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What next for the Madrid Protocol?



James Nurton


For years, brand owners have been calling for the Madrid Protocol to become more truly international – something that has come closer with recent accessions. Now it is time to ask: what is the international trade mark system for?

Our cover story in the latest issue of Managing IP looks at the recent expansion of the Madrid Protocol. The article was conceived after Colombia and Mexico acceded to the system last year, major developments given that Latin America was the major hole in the Madrid map up to that point. While we were planning the piece, in April, India joined and as the magazine went to press Rwanda became the 91st member of the system.

Madrid mapThe recent growth in members means that by using the Madrid Protocol a trade mark owner can extend their rights to nearly 70% of the world’s population. With more countries expected to join in the next few years (including, possibly and intriguingly, the ARIPO member states), the benefits in terms of simplification and cost savings are significant. Not surprisingly, WIPO figures indicate that use of the system is increasing.

But with greater coverage and usage, trade mark owners are likely to be more demanding of the system. There are three challenges that I expect will get more attention in the next 12 to 24 months.

First, efficiency and e-communication should be enhanced. When we asked existing users of the Protocol how it can be improved this was top of the list. Ironically, WIPO is already paperless internally but it needs to make communications with both offices and users simpler and quicker. This means introducing online forms wherever possible.

Second, there needs to be a discussion about the different approaches taken in national offices. Part of the appeal of Madrid is that applications are not just extended to more countries, but are subject to examination under each national system. That principle should remain. But more can be done to harmonise and educate so that users (many of whom are small businesses) are equipped to deal with provisional refusals in unfamiliar jurisdictions.

Finally, and most fundamentally, there is the looming shake-up, known as the Norwegian proposal, to remove the requirement to have a basic mark. This has been on the table at WIPO since at least 2008, but seems to have been neglected and/or dismissed (possibly due to opposition from some national offices, who fear loss of revenue). The change could make life simpler for trade mark owners, but would remove the so-called central attack opportunity. It’s time to have a proper debate about it again, with both offices and users involved.

More members for Madrid is good news for trade mark owners. But the benefits will only be realised if the system is constantly reviewed and, where necessary, reformed, to ensure it is suitable for the needs of today’s brand owners.

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