Newsletter Edition 42 - December 2022


WIPO Working Group Report proposes changes to the Madrid System

An extensive and detailed report of the 20th Session of the Working Group on the Legal Development of the Madrid System for the International Registration of Marks of WIPO continued discussions on amendments to the Madrid System to better suit the needs of Members, such as the inclusion of new amendments, the elimination, and change of rules, addition of languages and expansion of the scope of coverage of the Madrid system. Produced in November by lawyer Flávia Tremura Rodrigues, the document also included Assistance and Support to the Innovation and Creativity Sector in Ukraine, besides approving the new User Guide, available in six languages.

In discussions on Provisional Refusals, the Working Group proposed amendments to Articles 17, 18, and 40. A transitional provision in Rule 40 would be introduced for countries that need to adjust their legislation. In the case of Brazil, where the legislation provides for 60 days, the Group suggested changing to 2 months or 60 days, or that the text provides that 60 days would be the equivalent of 2 months. The Working Group will make a proposal to the Assembly for the amendments and the new Rule 40 of the Regulations to be effective as of November 1, 2023.

In the item “Right to request and claim connection”, the Group proposed several changes. In Rule 8.2 it was suggested that, in case of joint ownership, the Office of Origin should be allowed to certify the international application if there is a connection with the contracting party. For Rule 9(5)(b), the suggestion is that the applicant indicates only one connection with the Contracting Party of the Office of Origin, while in Rule 25(2)(a)(i ) and (v), for the transferee to be allowed full ownership of the international registration and all its designations, regardless of the treaty governing the designation.

In the Rule concerning the “Nature of The Standard Character Declaration,” the Group suggests that the Regulation clarifies that the optional declaration does not oblige the Offices of the designated countries to determine the scope of protection.

In “Reference to The Alphabetical List of the Nice Classification”, the Group also proposed amendments to Rules 9.4(a), suggesting that the reference to the Alphabetical List be removed from Rule 9(4)(a)(xiii) of the Regulations, and replacing it with the use of the expanded list of properly classified acceptable indications the Madrid Goods and Services (MGS) Manager database.

The Group also proposed that all notes on subsequent designations, changes, and licenses be made directly with the International Bureau, except in cases where the request is to be made by an Office. Regarding licenses, it suggests that all 29 Offices that have not yet accepted the request for recording by the International Bureau indicate the requirements to assess the feasibility of future requests being made directly to the International Bureau.

To reduce the Offices of Origin delay in notifying the International Bureau that a basic mark has ceased to produce effects in the country of origin, the Group suggested the inclusion of the term ‘promptly’ in Rule 22(1)(a) of the Regulation.

The Group also noted proposals for reducing, suspending, or even eliminating the automatic effect of the dependency period, “one of the major obstacles to the use of the Madrid System”, an option defended by Brazil.

Discussions and proposals on the expansion of coverage of the Madrid System to 150/160 countries, greater dissemination of the system, simplifying the Official Schedule of Fees, and inclusion of Arabic, Russian and Chinese languages were also held.

Many discussed points are not yet ready for implementation and/or to be presented at the General Assembly. Therefore, they will remain under discussion in the next session of the Working Group.