cover story in the latest issue of Managing IP looks at the
recent expansion of the Madrid Protocol. The article was
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.
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
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
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