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New members get to grips with Madrid

Since last year’s Annual Meeting a number of countries have joined the Madrid Protocol. Representatives from the trademark offices of new members Cambodia, Zimbabwe and the African Intellectual Property Organization (OAPI) shared their experiences with a packed crowd in the Madrid Users’ Meeting yesterday. Also speaking during the session were representatives from the USPTO and OHIM.

OAPI became the 93rd member of the Madrid System on December 5 2014, with the Protocol entering into force on March 5 this year. After the session, Dr Maurice Batanga, Director of Legal Affairs, Cooperation and Emerging Issues at OAPI, told the INTA Daily News that the first applications to include OAPI have left the office of origin and have gone to WIPO. The Organization has been busy spreading the word in the meantime.

“What we are doing now is informing people that we have acceded to the Madrid Protocol and that it is possible for trademark owners to designate OAPI within their international application. We are informing our trademark owners that it is possible for them to apply for protection abroad through OAPI using one international application,” he said.

There have not been any Madrid applications from within OAPI as yet. “Some of our trademark owners are getting information on how to fill in the form, how to calculate the fees, how to do research, and whether they have the chance to be protected or not,” said Batanga.

Getting to this point was not easy for OAPI. It faced a unique challenge as a regional body, as opposed to a single country, because it had to get the unanimous approval of all 17 member countries. Accession to the Madrid Protocol was first raised in 1998, and again in 2005. “Member states feared the decision, they were not well aware of this convention,” said Batanga.

The fears concerned how joining Madrid would affect the way fees are calculated and managed. “Now we have more explanation. Our designated fee is the same fee as if you come directly to OAPI, so there will be no problem of money because of the Madrid Protocol,” said Batanga.

He is hopeful that the accession to Madrid will improve economic development in OAPI member states. This hope is shared by Cambodia, which became the 95th member of the Madrid System on March 5 this year. The Protocol enters into force on June 5.

“The immediate benefits are that everybody will see Cambodia has joined the Madrid System, and it is in the global system,” Sim Sokheng, Director in the Department of Intellectual Property Rights in Cambodia’s Ministry of Commerce, told the INTA Daily News. “So this gives a good sign to the people who are intending to invest in Cambodia that Cambodia respects the trademark system.”

In the short term, Cambodia faces some IT challenges but it is working to overcome them. He added that he also hears concerns about refusal, an issue he addressed in his presentation in the Users’ Meeting. “Everybody is worried about refusal but I explained that refusal is OK: we will give the reason for it and we will give them time to provide feedback to us so that we can consider it. And if it is too difficult, you can look for local registration.”

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