Ana səhifə

World intellectual property organization


Yüklə 207 Kb.
səhifə4/4
tarix25.06.2016
ölçüsü207 Kb.
1   2   3   4

A. Restriction of the Scope of the Safeguard Clause to Cover only Certain Features of the International Procedure

129 At its first meeting, the Working Group mainly focused its analysis on the implications of the safeguard clause with respect to six features of the international procedure and concluded that the safeguard clause should no longer be maintained with respect to four of those features, namely:




  • the required basis for filing an international application;

  • the determination of the entitlement to file;

  • the presentation of subsequent designations and of requests for the recording of renunciations and cancellations, and

  • transformation.

130 On the other hand, a number of delegations indicated that the safeguard clause should be maintained with respect to the refusal period20 and/or the fee system21.


131 A restriction of the scope of the safeguard clause to cover only certain features of the international procedure, would require an amendment of Article 9sexies(1) of the Protocol. In that context, it would be necessary to specify which treaty would generally apply in the relations between States that are party to both.
132 Two mutually exclusive approaches can be envisaged for such an amendment: one that provides for the general application of the Agreement, subject to certain exceptions, and another one that provides for the general application of the Protocol, subject to certain exceptions.


Approach 1: General Application of the Agreement, Subject to Certain Exceptions
133 Under this approach, paragraph (1) of Article 9sexies of the Protocol could be amended so as to provide, in substance, that:


    1. it is the Agreement that generally applies in the mutual relations between States bound by both treaties, except that




    1. with respect to certain identified features of the international procedure – for example, the required basis for the filing of an international application, the cascadedetermination of the country of origin, the presentation of certain requests, or transformation – the provisions of the Protocol apply.

134 For the implications that this approach would have on the international procedure, one may refer to chapter III where these implications are already outlined specifically for each of the features in respect of which a restriction of the safeguard clause may be envisaged. For the operational consequences, one could also generally refer to chapter V.


135 In addition to the above, this approach would, in practical terms, introduce in the system a third type of designation, i.e., that of a hybrid designation, governed by the Agreement with regard, for example, to the refusal period and the fee system, and by the Protocol as regards other features. This would perpetuate the application of the Agreement, albeit in a curtailed way, not only at the time that a designation is made but, to the extent that the issue of the fee system is equally relevant to the renewal procedure, also throughout the life of international registrations containing such hybrid designations.
136 Moreover, introducing this third type of designation would require all parties involved (i.e., users, offices and the International Bureau) to amend their procedures and automated programs. The further implications that this would have on the information available to holders, offices and third parties would need to be considered. For example, the certificate, paper and electronic notification and the publication programs of the International Bureau and, more generally speaking, trademark databases, would likely all have to be revised to allow this hybrid type of designation to appear clearly where appropriate.

Approach 2: General Application of the Protocol, Subject to Certain Exceptions
137 As a first option under this approach, paragraph (1) of Article 9sexies of the Protocol could be amended so as to provide, in substance, that:


    1. it is the Protocol that generally applies in the mutual relations between States bound by both treaties, except that




    1. with respect to certain identified features of the international procedure – for example, the refusal period or the fee system – the provisions of the Agreement apply.

138 Like Approach 1, this option still maintains explicitly the application of the Agreement. It would thus entail the same type of general implications, as well as those more closely associated with the introduction into the system of a hybrid kind of designations, as commented in paragraphs 134 to 136, above.

139 Another option under this approach, which would still achieve the same practical outcome (i.e., for example, the guaranteed application of standard fees and/or of the shorter period of refusal), would be to amend Article 9sexies(1) of the Protocol so as to provide, in substance, that:


    1. it is the Protocol that generally applies in the mutual relations between States bound by both treaties, except that




    1. any declaration made under the relevant provisions of the Protocol – for example, Article 5(2)(b) and (c) (extension of the time for notifying provisional refusals) or Article 8(7) (individual fees) – would have no effect in the mutual relations between States bound by both the Agreement and the Protocol.

140 In other words, under this option, Article 9sexies of the Protocol would operate as a safeguard of the spirit of the Agreement with respect to certain specified features: indeed, what would apply between these States is a restricted regime under the Protocol, in other words, a regime that, with respect to these features, is identical to that prevailing under the Agreement.


141 As a result, in strict legal terms, the application of the Agreement would be ousted and this second option of Approach 2 would make it clear that, for the future, only one treaty applies between States party to the Agreement and the Protocol, and that this treaty is a restricted version of the Protocol (i.e., without the options offered by Article 5(2)(b) and (c) and Article 8(7)). Of course, any declaration under such provisions of the Protocol that a State party to both the Agreement and the Protocol has made, or may in the future make, would apply in the relations with Contracting Parties bound only by the Protocol. As an implication to this option of Approach 2, then, States party to both the Agreement and the Protocol would be offering different treatment to users under the Protocol, depending on whether their country of entitlement is also a party to the Agreement. This situation would persist as long as there remain two groups of Contracting Parties to the Protocol, i.e., those which are also Party to the Agreement and those which are not.

B. Restriction of the Scope of the Safeguard Clause to Cover only Existing International Registrations or Designations (“Freezing”)


142 A restriction of the scope of the safeguard clause could also be envisaged in terms of maintaining the safeguard clause only to apply to international registrations or designations already existing at a given date. This is a possibility that was not examined by the Working Group at is first session, and that would result in a sort of "freezing" of the number of registrations or designations that would continue to be governed by the Agreement by virtue of the safeguard clause.


Approach 1: Safeguard Clause Applied only to Existing Registrations
143 The Assembly could decide that States bound by both the Agreement and the Protocol should, in their mutual relations, continue to apply the provisions of the Agreement with respect to international registrations bearing a date prior to the entry into force of the amendment of Article 9sexies.

144 If the safeguard clause were to be restricted in this manner, this would mean that the number of international registrations to which it applies would be frozen as of the date of entry into force of the restriction of the safeguard clause. However, the Agreement would still apply to some of some the new relations between States bound by both treaties, namely those, namely those resulting from subsequent designations made on or after the date of entry into force of the restriction of the scope of the safeguard clause in respect of those international registrations already existing prior to that date. In other words, the number of designations governed by the Agreement by virtue of the safeguard clause would continue to expand.


145 In practical terms, all such subsequent designations would of course have to be presented through the office of the Contracting Party of the holder and have to be based on a registration as opposed to an application (unless the scope of the safeguard clause were also to be restricted in this respect). Even where they concern States that have made the relevant declarations under the Protocol, they those designations would, in this context, require the payment only of standard fees only and would be subject to the refusal period of one year.
146 More fundamentally, for all designations contained in such international registrations, this manner of restricting the safeguard clause would guarantee that standard fees, as opposed to possible individual fees, would continue to be required for renewal. On the other hand, these designations would not benefit from the possibility of transformation, and any request for the recording of a renunciation or a cancellation in respect of such a designation would still have to be presented through the office of the Contracting Party of the holder (unless, again, the scope of the safeguard clause were also to be restricted in this respect).

Approach 2: Safeguard Clause Applied only to Existing Designations
147 The Assembly could equally decide that States bound by both the Agreement and the Protocol should, in their mutual relations, continue to apply the provisions of the Agreement with respect to designations bearing a date prior to the entry into force of the amendment of Article 9sexies. This would constitute another type of “freezing” different from the one described in the previous paragraphs. In this case, both the numbers of international registrations and that of designations governed by the Agreement by virtue of the safeguard clause would be frozen at the date of the repeal. For example, if the restriction had been implemented in that manner on January 1, 2006, the application of the Agreement in the relations between States party to both treaties would have been confined, from that day onwards, to a maximum total of 3,861,520 designations, contained in 421,165 international registrations.
148 If the safeguard clause were to be restricted in this manner, the effects on the designations concerned would be those highlighted in paragraph 146, above.

Further Considerations Relating to a Restriction of the Scope of the Safeguard Clause
149 Under any of the afore-mentioned possibilities for a restriction of the scope of the safeguard clause, the Working Group would need to consider also what kind of amendment to paragraph (2) of Article 9sexies would be required. In that regard, it may consider it appropriate to provide for a further review of Article 9sexies (1), at a time and upon terms to be discussed.
150 Moreover, in addition to the amendment of Article 9sexies itself, and to any required consequential amendments to the Common Regulations, the restriction of the scope of the safeguard clause would necessitate the adoption of specific transitional provisions.
151 It is further noted for the consideration of the Working Group that the two manners of restricting the scope of the safeguard clause exposed above could be combined. For instance, a “freezing” kind of restriction could be adopted in relation to designations, but only insofar as certain of the features of the Agreement, for example its fee system, are concerned. Under such a scenario, standard fees only, as opposed to possible individual fees, would continue to be required for the renewal of such designations. However, in respect of these same designations, requests for the recording of a renunciation or a cancellation would no longer have to be filed necessarily through the Office of the Contracting Party of the holder as, despite the “freeze”, the Agreement would not be maintained in respect of that requirement.
152 In any event, more elements would need to emerge from the discussions of the Working Group as to how, if at all, the scope of the safeguard clause should be restricted before the International Bureau could develop a workable solution that would also encompass transitional provisions.
153 The Working Group is invited to comment on the above, and, in particular, to indicate



(i) whether it would recommend that either a proposal to repeal or a proposal to restrict the scope of the safeguard clause be submitted to the Assembly of the Madrid Union for adoption;
(ii) where, its recommendation under (i) would concern a repeal, whether any additional measure would be recommended for adoption;
(iii) where, its recommendation under (i) would concern a restriction, in which specific manner it would further recommend that the safeguard clause be restricted, and
(iv) which are the transitional solutions that it would envisage in relation with a repeal or a restriction of the scope of the safeguard clause.

[End of document]



1Article 9sexies(2) further provides that in the vote of the Assembly, “only those States which are party to both the Agreement and the Protocol shall have the right to participate”. This is accounted for by the fact that, by definition, the safeguard clause only comes into play in the mutual relationships between States bound by both treaties.


2This condition has been fulfilled since April 1, 2003, following the (simultaneous) accession to the Protocol of Belgium, Luxembourg and the Netherlands, with effect from April 1, 1998. At that time, out of 39 countries party to the Madrid Agreement, 21 had become party to the Protocol.


3By virtue of the definition of the three types of international application, in Rule 1, (viii) to (x) of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement (“the Common Regulations”).

4Albania, Armenia, Austria, Belarus, Belgium, Bhutan, Bulgaria, China, Croatia, Cuba, Cyprus, Czech Republic, Democratic People’s Republic of Korea, France, Germany, Hungary, Iran (Islamic Republic of), Italy, Kenya, Kyrgyzstan, Latvia, Lesotho, Liechtenstein, Luxembourg, Monaco, Mongolia, Morocco, Mozambique, Namibia, Netherlands, Poland, Portugal, Republic of Moldova, Romania, Russian Federation, Serbia and Montenegro, Sierra Leone, Slovakia, Slovenia, Spain, Swaziland, Switzerland, Syrian Arab Republic, the former Yugoslav Republic of Macedonia and Ukraine (45).


5Following the recent accession of Viet Nam to the Protocol, there will be 46 Contracting Parties bound by both the Agreement and the Protocol and 10 bound by the Agreement only, on July 11, 2006, the date on which the accession of Viet Nam will enter into force.

6114 international registrations originating from the 11 States bound exclusively by the Agreement and 61 international registrations originating from States bound by both the Agreement and the Protocol, but not containing any designation governed by the Protocol.

7That is to say, those subsequent designations and requests for the recording of renunciations and cancellations in respect of which the holder’s country of origin is bound by both the Agreement and the Protocol, and the Contracting Party which is designated subsequently, or the Contracting Party affected by the cancellation or renunciation, is also bound by both treaties.

8Armenia, Belarus, Bulgaria, China, Cyprus, Iran (Islamic Republic of), Italy, Kenya, Poland, Slovakia, Switzerland and Ukraine.


9China, Cyprus, Iran (Islamic Republic of), Italy, Kenya and Ukraine.


10In 2005, the total number of designations, made under the Protocol, of the 12 Contracting Parties in question, amounted to 16,015. It should be noted, however, that given the timing aspect, it is not of course appropriate to make a direct correlation between those designations and the 1,476 notifications of provisional refusal referred to in this paragraph.

11


 Article 4(1) of the Protocol provides that, if no refusal is notified within the prescribed time limit, the protection of a mark in a designated Contracting Party is the same as if the mark had been registered by the Office of the Contracting Party in question.


12Statements of grant of protection are currently issued by 13 Contracting Parties, namely, Australia, European Community, Georgia, Hungary, Ireland, Japan, Norway, Republic of Korea, Singapore, Sweden, Syrian Arab Republic, Turkey and the United Kingdom.

13Armenia, Belarus, Benelux, Bulgaria, China, Cuba, Italy, Kyrgyzstan, Republic of Moldova, Switzerland and Ukraine.

14On the basis of the amounts of the relevant individual fees as of the date of issuing of the present document.

15 As far as the simple abrogation is concerned, this effect would result from Article 30 of the Vienna Convention on the Law of Treaties.


16 On December 31, 2005, there were 3,861,520 such designations in force, contained in 421,165 international registrations.


17 While the issue is more relevant under the first scenario (“immediate conversion”), it also exists under the second one, considering that the period of time between the notification of a designation, the coming into force of the repeal and the renewal date of a given registration could be less than one year.


18 It is recalled, in particular, that under Article 9quinquies of the Protocol, the national or regional application must be filed within three months of the date of cancellation of the international registration.

19The information in the following paragraphs, concerning the language regime, is taken from that paper.

20 With respect to the refusal period, six delegations of States bound by both the Agreement and the Protocol expressed support for maintaining the safeguard clause, while nine delegations of States bound by both treaties favored no longer maintaining the safeguard clause (see report of the first session of the Working Group, in Annex to document MM/A/36/1, paragraphs 60 to 72 and 86)


21 With respect to the fee system, 10 delegations of States bound by both the Agreement and the Protocol expressed support for maintaining the safeguard clause, while seven delegations of States bound by both treaties favored no longer maintaining the safeguard clause (see Annex to document MM/A/36/1, paragraphs 73 to 83).

1   2   3   4


Verilənlər bazası müəlliflik hüququ ilə müdafiə olunur ©atelim.com 2016
rəhbərliyinə müraciət