23 March 2015Trademarks

ITMA spring conference: Sorry, we’ll speed up Madrid application process, says WIPO

A representative from the World Intellectual Property Organization (WIPO) has apologised to a group of lawyers for the amount of time it takes to process trademark applications filed under the Madrid System.

Responding to criticism at the Institute of Trademark Attorneys’ (ITMA) spring conference in London, Debbie Roenning, director of the legal division, Madrid Registry at WIPO, said she was “sorry” that the application process is slow.

She added that WIPO is engaged in a “clean-up process” to improve the speed of the process.

A spokesperson for WIPO told WIPR that on average it takes about two months to process a Madrid application. It added that the organisation is "fully engaged in reforms that will lead to a reduction in the processing time".

Roenning said she wanted to make the system more “user friendly” and referred to the introduction of an electronic system that enables clients to track the progress of their application as a step in the right direction.

Set up in 1891, the Madrid System allows trademark owners to register their rights in countries covered by the regime. Applicants can apply for trademarks at their national intellectual property office or at WIPO.

Roenning said WIPO faces increasing challenges as more and more countries join the system and that it also needed to account for the increasing “linguistic diversity” of the countries that join.

She added: “Chinese companies looking to protect the English translation of their name in the EU have to file for that trademark in China. If they don’t use that trademark in China then it is vulnerable to cancellation and this will affect their international registration.”

There are 95 members of the Madrid System, with more expected to join in the near future. Roenning said she expects Canada to join at the end of next year, and that there have already been discussions with Trinidad & Tobago, Jamaica, Nigeria and South Africa about joining.

The  ITMA spring conference ran from March 19 to 20.

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