Amendments to the Madrid Protocol and the Regulations Thereunder Adopted by the Assembly of the Madrid Union at its September-October 2006 Session

1. Introduction

At its 37th session, held as part of the 42nd Series of Meetings of the Assemblies of Member States of WIPO which took place from September 25 to October 3, 2006, the Assembly of the Madrid Union adopted an amendment to Article 5(2)(c)(ii) of the Madrid Protocol, with effect from October 3, 2006, as well as several amendments to the Common Regulations Under the Madrid Agreement and the Madrid Protocol. Unless otherwise specified, the latter will come into force on April 1, 2007.

2. Article 5(2)(c)(ii) of the Protocol

Article 5(2)(c)(ii) of the Protocol provides for the time limit within which a refusal, based on an opposition, may be made by a Contracting Party beyond the 18-month time limit spelt out in Article 5(2)(b).1 Following a review of the operation of the refusal procedure under Article 5 of the Madrid Protocol (mandated by Article 5(2)(e) thereof), it was considered that the wording of Article 5(2)(c)(ii), which was reported as having given rise to misinterpretations, could be simplified without its substance being affected. That provision now reads as follows:

“(ii) the notification of the refusal based on an opposition is made within a time limit of one month from the expiry of the opposition period and, in any case, not later than seven months from the date on which the opposition period begins.”

3. Amendments to the Common Regulations

Brief explanations are given below of the reasons for, and scope of, the most significant of the amendments made to the Common Regulations. Other amendments to the Common Regulations, more of a “housekeeping” nature, are simply mentioned. The texts of the amended provisions of the Common Regulations may be found in WIPO document MM/A/37/3 Rev., available on WIPO’s website (Word document).

4. Continuation of the Effects of International Registrations in Successor States (Rule 39 and Rule 1(xxvibis))

4.1 Shortly after the partition of the Socialist Federal Republic of Yugoslavia and the collapse of the Soviet Union, a rule was introduced in the Regulations Under the Madrid Agreement to provide for the continuation of the effects in newly independent States whose territory was, before independence, part of the territory of a State party to the Madrid Agreement, of international registrations which had effect in the predecessor State before a date specified by the successor State, subject to: a declaration of continuation by the successor State to the effect that it applied the Agreement; the filing of a request from the holder of the international registration concerned; and the payment of a fee. When the Common Regulations were adopted, shortly before the entry into operation of the Madrid Protocol, that rule was included in the Common Regulation, as Rule 39 thereof. It did not however contemplate the situation that would arise of the partition of a Contracting Party of the Protocol.

4.2 In June 2006, the Republic of Montenegro declared its independence from the State Union of Serbia and Montenegro, which was a party to both the Madrid Agreement and the Madrid Protocol. This triggered a proposal to amend Rule 39 so as to make it applicable also to the continuation of the effects of designations made under the Protocol. Besides, paragraph (5) of that Rule has been amended to spell out that the procedure under Rule 39 does not apply to a State which has deposited with the Director General of WIPO a declaration according to which it continues the legal personality of the predecessor State. Serbia deposited such a declaration on September 19, 2006. Therefore, designations of the State Union of Serbia and Montenegro made under the Madrid Agreement or the Madrid Protocol continue to have effect in Serbia without any need for a request to that effect or the payment of any fee. On the other hand, it is not yet known whether the Republic of Montenegro will make a declaration of continuation under Rule 39(1).

4.3 Rule 39 as amended entered into force on October 3, 2006. A related amendment was made, with effect from the same date, to Rule 1(xxvibis) of the Common Regulations, to provide for the definition of the term “Contracting Party of the holder” in the case of succession of State.

5. Replacement (Rule 21)

5.1 Under article 4bis of the Madrid Agreement and the Madrid Protocol, when a mark that is the subject of a national or regional registration in the Office of a Contracting Party is also, subsequently, the subject of an international registration in the name of the same holder designating the said Contracting Party, the international registration is deemed to replace the national or regional registration, without prejudice to any right acquired by virtue of the latter. At the request of the holder, the replacement is noted in the register of the Office of the Contracting Party concerned which, under Rule 21, must notify the International Bureau of WIPO accordingly. The latter records the replacement in the International Register and publishes the recorded information in the international Gazette.

5.2 Rule 21, however. did not provide for the communication (and recording in the International Register) of data concerning any “right acquired by virtue of” the earlier national or regional registration other than the priority date if any. The amendment adopted by the Assembly of the Madrid Union will allow the communication, recording in the International Register and publication of information on any other rights acquired by virtue of the national or regional registration. Examples of rights that could thus be recorded are any seniority attached to a Community trade mark or the status of incontestability attached to a US trademark. Rule 21 as amended leaves it to the International Bureau of WIPO to agree with the Office of each of the Contracting Parties concerned on the form of communication of such additional information.

6. Representation Before the International Bureau (Rule 3)

Rule 3 of the Common Regulations has been amended to remove any condition regarding the address of the representative, if any, of the applicant or holder before the International Bureau of WIPO. It will not even be necessary that the person appointed has an address in a Contracting party of the Madrid Agreement or the Madrid Protocol. It is to be noted, however, that Rule 3 concerns only the representation before the International Bureau of WIPO. Representation before the Office of origin or the Offices of designated Contracting Parties is governed by the legislation of the country or organization to which those Offices belong.

7. Housekeeping Amendments

7.1 Rules 19, 20, 20bis and 21 of the Common Regulations have been amended to stipulate the date as of which communications regarding invalidations, restrictions of the holder’s right of disposal, licenses and the replacement of a national or regional registration are recorded in the International Register. In accordance with the extant practice of the International Bureau of WIPO, that date shall be the date of receipt of the communication, provided that the latter is in order, or, if not, the date on which it is put in order.

7.2 Rule 20(3) has been amended to provide that the recording of a restriction of the holder’s right of disposal shall be communicated also to the Office of the Contracting Party of the holder (even where that Office is not the Office which had requested such recording).

7.3 Under Rule 28(2) as amended, the Office which has requested a correction in the International Register will also be notified of the entry of the correction in the Register (even where that Office is not the Office of a designated Contracting Party).

7.4 Rule 32(3), which currently provides for the publication of a yearly index of the names of the holders of the international registrations in respect of which one or more entries were published in the Gazette during the year, will be deleted. It is explained that the information is now available through the (searchable) electronic versions of the Gazette.

1. Currently, 20 Contracting Parties of the Protocol (out of 70) have made the declaration allowing a Contracting Party to issue a refusal based on an opposition more than 18 months from the date on which the notification of a designation was sent to its Office. Back to article…

For more information on this topic, please contact Bruno Machado through Jon Broughton (jon.broughton@hlbbshaw.com) at HLBBshaw in the UK. Bruno Machado is a former President of the Boards of Appeal of the EU Trade Mark Office, former Director of WIPO and now a consultant to HLBBshaw [www.hlbbshaw.com].

The information contained in this alert is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

 

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