membership is on the horizon for them.

We must wait to see if this is the catalyst towards a more rapid increase in Madrid Protocol membership and, specifically for Latin America, if this will swim against the "pink tide".

PROSUR - a new trade mark system?

IP tango reported last week on IP developments in PROSUR.

Could we see a new intergovernmental trade mark registration system akin to the Community Trade Mark and OAPI?

Colombia - which has just introduced a multi-class system - is also moving towards Madrid Protocol membership. Further internationalisation in Latin America could be a possibility. This would offer some cost benefits to what can be an expensive part of the world. However, I am not expecting any developments soon.

Co-operation has not been lacking in the past with the Andean Pact (comprising Bolivia, Colombia, Ecuador, Peru and formerly Venezuela) and Mercosur (Argentina, Brazil, Paraguay and Uruguay) having IP provisions. However, none have provided for a centralised registration procedure so a common PROSUR registration authority would be a radical step.

South America comprises 12 independent countries and PROSUR has a membership of 9 countries. It leaves just Bolivia, Guyana and Venezuela as non-members. WIPO has offered it's support for the group, but I hope, as must many others - particularly for the likes of Brazil - it does not distract them from a goal of Madrid Protocol membership.

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...