MARQUES 2023: Brands welcome Madrid System reforms
Key reform to Madrid System announced at annual trademarks event | Move hailed as a positive development for all users of the international trademark system.
An important reform to the Madrid System for international trademark protection is coming into force in November this year, it has been confirmed at the Marques Annual Conference this week in Berlin.
Debbie Roenning, director of Madrid Legal Division, Brands and Designs Sector, at the World Intellectual Property Office (WIPO) announced the change during a session on the Madrid System during the 37th annual conference, which is today drawing to a close in Berlin.
Marques is a European association that represents the interests of brand owners.
The Madrid System for International Registration of Trademarks, which is administered by the World Intellectual Property Office (WIPO), enables brand owners to protect their trademarks in up to 130 countries through one central point.
Important changes
However, until now one of the difficulties with the system was that users did not always receive clear indication of how much time is available to respond to provisional refusals, as the deadlines for these are calculated differently across different countries, and are for different lengths of time (from 15 days to 15 months).
From November 1, national and regional IP offices will have to give holders of international registrations (IRs) a minimum time period of 60 days, or two months, to respond to provisional refusals.
Additionally, WIPO will give owners of IRs a clear indication of the relevant start and end date for provisional refusals.
Roenning’s confirmation prompted a spontaneous round of applause from the audience of brand owners and IP practitioners.
Positive developments
Commenting on the development, Antony Douglass, legal director at Specsavers Optical Group, and chair of the Marques Council, said: “This is a very positive development for all users of the international trademark system and demonstrates how Marques can help deliver real change for brand owners. Big thanks to all the Marques team members who have worked on this issue over several years.”
Marques has been arguing in favour of this change in the WIPO Madrid Working Group for a number of years, issuing a paper in 2019.
Jessica Le Gros, partner at Baker McKenzie, UK, who chairs the Marques International Law and Practice Team, welcomed the news. “It’s absolutely fantastic that WIPO has listened to the voice of users. It shows that we can achieve changes that make the IR system more efficient for users,” she said.
The session on the Madrid System also covered topics including the geographical expansion of the Madrid System, the pros and cons of adding further languages, and new tools in Madrid Monitor.
The 37th Marques Annual Conference took place in Berlin this week, with more than 950 people attending.
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