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South Africa: Looking forward to Madrid

01-10-2015

Lindy Lowne-Hughes

A new website was one of many new things to emerge for the Companies and Intellectual Property Commission (CIPC) and its customers. Some of the many successful projects CIPC has embarked on have included the launching of electronic filing of trademark, patent, design and copyright applications in September 2013, and the launching of a free web-based electronic trademark search service in March 2015.

Strategies have been implemented to extend the CIPC service footprint nationally and user information campaigns are regularly held to assist customers who require information.

Despite certain challenges faced by CIPC, the commission continues to develop and improve. CIPC will also in the near future be appointing new trademark examiners in order to ensure that the office continues to meet its service delivery turn-around times with respect to the examination of new trademark applications and the issuing of a first official action.

After many years of talking about the Madrid System and its advantages to CIPC and its customers, CIPC decided to embark on a study to assess its systems and procedures with a view of accession to the Madrid Protocol.

The Madrid System is administered by the International Bureau of the World Intellectual Property Organization (WIPO). On request of CIPC, WIPO agreed to conduct a Madrid assessment study for South Africa earlier this year, in February 2015. During WIPO’s visit to South Africa, WIPO officials met CIPC’s commissioner, deputy commissioner, chief financial officer, system developers, the ICT division, etc. The WIPO officials assessed CIPC’s operational procedures and the IT systems and had detailed discussions with the CIPC Madrid working group on amendments to the Trade Marks Act and its related regulations.

To enable proprietors to rely on international registrations for protection of trademarks, amendment to the South African legislative framework in relation to trademarks will be required, in order to give effect to international registrations designating South Africa, before accession to the Madrid Protocol can take place. In this regard CIPC will submit proposed draft amendments to the Trade Marks Act and Trade Mark Regulations, in order to align the national trademark legislation and the provisions under the Madrid Protocol, to the Department of Trade and Industry towards the end of 2015, for the legislative process to then follow its normal course.

"To enable proprietors to rely on international registrations for protection of trademarks, amendment to the South African legislative framework in relation to trademarks will be required."

In addition, operational and IT systems-related changes that will be required in order to ensure successful and effective processing of applications received under the Madrid Protocol will be scoped and implemented in the next 12 to 18 months. Training for CIPC staff and practitioners with regard to the Madrid Protocol will formally be requested from WIPO during the latter part of the CIPC 2016/2017 financial period, flowing over into the early part of the 2017/2018 financial period.

CIPC customers may look forward to the implementation of the Madrid system in South Africa within the next few years.

Lindy Lowne-Hughes is a trademark attorney and director at KISCH IP. She can be contacted at: lindyl@kisch-ip.com

Lindy Lowne-Hughes, DM Kisch, Kisch-IP, CIPC, WIPO, trademark,

WIPR

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