Delegates at the MARQUES Annual Conference warmly welcomed new announcements and updates on the Madrid System during a panel today.

Debbie Roenning, Director of Madrid Legal Division, Madrid Registry, Brands and Designs Sector, WIPO, Switzerland highlighted progress towards accession in several countries, including South Africa, Qatar, Saudi Arabia, Bangladesh, Fiji, Papua New Guinea, Sri Lanka, Tonga, Malta, Grenada and St Vincent and the Grenadines. In addition, she said China is planning to extend the Protocol to Hong Kong SAR soon.

“It is fantastic to see the map expanding every year,” said Theodora Goula, Hugo Boss, Switzerland. “We would like to see more countries in Latin America and Asia joining. When a country joins Madrid, we often see that their IP standards are also raised.” Anna-Lena Wolfe, EF Education First, Switzerland agreed and added: “Madrid is an administrative system but not everything is harmonised, so you still have to be prepared to handle office actions.”

Africa accounts for 17% of the world’s population, said Mariette Du Plessis, Adams & Adams, South Africa; 40 African countries are members of Madrid (including the OAPI member states) but notable gaps include South Africa, Nigeria, Ethiopia, Libya and Angola. With brand awareness increasing, many owners of famous global brands have enforcement challenges in Africa so further accessions would be welcome.

“From my perspective, digitalisation of records is crucial,” said Mariette. “We have a lot of potholes in Africa – and we hope to either fill in or avoid them.” These potholes include infrastructure, resources, power supply and the need for training. “The tide is turning. For now, brand owners should research and assess their strategy for each country and avoid a broad-brush approach.” She also encouraged IP practitioners to assist with training and capacity building.

Adding languages

The annual Lewis Gaze Memorial Award was presented to Elina Marie Kraft for her paper on “The meaning of generic terms and descriptive indications in trademark law”. Her prize includes fully inclusive attendance at next year’s MARQUES Annual Conference in Stockholm.

WIPO has received proposals to add Arabic, Chinese and Russian to the Madrid System to complement English, French and Spanish. “In the Working Group this decision is highly politically sensitive and we have been discussing it for years,” explained Debbie. Consultations have revealed that users have reservations, and these will be fed back to the Working Group in November. However, WIPO has stated that fees and processing times will not increase if new languages are added.

Jessica Le Gros, Baker McKenzie, UK added that language is a very important topic and adding new languages will make the Madrid System more accessible. However, MARQUES has some practical reservations and the International Trade Mark Law and Practice Team conducted a survey, which had 362 responses from 56 countries. About 80% of respondents said they would not use the System more if new languages are added, though there was support from China for introducing Chinese.

In the survey responses, people also asked: why these languages and not others? And there were a lot of concerns about practicalities including machine translations, said Jess. Theodora stressed the importance of keeping the system uncomplicated and efficient.

Technology improvements

Debbie highlighted a new feature of Madrid Monitor, which enables you to check the current status of protection, Nice class and effective date for each designated contracting party. Anna-Lena said the new functions are welcome but it was unfortunate that offices and systems have different interfaces which users need to become familiar with: “My wish is for some standardisation between the systems across the organisations.”

Other recent changes that Debbie highlighted include early renewal of international registrations from six months before the due date. Another change is that on 1 February this year, the graphical representation requirement was removed – but only where offices of origin no longer have this requirement. “Hopefully more members will make this change in the future,” she said.

One very significant reform coming into effect on 1 November 2023 is that national/regional IP offices will have to give holders of international registrations (IRs) a minimum time period of 60 days or two months to respond to provisional refusals. From the same date, WIPO will give owners of IRs a clear indication of the relevant start and end date for provisional refusals: this received a spontaneous round of applause from the audience!

“It’s absolutely fantastic that WIPO has listened to the voice of users,” said Jess. “It shows that we can achieve changes that make the IR system more efficient for users.”

The panel was chaired by Gavin Stenton, Penningtons Manches Cooper LLP, UK.

The day’s first panel focused on platform liability and new regulations such as the EU Digital Services Act and the Omnibus Directive. The panel – comprising Andreas Lubberger, Lubberger Lehment, Germany, Germany, Harrie Temmink, Head of Service Intellectual Property in the Digital World, EUIPO, Spain and Edward Taelman, Allen & Overy, Belgium – discussed the latest measures and their impact on brand owners.

The MARQUES Annual Conference continues with workshops this afternoon and further panel sessions tomorrow (Friday).