The Twelfth Session of the Working Group on the Legal
Development of the Madrid System for the International Registration of Marks at
WIPO is currently meeting. Set forth
below is a summary of the proposals currently being considered. Copies of the meeting documents are available
via the WIPO website at: http://www.wipo.int/meetings/en/details.jsp?meeting_id=32427
Proposal to Freeze
the Operation of the “Dependency” Principals in Articles 6(2), (3) and (4)
The most significant proposal under consideration is a
proposal to freeze the dependency requirement.
Under the current Madrid treaties, an International Registration is “dependent”
on the registration of the mark registered in the country of origin for a
period of five years from the date of the International Registration. This gives rise to the concept of a “central
attack,” whereby the International Registration (including the trademark rights
in all of the countries designated in the International Registration) are
susceptible to attack by attacking the in a single proceeding, namely by
cancelling the basic registration (i.e., the registration of the mark in the
country of origin). One justification
originally put forward for the dependency principal was as a means to help
prevent the Madrid treaties from being used to facilitate bad faith
registrations. To temper the potential
impact of the dependency principal, the Madrid Protocol introduced the concept
of “transformation” – a process whereby an International Registration cancelled
as a result of a central attack can be transformed into individual national
registrations in those countries previously designated in the cancelled
The current proposal would freeze the application of
dependency with respect to all future Madrid applications
(dependency would continue to apply with respect to all International
Registrations issued from Madrid applications filed prior to the effective date
of the proposed change). One practical
effect of the proposal is likely to be a reallocation of costs to attack or
defend an International Registration.
For example, in the event of a successful central attack under the
current system, the International registrant bears the costs of transformation
to preserve its trademark rights in the countries previously designated in the
cancelled International Registration. By
comparison, under the current proposal, the attacking/challenging party would bear
not only the cost to attack the country of origin registration, but would also
bear the cost of separately challenging the International Registration in each
country designated in the International Registration.
to Common Regulations
Amendments to Rule 5 – FAILURES IN POSTAL AND DELIVERY SERVICES OR COMMUNICATIONS
Provide relief if failure to
respond timely is due to force majeure relating to the mode of delivery (either
by post or by electronic means) (such as local internet outage). Would require due care and evidence of the
circumstances (“reliable and verifiable information of the situation”).
This would be in addition to
“continued processing” option under proposed Rule 5bis, which will be submitted
to the Madrid Union Assembly in September 2014 (but, if adopted, “continued
processing” will require a fee and must be submitted within two months
following expiry of the time limit concerned).
2. Proposed Amendments to Rule 9 - VOLUNTARY
DESCRIPTION OF THE MARK
Amend Rule 9 so that applicant may
provide a description of the mark (i) even if one is not provided in the basic
application and (ii) which may or may not be identical to the one in the basic
application or registration.
3. Proposed Amendments to Rule 21 – REPLACEMENT
The proposed amendments would make
it possible for the IB to act as a conduit or clearinghouse for requests to the
Offices of Contracting Parties to take notice of a replacement. No fee would be charged by the IB, but Office
of Contracting Parties could charge a fee.
Replacement – a subsequent IR
replaces a prior national or regional registration where: (i) both are owned by the same entity, (ii)
and all the goods/services in the national or regional registration are also
listed in the IR.
4. Proposed Amendments to Rules 24 and 36 - SUBSEQUENT
Amendments would (i) require IB to
review ID if different from IR; (ii) allow IB to charge a fee; (iii) provide
exemption from fee for filings that are limited updating contact information;
and (iv) provide for use of an e-form for subsequent designations.
Proposal for the
Introduction of the Recordal of Division or Merger Concerning an International
Would set up centralized procedures
at the IB for dividing an IR and for “re-merging” previously divided IBs.