MM/LD/WG/4/7 Prov.
page 18
WIPO / / EMM/LD/WG/4/7 Prov.
ORIGINAL: English
DATE: October 1, 2007
WORLD INTELLECTUAL PROPERTY ORGANIZATION
GENEVA
ad hoc working group on the legal development
of the madrid system for the international
registration of marks
Fourth Session
Geneva, May 30 to June 1, 2007
Draft REPORT
prepared by the Secretariat
I. INTRODUCTION
The ad hoc Working Group on the Legal Development of the Madrid System for the International Registration of Marks (hereinafter referred to as “the Working Group”) met in Geneva from May30 to June1,2007.
The following Contracting Parties of the Madrid Union were represented at the session: Algeria, Australia, Austria, Azerbaijan, Belgium, Bhutan, China, Croatia, Cuba, CzechRepublic, Denmark, Estonia, European Community, Finland, France, Germany, Greece, Hungary, Italy, Japan, Kenya, Latvia, Lithuania, Moldova, Netherlands, Norway, Poland, Portugal, Republic of Korea, Romania, Russian Federation, Singapore, Slovakia, Slovenia, Spain, Sudan, Sweden, Switzerland, The former Yugoslav Republic of Macedonia, UnitedKingdom, UnitedStates of America (41).
The following States were represented by observers: Brazil, Colombia, Ecuador, Guinea, Zimbabwe (5).
Representatives of the following international intergovernmental organization (IGO) took part in the session in an observer capacity: Benelux Office for Intellectual Property (BOIP) (1).
Representatives of the following international non-governmental organizations (NGOs) took part in the session in an observer capacity: Association romande de propriété intellectuelle (AROPI), Centre for International Industrial Property Studies (CEIPI), TheConfederation of European Business (BUSINESSEUROPE), European Brands Association (AIM), European Communities Trade Mark Association (ECTA), German Association for the Protection of Industrial Property and Copyright Law (GRUR), International Association for the Advancement of Teaching and Research in Intellectual Property (ATRIP), International Federation of Industrial Property Attorneys (FICPI), International Trademark Association (INTA) and MARQUES (Association of European Trademark Owners) (10).
The list of participants is given in the Annex to this report.
Mr.Ernesto Rubio, Assistant Director General, opened the session and, on behalf of the Director General of the World Intellectual Property Organization (WIPO), welcomed the participants. He pointed out that the draft agenda of the session contained the topics agreed upon at the third session, in February2007, in particular, review of Article9sexies of the Madrid Protocol (hereinafter referred to as “the safeguard clause”), amendments to the Common Regulations and legal development of the Madrid Protocol.
Mr.Rubio underlined that the Working Group had been addressing the question of the review of the safeguard clause, as contained in Article9sexies of the Protocol, since its first session in July2005. The Working Group had been studying carefully the multiple implications of a repeal or a restriction of the safeguard clause. It had considered various options to move forward, analyzing the advantages and disadvantages of each option. The divergence of views among the members of the Madrid Union directly concerned by the safeguard clause, namely those States which were bound by both the Madrid Agreement and the Protocol, was evident. The Working Group, however, had agreed on a number of objectives, namely, simplifying, as much as possible, the operation of the Madrid system, keeping in mind the ultimate goal that the system be governed by only one treaty (the Protocol); ensuring equal treatment among all Contracting Parties to the Madrid Protocol; and allowing users of States which were bound by both the Agreement and the Protocol to be able to benefit from the advantages offered by the Protocol while limiting undesired effects that might affect them as a result of the application of the Protocol. Mr.Rubio recalled that at its third session, the Working Group, after having explored several options, had adopted a proposal for a compromise solution. The proposal clearly established that, in the relationship between countries bound by both the Agreement and the Protocol, the provisions of the Protocol only would apply, with the exception of standard fees, which, subject to certain conditions, would continue to be applicable to the renewal of international registrations. The “freezing” of standard fees in respect of the existing designations was to be subject to review after the expiry of a period of 10years.
Mr.Rubio recalled that the International Bureau had been requested to prepare draft amendments of Article9sexies of the Protocol and of the Common Regulations along the lines of the agreed proposal, identified as the best possible compromise, for consideration by the Working Group at its fourth session. A draft amendment of Article9sexies was contained in document MM/LD/WG/4/2 and draft amendments of the Common Regulations were set out in document MM/LD/WG/4/3.
Mr.Rubio noted that a number of non-governmental organizations, in particular, AROPI, BUSINESSEUROPE, ECTA and MARQUES, had submitted papers dealing with the review of the safeguard clause and future legal development of the Madrid Protocol, which had been made available to the Working Group as informal documents.
Mr. Rubio further pointed out that the Working Group, at its third session, had agreed to introduce a new Rule1bis of the Common Regulations, to provide for a change in the treaty applicable to the designation of a Contracting Party bound both by the Agreement and the Protocol. The proposed Rule1bis, and a number of amendments proposed as consequential amendments to the new Rule, as well as proposals for transitional provisions, were contained in document MM/LD/WG/4/3.
Finally, he recalled that as regards the legal development of the Madrid Protocol, contributions had been submitted by Norway, as contained in document MM/LD/WG/2/9, by Australia, as contained in document MM/LD/WG/4/4, and by Japan, as contained in documents MM/LD/WG/4/5 and MM/LD/WG/4/5Corr. In addition, an informal proposal by the Republic ofKorea had been distributed to the Working Group.
Mr.AntónioCampinos (Portugal) was unanimously elected as Chair of the Working Group, and Mr.ChanKenYuLouis (Singapore) and Ms.TatianaZmeevskaya (Russian Federation) were elected as Vice-Chairs.
Mr. Grégoire Bisson (WIPO) acted as Secretary to the Working Group.
The Working Group adopted the draft agenda (documentMM/LD/WG/4/1 Prov.) with a modification of agenda item8 to read “Adoption of the Summary by the Chair”. Mr.Campinos chaired the discussions on agenda items 3 to 5. Mr.Chan chaired the discussions on agenda items6 to9.
The Secretariat noted the interventions made. This report summarizes the discussions.
II. REVIEW OF ARTICLE 9SEXIES OF THE MADRID PROTOCOL
The Working Group based its discussions on document MM/LD/WG/4/2, which contained a proposed amendment of Article9sexies of the Madrid Protocol, prepared by the International Bureau on the basis of the proposal for a compromise solution adopted by the Working Group at its third session.
The Secretariat explained that paragraph(1)(a) of proposed Article9sexies established that the Protocol alone should be applicable as regards the mutual relations of Contracting Parties to both the Protocol and the Madrid (Stockholm) Agreement. The Secretariat suggested, however, that the words “Contracting Parties” be replaced by the words “States party”, since only States could be party to the Agreement. The Secretariat pointed out that the wording of paragraph(1)(a) was similar to the wording in other WIPO-administered treaties, such as the Madrid Agreement, the Hague Agreement Concerning the International Registration of Industrial Designs and the Singapore Treaty on the Law of Trademarks.
The Delegation of Switzerland stated that, after the last session of the Working Group, it had been in contact with the users of the Madrid system. The Delegation pointed out that the Madrid system should be transparent and simplified. Furthermore, the safeguard clause should be repealed and only the Protocol be applicable. In the context of the repeal of the safeguard clause, the individual fees should not be applied without exceptions. The “freezing” of fees as proposed by the International Bureau would limit undesired effects resulting from the repeal of the safeguard clause. The Delegation suggested that the possible increase of costs in connection with the repeal of the safeguard clause be evaluated after the expiry of a period of 10years. The Delegation expressed its interest in a compromise, which would take into account the above aspects. The Delegation, a priori, supported the proposal for a compromise solution to repeal the safeguard clause, accompanied by certain measures. However, the “freezing” of the safeguard clause to cover only existing registrations or designations should be discussed, taking into account the interests of both offices and users. The Delegation was interested in discussing the different options and in hearing the opinions of other delegations.
The Delegation of Spain noted that the proposed amendment of Article9sexies was agreed by the Working Group at its last session. The Delegation sought a clarification of the suggestion of the Delegation of Switzerland, whether it proposed the reconsideration of the compromise solution adopted by the Working Group.
In response to a question from the Delegation of Spain, the Chair clarified that in the view of the Delegation of Switzerland, the proposed Article9sexies as prepared by the International Bureau covered the compromise solution agreed by the Working Group. The Delegation of Switzerland had, however, expressed a wish to discuss the scope of the “freezing” of the safeguard clause, whether it applied to existing registrations or only to existing designations.
Following the clarification by the Chair, the Delegation of Switzerland emphasized its interest to engage in discussing the advantages and disadvantages of different options.
The Delegation of Kenya suggested two issues be clearly distinguished, namely the review of Article9sexies and the issue of the legal development of the Madrid Protocol. The Delegation considered proposed paragraphs(1)(a) and(2) of Article9sexies acceptable, whereas proposed paragraph(1)(b) should be looked at in detail in order to avoid later confusion.
The Delegation of Sudan expressed its support for the proposal of the Delegation of Kenya. The Delegation emphasized the benefits of the forthcoming accession of its country to the Madrid Protocol, probably in 2007 or at the beginning of 2008. The Delegation referred to a seminar, organized in Sudan in cooperation with WIPO, which highlighted the usefulness of the Madrid system for trademark owners and representatives. The Delegation expressed a wish to organize, in cooperation with WIPO, a further seminar or workshop, on the international registration of marks. The consultations between its country and WIPO were continuing in order to implement the provisions of the Madrid Protocol into the national law.
The Representative of INTA recalled its support for the Madrid Protocol as an instrument, which had removed or alleviated a number of difficulties that had prevented wide acceptance of the Madrid system. The safeguard clause issue was the subject of a resolution adopted by the Board of Directors of INTA, in November2005. That resolution was based on the results of a survey of company members with operations in countries party to both the Agreement and the Protocol. In that resolution, INTA supported the restriction of the scope of the safeguard clause only to cover the 12-month refusal period and the standard designation fees in the mutual relations between States party to both treaties. The total repeal of the safeguard clause could be an option if the offices provided users of the Madrid system with enhanced services, such as reports on the status of designations and statements of grant of protection. INTA welcomed the recommendation agreed by the Working Group, at its second session, to explore a proposal for a repeal of the safeguard clause accompanied by certain measures. The Working Group, at its third session, however, decided that the question of the repeal of the safeguard clause be dealt with separately.
The Representative declared that INTA supported the basic principle that the safeguard clause be amended to the effect of clearly establishing that, in the relationship between States bound by both the Protocol and the Agreement, the provisions of the Protocol alone apply. The Representative emphasized that the concerns widely expressed by users regarding future designations, the level of designation fees and the time limit for notification of a refusal were real, and the failure to properly address them might have negative effects on the attractiveness of the Madrid system and, as a result, be detrimental to the system as a whole. An improved compromise would thus affirm the principle that in the mutual relations between States bound by both treaties, the Protocol alone applied, with the exception of individual fees and the extended refusal period. The amended Article9sexies of the Protocol should be subject to further review after a reasonable period of time. Such review might be linked with the progress achieved in improving the level of services to users.
Finally, the Representative observed that the level of standard fees had remained unchanged for 11years, which was a matter that could be looked at.
The Representative of ATRIP and CEIPI explained that those organizations which it was representing were academic institutions, not users. The Representative shared the opinion expressed by the Representative of INTA, stressing that there was a risk of reducing the attractiveness of the system, if the “freezing” of the safeguard clause only applied to existing registrations. The Madrid system was in competition not only with national systems but also with regional systems. The Representative suggested that the wording of paragraph(2) be revised to read, instead of “to repeal”, “to repeal or restrict the scope”, since after the expiry of a period of 10years, new forms of compromises might be elaborated.
The Delegation of Australia expressed its concern about a possible failure to reach an agreement by the Working Group. The Delegation strongly urged the retention of the compromise solution adopted by the Working Group at its third session. In reply to a suggestion of the Representative of ATRIP and CEIPI, the Delegation noted that if the ultimate goal was that the Madrid system be governed only by the Protocol, the proposals should be accommodated accordingly.
The Delegation of Spain observed that at the last session a consensus was reached as regards exceptions in paragraph(1)(b). The Delegation stressed that the exact terms of the compromise solution adopted by the Working Group should be respected.
The Chair urged the delegations to reach consensus on a clear proposal to be submitted to the Assembly. The Chair noted that the Working Group agreed on paragraph(1)(a), whereas the scope of paragraph(1)(b) raised questions. Given that the wording of paragraph(2) depended on the formulation of paragraph(1)(b), the Chair invited the delegations to express their opinions on paragraph(1)(b).