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WEEKLY NEWS - MAY 17, 2009

This article is part of MIP Week, a weekly email newsletter written by the editors of Managing IP magazine. Take a one week trial to Managing IP and find many more related articles.

Madrid meeting focuses on U.S. and Japan

James Nurton, Seattle

In-house counsel and trademark attorneys who use the international trademark system will have the chance to ask questions and receive information about the latest developments with the Madrid Protocol at a session organized by WIPO this morning

WIPO staff, as well as representatives of the USPTO and the Japanese Patent Office, will discuss the kinds of refusals they are issuing, and how applicants can minimize the possibilities of receiving refusals. “It is a unique opportunity for the offices and filers to get together and learn from each other,” Ernesto Rubio, WIPO Assistant Director General, told the INTA Daily News.

Last year, a similar session featured presentations from officials in China and South Korea, which like this year’s countries are among the most designated in the Madrid System (see chart). The session comes after WIPO and the USPTO recently published an information notice (4/2009) providing tips on how applicants can minimize refusals when requesting extension to the U.S.

The Madrid System has expanded from 81 to 84 members since last year’s INTA Annual Meeting, with the addition of Ghana, Madagascar and Sao Tome & Principe. Rubio said more accessions are expected in the coming year, and an update will be provided today.

He added that a number of initiatives have been taken in the past year to “try to upgrade the level of service” for users of the Madrid System, who reached a record number in 2008 despite the economic downturn.

One of the most popular concerns a change to the Common Regulations, whereby designated offices will provide a statement of grant of protection. This reform comes into effect on September 1 this year and is mandatory from January 1 2011, unless there is a refusal. Rubio describes this as “a major change” that will be welcomed by users: “Before, you could say that no news [about your application] was good news. This is much better news than no news.”

WIPO will also provide details about improvements to its information services, including the fully electronic, searchable gazette of international trademarks and an upgrade to the ROMARIN database that enables users to download any decision issued by a contracting party within two days of its receipt by the International Bureau. WIPO has also introduced both electronic renewal and electronic payment for international registrations.

Further reforms to the Madrid System can be expected in the coming year, as the Working Group is due to meet in Geneva in July. One of the proposals to be discussed is to allow applicants to file in additional languages, such as Arabic, Chinese, Portuguese and Russian, as this would make the system more accessible in many countries. Languages such as German, Italian and Japanese could also be added. Rubio said that, if adopted, applicants would be able to use these languages if they are supported by the office of origin. But the three official languages would remain English, French and Spanish. “Everything would still be published in the three official languages. We would use automatic translations for immediate translation as far as possible,” he said.

Online resources

More details: www.wipo.org/madrid



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