Sign In

Trademark Treaties and International Law

 

The Trademark Treaties and International Law (TTIL) Committee considers the treaties of the United States and foreign countries and intergovernmental organizations, and the statutes, rules, regulations, and judicial decisions of foreign countries and intergovernmental organizations, as they relate to trademarks, trade names, and unfair competition which may affect the business of U.S. companies.

The Committee coordinates its activities with the other trademark-related standing committees and with the global sector committees. 


 

 

 Public Calendar

 
< June, 2017 >
 Sun  Mon  Tue  Wed  Thu  Fri  Sat 
 28 
 29 
 30 
 31 
 1 
 2 
 3 
 4 
 5 
 6 
 7 
 8 
 9 
 10 
 11 
  TRIPS Council: "Derestriction" and Release of Minutes (Record) of March 1-2, 2017, Meeting
 12 
 13 
  TRIPS Council, Regular Session
 14 
  TRIPS Council, Regular Session
 15 
 16 
 17 
 18 
 19 
  Madrid Working Group, 15th Session
 20 
  Madrid Working Group, 15th Session
 21 
  Madrid Working Group, 15th Session
 22 
  Madrid Working Group, 15th Session
  European Council: Brexit Meeting (Article 50)
 23 
 24 
 25 
 26 
 27 
  NAFTA Hearing
 28 
  NAFTA Hearing
 29 
 30 
 1 
  Madrid System: Changes to the Common Regulations and Schedule of Fees that Enter into Force on July 1, 2017
 

 Public Announcements

 
  
Announcement Description
  

Amendments to the Common Regulations and Schedule of Fees of the Madrid System that Enter into Force on July 1, 2017

The amendments address the examination, by the International Bureau, of a limitation in an international application (Rule 12); the requirements with respect to a separate request filed by the holder to record a limitatiaon, and its subsequent examination by the International Bureau (Rules 25 to 27); and the ability of a holder, in a separate request, to add or amend indications regarding the legal nature and the State, and, where applicable, the territorial unit within that State, under the law of which it has been organized (Rules 25 to 27, 35, item 7.4 of the Schedule of Fees and MM9).
 

A description of the amendments, including a clean copy of the legal texts, may be found in Madrid System Information Notice No. 11/2017 (June 12, 2017).   

A track changes version of the amendments may be found in Annex I of WIPO document MM/A/50/4 (August 2, 2016), "Proposed Amendments to the Common Regulations Under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement," as adpoted by the Assembly of the Special Union for the International Registration of Marks ("Madrid Union Assembly") on October 11, 2016, at its Fiftieth (29th Extraordinary) Seesion, held from October 3 to 11, 2016, and reported in paragraph 22(i) of WIPO document MM/A/50/5 (December 16, 2016), "Report."

For more information about the ongoing work of the Working Group on the Legal Development of the Madrid System for the International Registration of Marks (“Working Group”) of the Madrid Union Assembly, see the prior Announcement of the Trademark Treaties and International Law Committee entitled, "Madrid System: Recent, Pending and Possible Amendments to the Legal Texts (2016-2019 and beyond)."

  

​Canada:  Proposed Trade-marks Regulations Released for Public Consultations (June 19 to July 21, 2017)

In anticipation of Canada's eventual accession to the Madrid Protocol, Singapore Treaty and Nice Agreement, as well as the modernization of its opposition, section 45 and objection proceedings, the Canadian Intellectual Property Office (CIPO) posted proposed Trade-marks Regulations for public comment from June 19 to July 21, 2017.

An overview, three video information sessions, a consultation document, instructions regarding submissions and the Trade-Marks Regulations themselves, may be found here.


  

ROMARIN to be Replaced by the Madrid Monitor in "Late 2017"

WIPO has published the following notice on its website:

"Starting late 2017, ROMARIN, Madrid E-Alert [MEA] and Madrid Real-Time Status [MRS] will no longer be available on the WIPO website.  Madrid Monitor integrates the functions and content of these tools, which will be discontinued later this year.  Over the next several months, we will provide you with training and resources as we transition together towards the next era in Madrid e-services."

In anticipation of the retirement of ROMARIN and the stand-alone versions of MEA and MRS, users can become familiar with the beta version of the Madrid Monitor and its Quick Start Guide.

Although the main Madrid pages of the WIPO website no longer have links to the MEA and MRS, they may still be accessed via the former page for Madrid System "E-Services."
 
General information about the recent changes in WIPO's Madrid E-Services, as well as the aforementioned notice, may be found here
 
See also the prior Announcement of the Trademark Treaties and International Law Committee entitled, "Madrid System: WIPO to Offer Webinars in June on the Use of the Madrid System."

 

  

Madrid System Webinars in June

At the end of June, WIPO will be offering free webinars in English on the use of the Madrid System:

How to Use Madrid E-Services Effectively
June 22, 2017, 9:00 am Eastern Time

Preparing Your International Application
June 27, 2017, 9:00 am Eastern Time

How to Prepare Your List of Goods and Services with the Madrid Goods & Services Manager (MGS)
June 29, 2017, 9:00 am Eastern Time

More information about the webinars, including how to register, may be found here.

  

​TM5: "Continuation/Expansion Bad Faith Project"

The JPO is the lead office in a TM5 project entitled, "Continuation/Expansion Bad Faith."  According to the TM5 website, the project's objectives are to "share information among partner offices on (1) laws and regulations, (2) examination practices and (3) issues regarding bad-faith trademark filings" and "raise user awareness on ways they can respond to bad-faith trademark filings."  In addition to the information and documents that have been posted on the TM5 website since the project's inception, the PDF document entitled, "Case Examples [JPO, KIPO, EUIPO, SAIC and USPTO] of Bad-Faith Trademark Filings (May 21, 2017)" may be found here.

  
TM5: "Project to Improve Convenience of the Madrid Protocol by Enriching Information"

The JPO is the lead office in a TM5 project entitled, "Project to Improve Convenience of the Madrid Protocol by Enriching Information."  According to the TM5 website, "This project aims to provide users with 'easy-to-use information guide' regarding the domestic procedures and requirements of TM5 partners in the standardized format, thereby ensuring that users of the Madrid protocol file international applications, and respond to notifications of provisional refusal to the Office of Designated Parties."  A description of the project as well as PDF guides for each of the five TM5 Offices (JPO, KIPO, EUIPO, SAIC and USPTO) may be found here.


  
 WIPO's Member Profiles Database for the Madrid System Goes Online

Periodically, the International Bureau requests that the IP offices of the Contracting Parties of the Madrid System provide information about their respective trademark laws and examination procedures as they relate to the Madrid System.  This information is now available in a new and more powerful format: the Member Profiles Database (MPD). 

The MPD allows users to retrieve specific or all information about one or more or all Contracting Parties.  The results can be converted into a PDF file and downloaded.  For more information on how it works, see the "Member Profiles Database Quick Start Guide." 

While not an official publication, the MPD databse may prove to be a useful and low-cost way to get an initial idea of what to expect or where further investigation might be needed.

Information about the recent changes in WIPO's Madrid E-Services in general, as well as the launching of the MPD in particular, may be found here.

  

WIPO Publishes its "Examination Guidelines Concerning the Classification of Goods and Services in International Applications (March 2017)"

 

In an effort to better communicate the internal policies on classification applied by its Madrid System examiners, WIPO has published its “Examination Guidelines Concerning the Classification of Goods and Services in International Applications” (Guidelines).  


As stated on the WIPO website:  “Every international trademark application filed through WIPO’s Madrid System must include a list of the goods and services covered by your mark. Your list should be clear and concise, and must follow specific rules on how to categorize (or “classify”) each item—in short, it must comply with the principles of the International Classification of Goods and Services or “Nice Classification."   If these requirements are not met, your application will not pass examination and an “irregularity” notice will be issued.”

 

Another important point raised by WIPO is the benefit of using the Madrid Goods and Services Manager (MGS)​—WIPO’s database of goods and services that are acceptable to the International Bureau and more—in conjunction with the new Guidelines. 


“And more” refers to such features as the 18 languages in which the content of the MGS is available as well as the ability to translate from any one language to another (useful for enforcement), the “Check acceptance by a designated Contracting Party” feature (32 plus Canada) that indicates whether a particular good or service that is accepted by the International Bureau will be rejected nevertheless by a national or regional office for one reason or another (e.g., a higher standard of specificity) and the inclusion of group codes for Japan and Korea as well as an ability to search all terms that fall within a given group code.

 

While the Guidelines and MGS may not eliminate the need to consult national or regional databases of acceptable goods and services, they are useful tools—perhaps indispensable in view of Article 3(2) of the Madrid Protocol and Rules 12 and 13 of the Common Regulations—for drafting indications of goods and services in international applications, and even in national or regional applications which may become the subject of an international application.

 

More Information


General information on how to use the Guidelines in conjunction with the MGS database may be found here.

General information about the ever-increasing capabilities of the MGS database may be found here

The most recent official publications released by WIPO regarding the MGS database include:


1) "New Version of the Madrid Goods and Services Manager (MGS)​," Information Notice 16/2016 (March 22, 2016)

 

2) “Progress Report on the Madrid System Goods and Services Database,” Madrid Union Assembly document MM/A/50/1 (July 4, 2016)

  

All legal texts of the Madrid System, including the Madrid Protocol and the Common Regulations​, may be found here.

 

  

Recent, Pending and Possible Amendments to the Common Regulations, Administrative Instructions and Schedule of Fees of the Madrid System

 Overview

The Working Group on the Legal Development of the Madrid System for the International Registration of Marks (“Working Group”) of the Assembly of the Special Union for the International Registration of Marks (“Madrid Assembly” and “Madrid Union,” respectively) has been engaged in a series of discussions that have resulted in the adoption of amendments to the Common Regulations under the Madrid Agreement Concerning the Madrid Agreement of the International Registration of Marks and the Protocol Relating Thereto (“Common Regulations,” “Madrid Agreement” and “Madrid Protocol,” respectively), the Administrative Instructions for the Application of the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating Thereto (“Administrative Instructions”) and the Schedule of Fees, that either have or will enter into force in 2016-2019.  Inasmuch as the discussions of the Working Group are ongoing and its agenda is full, additional amendments may be adopted during that time period and beyond.

Of immediate interest are the recent and currently pending amendments to the Common Regulations, Administrative Instructions and the Schedule of Fees that are specifically addressed in working documents adopted at the last two sessions of the Madrid Assembly: 

49th (21st Ordinary)Session (2015)​

50th (29thExtraordinary) Session (2016)

Some of the amendments amount to simple housekeeping (e.g., particulars regarding representatives and holders that are legal entities), some involve the overhaul of existing features (e.g., replacement), some involve the introduction of entirely new features (e.g., continued processing after missing a deadline due to a failure in electronic communications; division and merger) and still others involve a discussion of the role of each of the major players in the administration of the Madrid System, namely, the Office of Origin, the International Bureau and the Office of each designated Contracting Party, and, although not readily apparent, questions regarding the fundamental nature and structure of the Madrid System (e.g., the examination of imitations).

Also of interest are the items currently on the agenda of the Working Group for discussion in the short, medium and long terms.  Although most have yet to be discussed by the Working Group in any depth or detail, those discussions may lead to further steps in the development of the Madrid System that are as significant as those taken thus far.  Some topics sure to be of interest to practitioners include, inter alia, standard refusal periods; benchmarking implementation of the Madrid Protocol by Contracting Parties; consistency in classification practice among Contracting Parties.     

Although it is difficult, if not impossible, to predict how any given item  on the agenda of the Working Group will fare or how any resulting change in policy or practice might impact the day-to-day practice of law, these items should be of great interest to practitioners as well as policymakers.  Collectively they constitute a so-called “road map” for the future development of the Madrid System, the scope of which covers just about any concern about the administration or use of the Madrid System that has been raised by users—be they holders, practitioners or Offices—in recent memory.

Documents for Review by Interested Committee Members

Accordingly, Committee members and other interested persons are advised to become familiar with the sets of Proposed Amendments and Reports from the last two sessions of the Madrid Assembly, namely, the 49th in 2015 and the 50th in 2016.  In as much as they contain "track changes" versions of the amendments in question, the are a “must read” for users of the Madrid System.

MM/A/49/3 (July 7, 2015), “Proposed Amendments to the Common Regulations Under the Madrid Agreement Concerningthe International Registration of Marks and the Protocol Relating to thatAgreement,” and MM/A/49/5 (February 5, 2016), “Report.”

 

MM/A/50/4 (August 2, 2016), “Proposed Amendments to the Common Regulations Under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement,” and MM/A/50/5 (October 31, 2016), “Report.”


These and all working documents of the meetings of the Assembly and Working Group of the Madrid Union may be found here.

The next steps in the legal development of the Madrid System will be taken at the Fifteenth Session of the Working Group, which will be held in Geneva on June 19-22, 2017.  More information on that meeting may be found in the Committee Calendar.