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.

Journey south

The blog journeys south this week as we leave Panama and enter Colombia and South America.

Colombia represents the strongest chance that the Madrid Protocol will advance into Latin America (aside from the existing membership of Cuba). However, for the time being a national filing is required.

National filings are required for the other countries of South America too. Brazil's growing stature on the international stage may make it next in line to join the Madrid Protocol, but this is a guessing game in this region. Every time there seems to be a new member on the horizon, nothing materialises. Brazil has problems with the backlog of its applications which it would need to address (and appears to be doing so albeit slowly) if they were not to operate a two-tiered "slow national system" and "faster Madrid system".

I would commentate that Madrid membership may have hit a bit of a standstill. I think Colombia will join the fray (although let's see), but South America has generally moved to the left politically and the influence the US has in the region has arguably waned. Lawyers in Latin America can also be close to the politicians and with a general fear of the Madrid Protocol diminishing their case loads, they will naturally use any influence they may have in this respect.

The most notable country being as far away from Madrid Protocol membership as possible is surely Venezuela. Having reverted back to an old Trade Mark Law from 1955 it is easy to see their local classification system and 15-year registration terms being incompatible with Madrid.

So national filings are required in the Spanish-speaking countries of the continent: Argentina, Bolivia, Chile, Colombia, Ecuador, Paraguay, Peru, Uruguay and Venezuela. The regional powerhouse, Portuguese-speaking, Brazil also requires a national application as does Dutch-speaking Suriname. English-speaking Guyana requires a local application although the option exists to base an application on a United Kingdom registration which can simplify registration and is the only way to register a service mark.

A UK registration is required for automatic protection to the Falkland Islands, based on local legislation from 1996, and to South Georgia and the South Sandwich Islands, based on an Ordinance from 2001. It is believed that as this covers trade marks "having effect in the United Kingdom" this would include Community Trade Marks.

A French or a CTM registration will provide protection to the overseas department of French Guiana.

The minimum number of filings for South American protection is therefore 13 including a Community Trade Mark. Strangely enough this is a larger number than is required for Europe.

This week is one of January sales so you will get two continents for the price of one as we continue southwards to Antarctica!

The continent of Antarctica has no trade mark legislation of its own per se. It can be expected that Argentinian, Australian, Chilean, French, New Zealand and Norwegian registrations should provide protection in the relevant claimed areas, although note the Argentinian and Chilean claims overlap with British claims. Theoretically, common law rights could exist in the British claimed section, but UK registrations have no effect in the British Antarctic Territory as far as we are aware as it would need specific legislation to be passed.

The various claims to Antarctica are not recognised by a number of countries, although Australia, France, New Zealand, Norway and the United Kingdom recognise each other claims. According to the Antarctic Treaty System, "Article 4 – The treaty does not recognize, dispute, nor establish territorial sovereignty claims; no new claims shall be asserted while the treaty is in force."

Antarctica normally hosts a non-permanent population of roughly 1000 people who we must imagine bring extremely warm clothing and non-perishable foodstuffs from their home countries. On the IP radar it is not.