97 Regardless of whether the repeal of the safeguard clause is implemented through a simple abrogation or an amendment of Article 9sexies of the Protocol, as indicated in paragraph 95, above, the effects of the repeal would be the same, i.e., that where both a designated State and the State whose office is the Office of the Contracting Party of the holder are bound by the Agreement and the Protocol, that designation would be governed by the Protocol instead of by the Agreement15. Thus, concerning in particular the six features of the international procedure in relation to which the application of the safeguard clause was said to be of direct relevance, the effects would notably be those described in Chapter III, above.
Transitional Measures Linked to the Implementation of the a Repeal of the Safeguard Clause
98 In addition to the abrogation or amendment of Article 9sexies itself, and to any required consequential amendments to the Common Regulations, the a repeal of the safeguard clause would necessitate the adoption of specific transitional provisions. These should address two different types of situation: on the one hand, the processing of international applications, subsequent designations and requests for the recording of renunciations and cancellations that were pending on the date of the coming into force of the repeal of the safeguard clause and, on the other hand, the “conversion” of designations existing on that date, and governed by the Agreement by virtue of the safeguard clause, into designations governed by the Protocol.
99 In general, the principles already set in Rule 40(2) [General Transitional Provisions], which was adopted to regulate the transition from the Regulations under the Agreement to the Common Regulations, would offer some guidance. However, the solutions adopted then could not be entirely transposed to the repeal of the safeguard clause without a close review of their consequences. In addition, these principles only address a shift of the applicable procedure and do not contemplate a situation as fundamental as a change of the governing treaty. Specific solutions would then have to be devised to address the particular situations that such a shift would entail.
100 With respect to “existing” designations, the amendment would need to establish at what point in time designations of States party to both the Agreement and the Protocol would cease to be governed by the Agreement and start being governed by the Protocol16. It could be provided, for example, that such designations made under the Agreement before the date of effect of the repeal of the safeguard clause would, from that date, convert into designations under the Protocol (“immediate conversion”), or that they would remain under the Agreement until the next renewal of the international registration (“progressive conversion”).
101 Understandably, with respect to existing designations, neither the “immediate” nor the “progressive” conversion would have a bearing on the issues of the required basis for filing an international application nor of the “cascade” as these are, by definition, already settled.
102 Both scenarios would mean, however, that, on renewal, individual fees would have to be paid instead of standard fees in respect of any State bound by both treaties that has made the declaration under Article 8(7) of the Protocol. Similarly, under both scenarios, one would have to be mindful of the possible effects on the refusal period. In particular, it could be provided that where, prior to the date of entry into force of the repeal of the safeguard clause, a refusal period has commenced under the Agreement, that period would not be extended under the Protocol for those States bound by both treaties that have made the declaration under Article 5(2)(b) of the Protocol17.
103 Ultimately, as far as the international procedure is concerned, the sole differences between the two scenarios would be the following:
with an “immediate conversion”, requests for the recording of a cancellation or a renunciation concerning designations that were initially made under the Agreement could, from the date of entry into force of the repeal, be filed directly with the International Bureau. Also, such designations could, in the appropriate circumstances18, benefit from the possibility of transformation;.
with a “progressive conversion”, requests for the recording of a cancellation or a renunciation concerning designations that were initially made under the Agreement could be filed directly with the International Bureau only from the date of renewal of the international registration concerned. Also, such designations could never benefit from the possibility of transformation as by the renewal date of the international registration the period of dependency is, by definition, well over.
104 In terms of operational implications, the choice between an “immediate conversion” or a “progressive conversion” is mainly a matter of how and when the conversion should be reflected in the information made available to holders, offices and third parties. It would have to be decided, for example, whether, in case of an “immediate conversion”, holders should be provided with a new certificate.
105 If the Working Group wishes to recommend the a repeal of the safeguard clause, the International Bureau would appreciate receiving more guidance as to how the repeal of the safeguard clause should operate with respect to existing designations, so as to be able to develop appropriate proposals for transitional provisions. However, it should be stressed that the transitional measures envisaged here are linked to the implementation of a repeal of the safeguard clause. Their purpose would be to ensure a smooth but inescapable “conversion” ultimately of all designations governed by the Agreement by virtue of the safeguard clause into designations governed by the Protocol. In that sense, they are entirely different from measures that would seek to maintain the application of the safeguard clause for all pre-existing registrations or designations. This latter kind of measures would be more akin to a restriction of the safeguard clause and is discussed in Chapter VII, below.
V. OPERATIONAL CONSEQUENCES OF THE A REPEAL OF THE SAFEGUARD CLAUSE
106 Should the safeguard clause be repealed, the Offices of States that are bound by both the Agreement and the Protocol would need to modify their procedures and automated systems so as to give effect to the Protocol, rather than the Agreement, with respect to the other States also party to both treaties.
Offices as Office of the Contracting Party of the Holder
107 A repeal of the safeguard clause would concern those Offices as Office of the Contracting Party of the holder with respect to the following three features of the international procedure:
the required basis when filing an international application,
the determination of the entitlement to file, and
the presentation to the International Bureau of certain requests.
108 In general terms, reference has been made in the preceding paragraphs to the implications, for Offices, of a repeal of the safeguard clause. It is not anticipated that there would be any significant operational consequences for Offices as Office of the Contracting Party of the holder following a repeal of the safeguard clause, as far as those three features are concerned. This is all the more so when it is considered that, in the appropriate circumstances, such Offices already apply the provisions of the Protocol in their relations with other Contracting Parties.
Offices as Office of a Designated Contracting Party
109 A repeal of the safeguard clause would concern Offices as Office of a designated Contracting Party with respect to the following three features of the international procedure:
the refusal period (i.e., in the case of those Offices which have made the declaration extending the time limit for notification of refusals),
the fee system (i.e., in the case of those Offices which have made the declaration requesting payment of individual fees), and
110 The general implications of the repeal of the safeguard clause with respect to these features have already been noted. From an operational point of view, the consequences of the repeal of the safeguard clause would be limited for the Offices concerned. The Offices in question already apply the provisions of the Protocol, rather than the Agreement, in the appropriate circumstances and thus, while those Offices would certainly require need to introduce some modifications in terms of the handling and monitoring of their procedures, a repeal of the safeguard clause, as far as these features are concerned, should not per se result in the need for significant alteration of procedures.
The International Bureau
111 As far as the International Bureau is concerned, it would be necessary to carry out the necessary modifications to its operational and information technology systems in order to ensure that in the relations between States bound by both treaties, it would be the Protocol, and not the Agreement, that would have effect.
112 The designation of any Contracting Party is made either under the Agreement or under the Protocol. This, in turn, is reflected in the certificate issued to the holder. It is also noted in the WIPO Gazette of International Marks and the notification addressed to the Office of each Contracting Party so designated. A repeal of the safeguard clause would not change that situation. Its sole effect would be that the proportion of designations made, on the one hand, under the Agreement and, on the other hand, under the Protocol, would be altered.
113 However, regarding designations that existed on the date of the coming into force of the repeal of the safeguard clause, it would be necessary that the change in the governing treaty applicable to a given designation be reflected in databases. The further implications that this would have on the information available to holders, offices and third parties would need to be considered, taking into account the transitional measures adopted in respect of existing designations.
114 For the International Bureau, the repeal of the safeguard clause would also entail certain consequences, as far as languages are concerned and these have been noted in detail in document MM/LD/WG/2/419.
115 In that regard, the main consequence for the International Bureau of the extended application of the trilingual language regime of the Madrid system as a result of a repeal of the safeguard clause would be that a larger number of translations would be required of international registrations, and communications relating thereto, than is the case today.
116 An estimate of the number of additional translations that can be expected to be required can be obtained on the basis of the statistics for the year 2005. If the safeguard clause had not been in effect in 2005, of the 33,169 international registrations recorded in that year, a total of 32,994 would have been subject to the trilingual language regime. This means that translations would have had to have been effected for 6,480 more international registrations than the 26,514 that were actually recorded in English, French and Spanish in the course of 2005. To these should be added 2,619 of the 3,424 international registrations which, in 2005, were the subject of a subsequent designation governed by the Agreement only but which would have been governed by the Protocol if the safeguard clause had not applied in 2005, and which were not yet available in all three languages (1,298 only in French and 1,321 in French and English).An estimate of the number of additional translations that can be expected to be required can be obtained on the basis of the statistics for the year 2005. If the safeguard clause had not been in effect in 2005, of the 33,169 international registrations recorded in that year, a total of 32,994 would have been subject to the trilingual language regime. This means that translations would have had to have been effected for 6,480 more international registrations than the 26,514 that were actually recorded in English, French and Spanish in the course of 2005. To these should be added 2,619 of the 3,424 international registrations, which were the subject of a subsequent designation in 2005, governed by the Agreement only but which would have been governed by the Protocol if the safeguard clause had not applied in 2005, and which were therefore not yet available in all three languages (1,298 only in French and 1,321 in French and English).
117 Consequently, the total number of additional international registrations that would have been subject to the trilingual regime would have amounted to 9,099, of which 7,778 would have required translations of international registrations into English and Spanish, while a further 1,321 would have had to have been translated only into Spanish.
118 Therefore, compared to the actual number of translations effected for the year 2005, an additional number of 16,877 translations would have had to have been effected. Based on the experience of the International Bureau in recent years, one translator is expected to translate, on average, a total of 3,000 international registrations (plus a proportionate number of other communications) per year. As a result, 5.6 additional translators would have been required.
VI. MEASURES SUGGESTED TO ACCOMPANY A REPEAL OF THE SAFEGUARD CLAUSE
119 At the first meeting of the Working Group, in July 2005, a number of delegations and representatives of observer organizations suggested that in the event of a repeal of the safeguard clause certain measures should be adopted to counterbalance possible disadvantages that might result for users, in particular with respect to the duration of the refusal period and the amount of fees to be paid for an international registration (see Annex to document MM/A/36/1).
Further Limiting the Duration of the Refusal Period under the Protocol
120 One delegation proposed that the repeal of the safeguard clause be accompanied by an amendment of the relevant provisions in the Protocol so as to provide for a single one-year duration of the refusal period under the Protocol. Other Several delegations stated that they could not agree to a changindicated their preference for maintaining the of these current provisions of provisions, of the Protocol,, which allow for an extension of the refusal period to 18 months, or even longer in the case of opposition. One delegation indicated that without such provisions, its country would not have joined the Protocol. It was also indicatedsubmitted that tThose provisions ese constituted a features which would allow potential new Contracting Parties to accede to the Protocol.
121 The representative of an observer organization asked whether it could be envisaged to provide for an intermediate optional time limit for the refusal period, for example 15 or 16 months, to be applicable only to those Contracting Parties which would be satisfied with such time limit. However, it was noted that by providing for the co-existence of different time limits (one year, 15 or 16 months and 18 months), the Madrid system would become more complex.
122 The representatives of two observer organizations noted that they were in favor of a single one year refusal period. However, given that this might prevent potential new Contracting Parties from acceding to the Protocol, new Contracting Parties might be offered the possibility of making the declaration for an 18-month refusal period, but only with a temporary effect, for example, five years. This would encourage such new Contracting Parties to make every effort to achieve a reduction of their refusal time frames.
123 No consensus was reached concerning any of the above-mentioned proposals.
Further Limiting the Maximum Amount of Individual Fees under the Protocol
124 One delegation suggested accompanying the repeal of the safeguard clause with the adoption of an amendment to the principles governing the maximum amounts of individual fees, by providing that such amounts should not exceed 50% of the corresponding domestic fees. Such amendment would imply modifying Article 8(7) of the Protocol, which could only be done through a Diplomatic Conference. However, the suggestion was made that the matter could be further discussed.
Enhanced level of services rendered by Offices
125 One delegation and the representatives of two users organizations, participating as observers, expressed the view that the possible disadvantages resulting from the repeal of the safeguard clause could be counterbalanced if the Offices of Contracting Parties were to enhance the level of services that they currently rendered under the Madrid system. This could be achieved by providing additional information to holders regarding the status of pending designations and increasing the number of communications sent to holders, including, for example, statements of grant of protection. It was crucial for users to have, as soon as possible, legal certainty regarding the status of protection of their marks. The issue of the length of the refusal period would have less importance if Offices were to provide notifications with regard to the status of a pending designation.
126 One delegation pointed out that the notification of statements of grant of protection would represent a burden of work, possibly difficult to absorb, for Offices with a small capacity.
127 The suggestion was made, however, that the Working Group should further explore ways in which Offices could enhance the level of services they rendered to applicants and holders of international registrations under the Madrid system.
VII. RESTRICTION OF THE SCOPE OF THE SAFEGUARD CLAUSE
128 It is recalled that under paragraph (2) of Article 9sexies of the Protocol, the Assembly may either repeal or restrict the scope of the safeguard clause. The notion of “restriction” is, however, not defined, and at least two non-mutually exclusive manners of restricting the scope of the safeguard clause may be envisaged: the scope of the safeguard clause could be restricted to cover only certain features of the international procedure, or it could be restricted to cover only international registrations or designations already existing at a given date.