The future of the Madrid System under debate
by Elena Molina (IPspiration – Spain)
WIPO hosted between June 13 and 17, 2016 the 14th session of the Working Group on the legal development of the Madrid System for the international registration of marks (hereinafter, the “Madrid System Working Group”). This is the forum where the Contracting Parties of the Madrid System together with WIPO and a number of international non-governmental organizations, including INTA, MARQUES, CEIPI, APRAM, AROPI, JTA, JPAA, JIPA and of course AIPPI, discuss possible amendments to the Common Regulations under the Madrid Agreement concerning the international registration of marks and the Protocol relating to that Agreement as well as proposals for improvement of the Madrid System. I had the honour of attending in representation of AIPPI.
The 14th session of the Madrid System Working Group has been especially important for three main reasons: first, because it has coincided with the 15th anniversary of the Madrid System; second, because after almost a decade of intense discussions, the introduction of division (and merger) into the Madrid System has been approved and; third, because it has marked the beginning of an in-depth and ambitious debate about the future of the Madrid System. A roadmap setting out the topics to be discussed at short, medium and long term has been adopted. This roadmap is therefore called to become a reference document of the Madrid System Working Group over the next decades.
The topics to be discussed in the short term in the Madrid System Working Group are replacement, transformation and new types of trademarks. In turn, classification principles, correction, correspondence of marks for certification purposes, marks in different scripts, fulfilment requirements and the publication of examination practices of the International Bureau will be covered at short term in the Roundtable. The Roundtable is a parallel meeting whose primary objective is to share information on the practices of the Offices of the Contracting Parties and the International Bureau.
In the medium term the Madrid System Working Group will discuss the harmonization of the time limit to reply to a provisional refusal of an international mark, correction, fees and payment options and the reduction of the dependency period. The Roundtable will be focused on the possible harmonization of the classification practices, the scope of the list of goods and services and the updated international registration certificates.
In the longer term, the Madrid System Working Group will discuss the broadening of the entitlement to file international marks, the possibility of requiring the endorsement of a Madrid Commitment Charter when becoming member of the Madrid System and the introduction of a review procedure for decisions concerning international marks.
It is noteworthy to recall that AIPPI has a formal position regarding the dependency principle and the basic mark. In its Resolution to Question Q239 adopted on 17 September 2014 at the World Congress in Toronto, AIPPI resolved to support neither the abolition of the basic mark nor the abolition or freezing of dependency but to advocate for the reduction of the dependency period from five to three years. As indicated in the said Resolution, “such [reduction] would provide a more even balance between the interests of the trademark owner on the one hand (providing an earlier level of certainty) and third parties on the other hand”.
The 14th session of the Madrid System Working Group has put into evidence that the Madrid System is not a static structure but a live and dynamic system. Its irrefutable solidity at the present time lies precisely in its capacity to encompass new realities and respond to the new challenges posed by the joining of new members from across the five continents. In the future it will have to keep evolving in order to meet the users’ needs and expectations and the changes driven by the globalisation of the markets, the fast-advancing technologies, the growing diversity within the system and the varying degrees of maturity among national/regional Trademark Offices. The implementation of the roadmap in the coming years will show if and to what extent such evolution is actually possible.