DATE: April 18May 1, 2006
WORLD INTELLECTUAL PROPERTY ORGANIZATION
ad hoc working group on the legal development
of the madrid system for the international
registration of marks
Geneva, June 12 to 16, 2006
Review of Article 9sexies of the Madrid Protocol
Document prepared by the International Bureau
1 Article 9sexies(1) of the Protocol to the Madrid Agreement Concerning the International Registration of Marks (hereinafter referred to as “the Protocol” and “the Agreement”, respectively), commonly known as the “safeguard clause”, provides that where, with regard to a given international application or international registration, the country of origin is party to both the Protocol and the Agreement, the provisions of the Protocol shall have no effect in the territory of any other State that is also party to both the Protocol and the Agreement.
2 In simple terms, in the relations between States bound by both treaties, it is the provisions of the Agreement which apply as part of the international registration procedure.
3 Under paragraph (2) of Article 9sexies, the Assembly may, by a three-fourths majority1, either repeal or restrict the scope of the safeguard clause, after the expiry of a period of 10 years from the entry into force of the Protocol (December 1, 1995), but not before the expiry of a period of five years from the date on which the majority of States party to the Madrid (Stockholm) Agreement have become party to the Protocol. To the extent that this latter condition has also been fulfilled2, repeal or restriction of the scope of the safeguard clause became possible on the tenth anniversary of the coming into force of the Protocol, namely on December 1, 2005.
4 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”) was convened by the Director General in order to, inter alia, facilitate the review of the safeguard clause envisaged by Article 9sexies(2) of the Protocol.
5 At its first session, in July 2005, the Working Group undertook a first analysis of the implications of a repeal of the safeguard clause with respect to six features of the Madrid system procedure. The Working Group concluded, in principle, that the safeguard clause should no longer be maintained with regard to four of those features, namely, the required basis for filing an international application, the determination of the entitlement to file according to the “cascade” principle, the presentation of subsequent designations and requests for the recording of renunciations and cancellations, and the possibility of transformation. However, the Working Group was unable to reach a consensus as to whether the safeguard clause should or not be maintained with regard to two further features of the Madrid system procedure, namely, the time period for the notification of provisional refusals and the fee system.
6 On another question, namely the use of languages under the Madrid system, a feature which is only indirectly concerned by the application of the safeguard clause3, the Working Group recommended at its first session that the Common Regulations be amended so as to provide for the application of all three languages (English, French and Spanish) in the mutual relationships between States bound by both treaties.
7 At its 36th session (September-October 2005), the Assembly of the Madrid Union took note of the conclusions of the Working Group and decided that the Director General should convene a further meeting of the Working Group, inter alia, to continue the preparatory work for a review of Article 9sexies(1) of the Protocol. Such work should aim in particular at enabling the Assembly to decide whether the safeguard clause should be repealed or its scope restricted (see documents MM/A/36/3, paragraph 15 and MM/A/36/1, paragraph 18).
8 The present document is aimed at facilitating the further discussions of the Working Group in preparation for the review of the safeguard clause by the Assembly, by providing additional background information and statistical data for consideration by the Working Group.
9 No draft provisions for amendment of the Protocol or the Common Regulations are being put forward at this stage, since it would first appear necessary to obtain more guidance from the Working Group on the review of Article 9sexies, in particular as to whether the safeguard clause should be repealed in its entirety (and whether such repeal should be accompanied by any other measure or measures), or whether the scope of the safeguard clause should be merely restricted and in what manner.
10 The conclusions of the Working Group will be reported to the Assembly of the Madrid Union in September 2006 and will serve as a basis for the International Bureau to prepare specific proposals (draft provisions for amendment of the Protocol and the Common Regulations, as may be required) for adoption by the Assembly in due course.
II. APPLICATION OF THE SAFEGUARD CLAUSE
11 As of the date of issuing of the present document, the Madrid Union consists of 78 members. Of these, 45 are bound by both the Agreement and the Protocol4, 23 by the Protocol only, and 11 by the Agreement only5.
12 The designation of a Contracting Party is governed by the treaty (Agreement or Protocol) that is common to both the designated Contracting Party and the Contracting Party whose Office is the Office of origin. Where, however, the Contracting Parties in question are bound by both treaties, the designation in such case is governed by the Agreement, in accordance with Article 9sexies, i.e., the safeguard clause.
13 With the Agreement and the Protocol operating as independent, parallel treaties, with separate, but overlapping, memberships, it follows that, by virtue of the application of the safeguard clause, there exist three types of international applications (and of international registrations resulting therefrom):
(a) those governed exclusively by the Agreement – where all the designations are governed by the Agreement;
(b) those governed exclusively by the Protocol – where all the designations are governed by the Protocol; and
(c) those governed by both the Agreement and the Protocol – where at least one designation is governed by the Agreement and at least one designation is governed by the Protocol.
14 In 2005, the International Bureau recorded 356,487 designations made in international registrations or in subsequent territorial extensions. These consisted of 198,894 designations governed by the Agreement and 157,593 designations governed by the Protocol.
15 In turn, of the 33,169 international registrations recorded by the International Bureau in 2005, 6,655 resulted from international applications governed exclusively by the Agreement (i.e., containing only designations governed by the Agreement), 11,691 resulted from international applications governed exclusively by the Protocol (i.e., containing only designations governed by the Protocol) and 14,823 resulted from international applications governed by both the Agreement and the Protocol (i.e., containing at least one designation governed by the Agreement and also at least one designation governed by the Protocol).
REPEAL OF THE SAFEGUARD CLAUSE AND IMPLICATIONS WITH RESPECT TO THE MADRID SYSTEM PROCEDURE
16 At the first session of the Working Group, in July 2005, a number of arguments were given by delegations in favor of or against the repeal of the safeguard clause. Among the arguments given in favor of the repeal of the safeguard clause, were the following: the safeguard clause had originally been conceived as a transitional provision and the Protocol was destined or well placed to become the sole treaty governing the international procedure in the future; the Protocol had proven to be a much more efficient instrument than the Agreement; the repeal of the safeguard clause would result in a better application of the principle of equality of treatment between all Contracting Parties and would allow the setting up of a fairer balance between those Contracting Parties; the repeal of the safeguard clause would result in a considerable simplification of the international registration procedure.
17 The fact was also highlighted that the repeal of the safeguard clause would have positive consequences for users with respect to at least four of the features of the Madrid system procedure, namely, the required basis for filing an international application, the determination of the entitlement to file, the presentation to the International Bureau of certain requests and the possibility of transformation, as well as with respect to the use of languages.
18 On the other hand, a number of delegations gave arguments against the repeal of the safeguard clause, highlighting in particular the negative effects that such measure might have for users with respect to the duration of the refusal period and/or with respect to possible increases in the amounts of fees to be paid for an international registration.
19 Among those delegations that were in favor of the repeal of the safeguard clause, some proposed that the repeal of the safeguard clause be accompanied by the adoption of complementary measures to counterbalance possible negative consequences that might result for users concerning the duration of the refusal period and the amounts of fees to be paid for an international registration (see Chapter VI, below).