Madrid amendments for doubly-treatied Union members

The IPKat has learned from the World Intellectual Property Organization (WIPO), via Madrid (Marks) Notification No. 178, of a small but significant amendment to Article 9 sexies of the Madrid Protocol, as adopted on November 12, 2007 by the Assembly of the Madrid Union at its thirty-eighth (17th ordinary) session. The amendment to the Madrid Protocol comes into force on 1 September 2008.

Right: if Madrid Union members don't get this right, they may find tanks on their lawn ...

The new text of Article 9 sexies goes as follows:

"Relations Between States Party to both this Protocol and the Madrid (Stockholm) Agreement

(1) (a) This Protocol alone shall be applicable as regards the mutual relations of States party to both this Protocol and the Madrid (Stockholm) Agreement.

(b) Notwithstanding subparagraph (a), a declaration made under Article 5(2)(b), Article 5(2)(c) or Article 8(7) of this Protocol, by a State party to both this Protocol and the Madrid (Stockholm) Agreement, shall have no effect in the relations with another State party to both this Protocol and the Madrid (Stockholm) Agreement.

(2) The Assembly shall, after the expiry of a period of three years from September 1, 2008, review the application of paragraph (1)(b) and may, at any time thereafter, either repeal it or restrict its scope, by a three-fourths majority. In the vote of the Assembly, only those States which are party to both the Madrid (Stockholm) Agreement and this Protocol shall have the right to participate".

The IPKat reminds readers who may not be intimately familiar with these provisions that the declarations under Articles 5(2)(b) and 5(2)(c) relate to the option of substituting an 18-month period in which a national office can refuse to extend an international application in place of the 12 month period provided under the Madrid Agreement. Article 8(7) permits declarations relating to the manner in which renewal fees can be levied by national offices in accordance with the formula laid down in that provision. Without much background, it looks to him as though this is a case of the Agreement asserting itself over the Protocol though, given modern technology at one end and a growing understanding on the part of national offices on the other that they exist for the benefit of the business community and not the other way round, even 12 months seems like a ridiculously long time or the approval of an international application. Can any reader enlighten him as to the background for this amendment?

Merpel sniffs, I don't know what all this fuss is about. I have relations in Madrid and in Stockholm and we don't need any Protocol to tell us what we can declare or not ...

Tufty adds, whoever edits the entry for Madrid System on Wikipedia needs a gentle prod: this useful resource has not been updated since December 2007.

Stirring it up: from Madras to Madrid?

The IPKat has just received information from the Calcutta-based law firm of D. P. Ahuja, via Chris McLeod (Director of Trade Marks, Hammonds) to the following effect:

"1. Contrary to information being wrongly circulated around the world by interested groups and persons, the Indian Government has not acceded to the Madrid Protocol, to date (12 March 2008)

Kindly take note of this and be wary of such misinformation.

2. Similarly, please note that the Patents Act and the Trademarks Act as well as several other statutes of India specifically bar any foreigner or foreign Law Firm from practicing Intellectual Property Law in India in any form.

This may be taken into account when dealing with "branches" of Non-Indian Law Firms in India".

The IPKat can confirm that, according to WIPO's own official data, India is not listed among the nations subscribing to either the Madrid Protocol or the Madrid Agreement systems for international trade mark filing. He wonders whether this information came from a misleading headline "India accedes to Madrid Protocol on trademark protection" in an article on domain-b.com, which mentions that the Indian union cabinet has approved the country's accession to the Madrid Protocol and would bring a Parliamentary bill to enable accession to take place.

Merpel asks, what would actually happen to any foreigner who practises IP in India? And should we make some polite suggestions to the Indian government as to whether this is a good thing or a bad thing?

Bahrain gives itself longer to refuse Madrid marks

The IPKat learns, via Madrid (Marks) Notification No. 177, that the Kingdom of Bahrain deposited with WIPO, on 7 February 2008, the following declaration:

"In accordance with Article 5(2)(d) of the Madrid Protocol (1989) and pursuant to Article 5(2)(b), the time limit of one year to exercise the right to notify a refusal of protection ... is replaced by 18 months and that, under Article 5(2)(c) of the said Protocol, where refusal of protection may result from an opposition to the granting of protection, such refusal may be notified after the expiry of the 18-month time limit".

Right: Bahrain -- paradise for architects, but is it purgatory for opposed international trade mark applicants?

This declaration enters into force for Bahrain on 7 May 2008.

Says the IPKat, opposed applicants for extension of their trade marks to Bahrain now have a longer period during which their fate is to be decided. He wonders why, given the wonderful new technologies that make the identification of evidence and the searching process so much easier, and decades of increasingly shared understanding as to what is distinctive, descriptive, confusingly similar and so on, it should still take so long to determine an opposition. Merpel says, hold on -- isn't the extra period advantageous to the Madrid applicant, who may need to prepare its response to an opposition in an unfamiliar jurisdiction?