WIPO
MM/WG/2/6
ORIGINAL: English
DATE: June 15, 2001
WIPO |
|
MM/WG/2/6 |
GENEVA
adopted by the Working Group
1. The Working Group on the Modification of the Common Regulations Under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement (hereinafter “the Working Group”) held its second session in Geneva from June 11 to 15, 2001.
2. The following member States of the Madrid Union were represented at the session: Australia, Austria, Bulgaria, China, Croatia, Democratic People’s Republic of Korea, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Italy, Japan, Latvia, Lithuania, Norway, Portugal, Romania, Russian Federation, Slovakia, Slovenia, Spain, Sweden, Switzerland, The former Yugoslav Republic of Macedonia, Turkey, Ukraine, United Kingdom (30).
3. The following member States of the Paris Union were represented by observers: Canada, Indonesia, Iran (Islamic Republic of), Ireland, Republic of Korea, United States of America (6).
4. Representatives of the following intergovernmental organizations took part in the session in an observer capacity: Benelux Trademark Office (BBM), Commission of the European Communities (CEC) (2).
5. Representatives of the following international non-governmental organizations took part in the session in an observer capacity: European Brands Association (AIM), International Association for the Protection of Intellectual Property (AIPPI), International Chamber of Commerce (ICC), International Federation of Industrial Property Attorneys (FICPI), International Trademark Association (INTA), Licensing Executives Society (International) (LES) (6).
6. The list of participants is given in Annex I to this report.
7. Mr. François Curchod, Deputy Director General, opened the session and welcomed the participants on behalf of the Director General of WIPO.
8. The Working Group unanimously elected Mrs. Debbie Rønning (Norway) as Chair, and Mrs. Duan Chuane (China) and Mr. Tibor Ivanovi (Croatia) as Vice-Chairs. Mr. Malcolm Todd (WIPO) acted as Secretary of the Working Group.
9. Discussions were based on the following documents drawn up by the International Bureau: “Proposals for the modification of the Common Regulations under the Madrid Agreement and Protocol – (1) Proposals approved in the first session of the Working Group” (document MM/WG/2/2), “Proposals for the modification of the Common Regulations under the Madrid Agreement and Protocol – (2) New and revised proposals” (document MM/WG/2/3), “Proposals for the modification of the Common Regulations under the Madrid Agreement and Protocol – (2) New and revised proposals: addendum” (document MM/WG/2/3 Add.), “Notes on new and revised proposals for modification of the Common Regulations under the Madrid Agreement and Protocol” (document MM/WG/2/4), “Draft Administrative Instructions for the application of the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating Thereto” (document MM/WG/2/5) and “Draft Administrative Instructions for the application of the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating Thereto: addendum” (document MM/WG/2/5 Add.).
10. The Secretariat noted the interventions and recorded them on tape. This report summarizes the discussions without necessarily reproducing all the comments that were made.
11. The text of the amended provisions of the Common Regulations as approved by the Working Group is given in Annex II. Changes are indicated (in bold and strikeout) by reference to the proposals as submitted to the Working Group. This includes a few purely editorial changes introduced by the Secretariat. In general, the discussion concerning a given provision is recorded in this report only where the text of the provision as approved differs from that contained in the documents submitted to the Working Group (MM/WG/2/2, 3 and 3 Add.).
12. The Delegation of the United States of America asked why the definition of “notification of provisional refusal” in the proposed amended version of Rule 1(xix) referred only to a declaration under paragraph (1) of Article 5 of the Agreement and the Protocol, in view of the fact that there was a reference in paragraph (5) to a provisional refusal. The Secretariat replied that the purpose of this definition was to make clear that the notification of a provisional refusal under Rule 17 was the exercise of “the right to declare that protection cannot be granted” mentioned in Article 5(1) of the Agreement which, unlike the corresponding provision of the Protocol, did not use the words “notification” or “refusal.”
13. The Secretariat drew attention to the fact that item (xviiibis) was redundant since the expressions defined therein were not used in the Regulations. Further, the word “also” should be omitted from item (xviibis) as it was unnecessary and could be misinterpreted.
14. Further to a suggestion by the Secretariat, it was agreed that the words “if such subsequent designation or request is made through an Office” at the end of Rule 3(2)(a) would be deleted, as it appeared unnecessary to require a separate communication where the form is already signed either by the holder or by an Office under Rule 24 or 25.
15. The Delegations of Germany, Italy, Lithuania, Slovakia and Sweden—countries having made the notification under Rule 7(1)—supported the proposed deletion of that provision.
16. As regards the setting of a date by which a notification already made should be withdrawn, the Delegation of Sweden expressed doubts since such withdrawal depended, as far as Sweden was concerned, on the outcome of the process for amending the corresponding provision in its national law. It was therefore agreed that any reference to a date by which the notification should be withdrawn be omitted from Rule 7(3)(b) and instead that the issue be addressed by the Assembly of the Madrid Union in the form of a recommendation stating in substance that notifications under Rule 7(1) should be withdrawn as soon as possible by the Contracting Parties concerned. The Secretariat indicated that the text of the deleted paragraph (1) would be given in a footnote in the published text of the Regulations.
Rule 9(4)(a)(viibis)
17. Having noted that several national legislations provided for the possibility that a mark consist of a color or a combination of colors, it was agreed that paragraph (4)(a)(viibis) would be modified to read: “where the mark that is the subject of the basic application or the basic registration consists of a color or combination of colors as such, an indication to that effect.”
Rule 9(4)(b)(v)
18. Following a proposal by the Delegation of the Russian Federation, supported by the Delegation of Hungary and the Representatives of AIPPI and INTA, it was agreed that the words “non-distinctive” would be deleted from paragraph (4)(b)(v).
19. Further to a question by the Delegation of the United States of America, the Secretariat confirmed that the intention of paragraph (4)(b)(v) was to leave it to the applicant’s discretion whether or not to include a disclaimer in the international application.
20. In reply to a question by the Delegations of Japan and Hungary concerning the possibility for an applicant to disclaim protection in respect of some Contracting Parties only, the Secretariat explained that this would raise both legal and practical difficulties.
21. Replying to a question by the Delegation of Spain, the Secretariat, noting that Rule 32(1) referred to the publication in the Gazette of “relevant data,” said that it considered that disclaimers were part of the relevant data to be published.
22. Finally, further to a suggestion of the Delegation of Spain, supported by the Delegation of the United States of America, it was agreed that the wording “where the applicant wishes to disclaim protection for an element of the mark” be replaced by “where the applicant wishes to disclaim protection for any element of the mark.”
Rule 9(5)(a)
23. The Working Group agreed to amend items (ii) and (iii) of that provision in order to take account of the “cascade” (Article 1(3) of the Agreement). These items will now read respectively: “where the applicant has no such establishment in any Contracting State of the Agreement, that he has a domicile in the territory of the State whose Office is the Office of origin,” and “where the applicant has no such establishment or domicile in the territory of any Contracting State of the Agreement, that he is a national of the State whose Office is the Office of origin.”
24. Subject to the changes mentioned in the foregoing paragraphs, Rule 9(4) and (5) as set out in documents MM/WG/2/2 and 3 was approved by the Working Group.
25. This provision was approved by the Working Group as proposed in document MM/WG/2/3 Add.
26. This provision was approved by the Working Group as proposed in document MM/WG/2/2.
27. This provision was approved by the Working Group as proposed in document MM/WG/2/3.
Rule 17(1)
28. Further to a discussion as to the possibility to find a better term to refer to a provisional refusal based on objections raised by an Office on its own initiative (as a counterpart to a “provisional refusal based on an opposition”), it was eventually agreed to maintain the term “ex officio provisional refusal” in paragraph (1)(a), since it seemed to be clearly understood in all Contracting Parties. The Secretariat pointed out that the term “ex officio examination” was already used in Rule 17(6)(a)(ii).
Rule 17(2)(vi)
29. The Delegation of Japan asked whether, considering in particular the last sentence of paragraph 15 of the Notes (document MM/WG/2/4), the new wording of Rule 17(2)(vi) would require a modification of the Japanese law, under which, even where the grounds on which a refusal was based affected only a part of the goods and services, an action by the holder before the Japan Patent Office was necessary (for example, the limitation of the list of goods and services) in order for the remaining goods and services to be accorded protection. The Secretariat replied that the proposed provision did not differ in substance from the current wording of Rule 17(2)(vi) insofar as it could be interpreted as allowing an indication that all goods and services were affected by the provisional refusal and insofar as it was up to each Contracting Party to make that interpretation. The Secretariat further noted that the overwhelming majority of Offices did notify partial refusals and did not require any action from the holder in order to assure protection to those goods and services which were not affected by the grounds for refusal; this was greatly in the interest of users.
30. Replying to a question raised by the Delegation of Hungary, the Secretariat stated that the wording of paragraph (2)(vi) allowed for the indication of the goods and services by reference to the class number, without requiring that the names of the goods and services be spelled out.
Rule 17(2)(vii)
31. The Delegation of Germany noted that, under German law, the holder of an international registration was not invited to file a response to a provisional refusal based on an opposition, but to request the review of such refusal. Further to this explanation, and taking also into account suggestions by the Delegations of Hungary and the United States of America, it was agreed to amend Rule 17(2)(vii) to read as follows: “the time limit, reasonable under the circumstances, for filing a request for review of, or appeal against, the ex officio provisional refusal or the provisional refusal based on an opposition and, as the case may be, for filing a response to the opposition….”
32. Replying to a question raised by the Representative of INTA, the Secretariat stated that the adverb “preferably” in Rule 17(2)(vii) referred to the indication of the actual date on which the time limit expired (i.e. the day, the month and the year). Although it was desirable to give this date, it was not obligatory. However, the indication of the time limit to lodge a request for review or an appeal (e.g. in terms of a time period counted from the receipt of the notification of refusal) remained mandatory.
33. The Delegation of Australia expressed concern as regards the requirement under Rule 17(2)(vii) that the time limit for filing a response to a provisional refusal based on an opposition be indicated; under Australian law, the time limit to respond to an opposition started to run from the date on which the opponent submitted evidence supporting the opposition; at the time at which the provisional refusal was notified, such date was still unknown. The Secretariat stated that nothing in the provision prevented an Office from indicating a time limit whose starting point would be an event in the future whose date was yet undetermined.
Rule 17(3) and (4)
34. There were no comments on these provisions as proposed in document MM/WG/2/3.
Rule 17(5)
35. The Delegation of Germany said that it favored a system whereby the decision (whether administrative or judicial) that would be notified to the International Bureau would be truly final; in the case of Germany, the Office awaited the outcome of any appeal to the Federal Patent Court against the decision of the Office. Likewise, the Delegation of Finland, noting that under the proposed paragraph (a) the International Register would not necessarily reflect the final status of protection of a mark, suggested that those Offices which were in a position to send genuinely final decisions should be allowed to do so. The Secretariat said that an Office was able to notify a final decision resulting from proceedings outside the Office under subparagraph (b).
36. The Delegations of Austria and Hungary and the Representative of AIPPI supported the proposals contained in subparagraphs (a) and (b), the latter commenting that it was useful for holders and third parties for a decision of the Office to be recorded and published as soon as possible, without having to wait for the outcome of any appeal. This position was supported by the Representative of ICC and FICPI.
37. Further to a request for clarification from the Delegation of Japan concerning the procedures that should be covered by the terms “once all procedures before the said Office relating to the protection of the mark have been completed” in subparagraph (a), the Secretariat said that this was a matter to be determined by each Contracting Party.
38. The Delegation of Switzerland stated that in the particular case of restitutio in integrum, the Swiss Federal Institute of Intellectual Property took a decision after all procedures before the said Institute had been considered as completed. In order therefore to reflect the possibility that the “further decision” mentioned in subparagraph (b) covered the case of a decision by the Office which followed the ordinary closing of procedures before that Office, the said subparagraph was amended to read as follows: “Where, following the sending of a statement in accordance with subparagraph (a), a further decision affects the protection of the mark, the Office shall, to the extent that it is aware of that decision, send to the International Bureau a further statement indicating the goods and services for which the mark is protected in the Contracting Party concerned.”
39. The Working Group agreed that the Notes accompanying the proposals to be submitted to the Assembly of the Madrid Union would expressly mention the fact that the wording of subparagraph (b) covered the case of a further decision by the Office as explained in the foregoing paragraph. It was further suggested that the Offices could provide information for publication in the Guide to the International Registration of Marks Under The Madrid Agreement and the Madrid Protocol concerning the actual procedures which were covered by subparagraphs (a) and (b) in the respective Contracting Parties.
40. Summarizing the discussion, the Chair noted that there was a consensus that Offices should send information to the International Bureau once a situation had been reached where what was in practice likely to be a final decision had been taken. It was up to each Office to decide when this stage had been reached and in particular to determine whether the proceedings of a Trial and Appeal Board amounted to “procedures before the Office.”
41. Further to a proposal by the Delegation of the Russian Federation to replace the word “statement” by “notification” in paragraph (b), the Secretariat stated that word “notification” was used in connection with a communication from which stemmed a legal consequence, whereas the word “statement” was used in connection with a piece of information furnished by an Office on the status of the mark.
42. As regards paragraph (5)(d), the Delegations of Spain and Portugal declared that they fully agreed with the proposal made by the International Bureau in document MM/WG/2/3 Add.
43. As regards paragraph (5)(e), the Delegation of China declared that it fully agreed with the proposal made by the International Bureau in document MM/WG/2/3 Add.
Rule 17(6)
44. Further to a proposal by the Delegation of Ireland, supported by the Representative of AIPPI, it was agreed that items (ii) and (iii) of paragraph (6)(a) would be amended to take account of the fact that the protection of the mark could still be subject, not only to opposition, but also to observations by third parties.
45. Following a suggestion by the Representative of AIPPI, the Working Group agreed that the Notes accompanying the proposals to be submitted to the Assembly of the Madrid Union would make it clear that the reference to “observations by third parties” in items (ii) and (iii) would apply only to those Contracting Parties whose national or regional legislation provided for such possibility.
Rule 18(1)
46. The Secretariat noted that, in Rule 18(1)(c)(i), the reference to Rule 2(1)(a) should be replaced by a reference to Rule 2 only. It further indicated that Rule 18(1)(d) should be aligned with Rule 17(2)(vii) as amended during this session.
47. In reply to a question raised by the Delegation of the United Kingdom, the Secretariat explained that the word “should” in draft Rule 18(1)(d) made it clear that the indication of the new time limit mentioned in that provision was not a compulsory requirement. The Delegation of the United States of America indicated that its practice was to set long time limits initially, thereby rendering a new time limit unnecessary. It was agreed to replace, in what is now Rule 18(1)(e), “should” by “shall, where the applicable law so permits.”
48. The Delegations of Japan, Denmark and the Russian Federation supported alternative A relating to Rule 18(1) insofar as it provided for a time limit for the Office to send a rectified notification and clearly set out the consequences in case of an irregular notification of provisional refusal.
49. The Delegations of Hungary, the United Kingdom and Germany, as well as the Representative of ICC and FICPI, declared their support for alternative B.
50. The Representative of AIPPI, while favoring alternative B, said that the absence of any legal consequence if an Office failed to send a rectified notification within the prescribed time limit did not create a proper balance between the interests of users and those of Offices.
51. With a view to accommodating the various observations made by the Working Group, the Secretariat suggested to retain alternative B with the following amendments: firstly, the two-month time limit for an Office to send a rectified notification would be maintained, and, secondly, where the irregularity consisted in failure to indicate the remedies against the provisional refusal (as provided for in Rule 18(1)(c)(iv)), the provisional refusal would not be recorded in the International Register and would not be considered as such unless it was rectified within this time limit.
Rule 18(2)
52. There were no comments on this provision as proposed in document MM/WG/2/3.
53. The Secretariat, after recalling that Rule 20(1) allowed for the information relating to a restriction of the holder’s right of disposal to be sent either by the Contracting Party of the holder or by the holder himself, suggested that the removal of such a restriction, as provided for in paragraph (2), should also be allowed to be requested by the holder having requested the recording of the said restriction. It was agreed to amend Rule 20(2) accordingly.
54. The Representative of INTA suggested to specify in Rule 20(1) the possibility of a partial restriction of the holder’s right of disposal (i.e. in respect of only some of the designated Contracting Parties).
55. In reply to observations made by the Delegations of the United States of America and Austria, as well as the Representative of AIPPI, the Secretariat explained that, under the proposed wording of Rule 20, just as the under current version of that provision, a third party was entitled to request the recording of a restriction, or its removal, but only insofar as the corresponding request was presented to the International Bureau through the intermediary of an Office (since that third party was unknown to the International Bureau).
56. The Representative of AIM was of the opinion that third parties should not be entitled to request the recording of a restriction of the holder’s right of disposal.
57. The Delegation of Hungary noted that a general concern was that no documentary evidence was required for the recording of a restriction of the holder’s right of disposal and wondered to what extent the furnishing of such documents was necessary. The absence of control could prove problematic in particular in the case of a request made by a third party.
58. The Secretariat replied that a request made by a third party for recording a restriction would necessarily be presented through an Office; it would be up to that Office to check the legitimacy of the request. The International Bureau did not have the competence for carrying out such an examination.
59. The Delegation of Finland suggested to complete paragraph (3) in order to provide that the information relating to a restriction be also transmitted to the designated Contracting Parties concerned.
60. The Chair, taking into account the observations made by the Working Group, proposed to add at the end of paragraph (1)(a) the words “and, if appropriate, indicate the Contracting Parties concerned” and to replace in paragraph (3) the words “the holder accordingly” by “accordingly the holder, the designated Contracting Parties concerned and, where the recording has been requested by an Office, that Office.” It was so agreed.
61. The Secretariat finally pointed out that the recording of a restriction of the holder’s right of disposal was at this stage exempted from fees, given in particular the small number of requests for recording currently received. However, the payment of such a fee could be provided for in the future if the new provision increased significantly the number of requests for recording presented to the International Bureau.
62. The Delegation of the Russian Federation asked what was the legal basis for providing in the Regulations for the recording of licenses. The Secretariat referred to Article 9bis(v) of the Protocol, which provides for the recording of “any other relevant fact, identified in the Regulations, concerning the rights in a mark that is the subject of an international registration.”
63. The Delegation of Japan, noting that a modification of Japanese law would be required before its country could recognize the effects of the recording of licenses in the International Register, stated that it considered Rule 20bis(6) to be essential.
Rule 20bis(1)
64. Further to an intervention by the Delegation of Germany stating that the German Patent and Trademark Office did not want to be obliged to present requests to record licenses to the International Bureau, it was agreed that the words “if such Office admits such presentation” would be added to Rule 20bis(1)(a).
65. Replying to a question by the Delegation of the Republic of Korea, the Secretariat said that it would not be possible for a licensee to present a request for recording a sub-license directly to the International Bureau. The Secretariat also drew attention to the fact that the question of sub-licenses had been deliberately left out of the Joint Recommendation Concerning Trademark Licenses, adopted by the General Assembly of WIPO and the Assembly of the Paris Union in September 2000, and suggested that this was an issue which should similarly be left out of Rule 20bis.
66. Following a proposal by the Delegation of Japan, it was agreed that item (v) in Rule 20bis(1)(b) would include an indication of the classes of the International Classification of Goods and Services.
67. With respect to item (vi) of draft Rule 20bis(1)(b), it was agreed, further to a proposal by the Delegation of the Republic of Korea, that the Notes accompanying the proposals to be submitted to the Assembly of the Madrid Union would make it clear that, where there was no indication that a license was exclusive or sole, it could be considered that the license was non-exclusive.
68. The Delegation of Switzerland, supported by the Delegation of Hungary and the Representative of AIPPI, suggested that items (vi) and (vii) of subparagraph (b) be transferred to subparagraph (c), so that the information referred to in such items be optional. Although the Delegations of Spain, Portugal, Italy and the Republic of Korea were initially of the opinion that the aforementioned items should be treated as compulsory information, a consensus was reached on the transfer of items (vi) and (vii) from subparagraph (b) to subparagraph (c).
69. Further to a proposal by the Delegation of Italy and the Representative of FICPI, it was agreed that an indication of the name and address of the representative of the licensee would be added to Rule 20bis(1) as a new item in subparagraph (c).
Rule 20bis(2) and (3)
70. The Delegation of Japan proposed that the “applicable requirements” mentioned in paragraphs (2) and (3) be explicitly identified in those provisions. It was so agreed.
Rule 20bis(4)
71. There were no comments on this provision as proposed in document MM/WG/2/3.
Rule 20bis(5)
72. The Secretariat drew the Working Group’s attention to the fact that the intention of this provision was to enable an Office to declare that the recording of a license was without effect, not the license itself, and that the text would be modified accordingly.
73. Further to a proposal by the Delegation of Spain, supported by the Delegations of the United States of America and Italy, it was agreed to provide for a time limit for the Office of a designated Contracting Party to declare that the recording of a license had no effect in that Contracting Party. Following a suggestion by the Representative of AIPPI, supported by the Delegations of Sweden and Spain, an 18-month time limit was agreed upon.
74. In reply to a question by the Delegation of Hungary with respect to Rule 20bis(5)(b)(i), which pointed out that, under Hungarian law, a license could not be recorded if it was likely to entail confusion for the consumers, the Secretariat stated that the grounds on which the recording of a license could be denied effects in a Contracting Party were a matter left entirely to the law of that Contracting Party.
75. The Representative of AIM commented that a refusal on purely formal grounds to recognize the effects of a license should not be final. The Representative of AIPPI asked that it be made clear in the Notes that would accompany the proposal that such a refusal on formal grounds should always be open to re-examination.
Rule 20bis(6)
76. The Delegation of China noted that this paragraph excluded the possibility for a Contracting Party to make the declaration referred to therein after the date on which this rule came into force or after the date on which the said Contracting Party became bound by the Agreement or the Protocol. The Representative of AIPPI, noting that, as evidenced by paragraph 43 of document MM/WG/2/4, the proposed Rule 20bis(6) was conceived as a “no-roll-back” provision, drew attention to the fact that a Contracting Party whose legislation provided for the recording of licenses could, as a result of a change in its law, subsequently cease to provide for such recording and could therefore wish to make a declaration under this paragraph at a later date.
77. Taking the foregoing observations into account, and also in order to make it clear that Contracting Parties whose law did not provide for the recording of licenses could declare that the recording of licenses in the International Register had no effect on their territory, it was agreed that paragraph (6) would be re-drafted (as reflected in Annex I) in order to cover all situations. The Working Group also agreed that the intent and scope of paragraph (6) would be clarified in the Notes accompanying Rule 20bis in the document to be submitted to the Assembly of the Madrid Union.
78. The Representative of ICC and FICPI and the Representative of INTA and LES expressed support for Rule 20bis since it would greatly simplify the procedures to record licenses with effect in several countries. The Representative of AIM asked that it be made clear in the Notes that would accompany these proposals that the sole purpose of Rule 20bis was to enable holders or licensees to record licenses if they so wished and did not introduce any obligation to do so.
79. The Secretariat drew attention to the fact that the terminology of Rule 24(1)(a) would be aligned with that of Rules 1(xxvibis) and 25(2)(a)(iv) and that the wording of the final sentence of paragraph 5(c) would be reviewed.
80. This provision was approved by the Working Group as proposed in document MM/WG/2/3.
Rule 27(4)
81. The Working Group agreed to provide for an 18-month time limit for an Office to declare that a change in ownership had no effect.
Rule 27(5)
82. Following a suggestion made by the Delegation of Japan, it was agreed to add at the end of paragraph (5)(a) a new sentence explaining the effects of a declaration under this provision.
83. The Working Group agreed to provide for an 18-month time limit for the Office of a designated Contracting Party to declare that a limitation had no effect.
84. Regarding the time limit for correction provided for in Rule 28(4), the Delegations of Hungary, France, Germany, Spain, Portugal and Greece favored or declared that they could accept a time limit of nine months, while the Delegations of Japan, Denmark, the United Kingdom, Australia, the Republic of Korea and the Representative of AIPPI favored a time limit of six months and the Delegation of Italy a time limit of 12 months.
85. Taking all views into account, the Working Group agreed that a time limit of nine months would be retained on the understanding that the International Bureau would keep the matter under review with a view to proposing a reduction of the time limit to six months in the future if experience showed that six months were sufficient.
86. This provision was revised to take account of additional matter to be published and changes in the numbering of provisions.
87. The Delegation of Australia thanked the Secretariat for its proposal in paragraph (3). This would enable Australia to set amounts of individual fees which ensured parity of treatment between applicants designating Australia through the international system and applicants for national registration. It was Australia’s intention in taking the initiative of this proposal to encourage the use of the Madrid Protocol.
88. In reply to a question from the Delegation of Ireland, which mentioned that its country was in the final stages of ratification of the Protocol, the Secretariat indicated that a notification under Rule 34(3)(a) would take effect immediately unless a later date was specified in the notification or, if made before the date of entry into force of the Protocol, with respect to the Contracting Party concerned, on that date.
89. Following a suggestion by the Delegation of the United States of America, it was agreed to transfer paragraph (4) of Rule 34, concerning the modes of payment of fees, to the Administrative Instructions in order to allow account to be taken of more modern methods of payment when that became practicable.
90. This provision was approved by the Working Group as proposed in document MM/WG/2/3.
91. This item was approved by the Working Group as proposed in document MM/WG/2/3.
92. It was also agreed that, throughout the English version of the Regulations, the words “recordal” and “recordals” would be replaced by “recording” or “recordings.”
93. The provisions as proposed in documents MM/WG/2/5 and MM/WG/2/5 Add. and approved by the Working Group appear in Annex III.
94. The Secretariat stated that the proposals approved by the Working Group would be submitted for adoption by the Assembly of the Madrid Union in September 2001. The document for the Assembly would propose that the entry into force of the amendments to the Common Regulations be fixed for April 1, 2002, so that the International Bureau, the Offices and the users would have sufficient time to prepare for the implementation of the changes.
95. As exceptions, however, the document submitted to the Assembly would propose that the amendments to Rule 34 concerning the amounts and payment of fees, and in particular the insertion therein of paragraph (3) relating to the individual fees payable in two parts, as well as the amendments to Rule 7, could enter into force immediately after the adoption of those amendments by the Assembly of the Madrid Union.
96. This report was unanimously adopted by the Working Group on June 15, 2001.
[Annexes follow
(available in Adobe PDF format)]