Hello and welcome to International Trademark System Talks, the podcast brought to you by WIPO’s Madrid System Information and Promotion Team. This podcast will give you insights into the International Trademark System, also known as the Madrid System.
My name is Olivier Pierre and I will be your host.
This is episode 9 where we explore some of the most significant changes that the revision conferences have brought to the original texts and principles of the Madrid Agreement.
Just as a reminder, in our last episode, we delved into the significant changes that the revisions brought to the Madrid Agreement of 1891. We highlighted the most critical amendments to the text, such as: the priority rights, the concept of country of origin, the designation of contracting parties, dependency, and more. Do not hesitate to revisit episode 8 of our series to freshen up on these concepts.
In today’s episode, we will continue our examination of the Madrid Agreement, focusing on modifications related to the duration of protection and the possibilities of transferring international registrations from the Washington to the Stockholm Acts. Additionally, we will explore the story of the Madrid Agreement throughout the tumultuous 20th Century and two World Wars, leading to the inception of the Madrid Protocol.
According to the Madrid Agreement, the initial term of protection for the international registration has always been 20 years, with provisions allowing for unlimited extensions. As you should know, the term is now 10 years.
The most significant changes over time in the international system have pertained to renewals. Originally, under the 1891 Madrid Agreement, the renewal procedure was the same as the application procedure, meaning that each renewal was notified to all contracting countries, who then had the right to refuse the renewal.
However, at the Nice Conference of 1957, in line with the principle of limited dependence, the renewal process was amended. It allowed for renewals to be completed merely by paying the basic fee, and if required, the supplementary and complementary fees, according to Article 7(1) of the Act of Nice of 1957. The previous requirements for a preliminary renewal in the country of origin and presentation of national certification were abolished. Since the international registration would have reached independence by this point, renewals could be done directly through the International Bureau, eliminating the need to go through the national Administration.
The Madrid Agreement of 1891 only addressed the eligibility to benefit from the international trademark registration system at the time of filing the registration. It did not cover the issue of transferring a registered mark under the Madrid System. This matter was first addressed at the Brussels Conference in 1900.
The Brussels Act introduced detailed provisions about transferring registered marks, including a rule that no registered mark could be transferred to a person not established in one of the signing countries. This provision was later included in the Stockholm Act as Article 9bis(2), which states that “no transfer of a, mark registered in the International Register for the benefit of a person who is not entitled to file an international mark shall be recorded.”
The 20th Century has definitely been an eventful one at the scale of our planet, to say the least. It would be impossible for me to list everything that happened over a period of 100 years, but you can see where I’m going.
The 20th century experienced, and I will give you a non-exhaustive list here, 2 World Wars, a Cold War, decolonization, nationalism, globalization, new inter-governmental organizations, advances in telecommunications, transportation, and technology. And that’s just to name a few. With all these changes and disruptions to the established order of things, it is interesting to see how the Madrid Agreement managed to, not only survive, but grow exponentially in it use and memberships.
World War I (1914-1918) marked the beginning of a new era in international industrial property rights. During this time, industrial property became a crucial instrument of conflict and economic cooperation among major powers. While this had the potential to weaken multilateral industrial property treaties like the Madrid Agreement, the involvement of neutral countries and the multilateral nature of the Paris Union ensured its stability.
World War II (1939-1945) had a profound impact on international industrial property law. The war reshaped enforcement, cooperation, and legislation in many ways, influencing the development of industrial property rights. Changes in government and membership status of countries affected their participation in industrial property agreements. The enforcement of agreements was disrupted due to communication breakdowns and lack of cooperation among warring nations. However, post-war efforts aimed at rebuilding economies, fostering innovation, and encouraging international cooperation led to revisions of the Madrid Agreement in 1957 (Nice) and 1967 (Stockholm).
The establishment of the World Intellectual Property Organization (WIPO) in 1967 can be viewed as a long-term effect of the post-war international order.
As we mentioned in our previous episode, Belgium, Brazil, France, Italy, the Netherlands, Portugal, Spain, Switzerland, and Tunisia were among the members of the Original texts of 1891. Between the adoption of the Madrid Act in 1891 and the Stockholm Act of 1967, the number of memberships gradually increased as follow:
International treaties like the Madrid Agreement are influenced by many complex factors, including political, economic, and social changes within each country. These factors also encompass the impacts of two World Wars. Nevertheless, we have observed that:
As we can see from what we have covered in the past two episodes, the various revision conferences have brought about a lot of changes to the Madrid Agreement, fine-tuning it and making it more practical for member countries as well as actual users.
These revisions also paved the way for more accessions in memberships and therefore expanding its geographical coverage. This virtuous circle, with more practicality and wider coverage, made the Madrid Agreement even more attractive to all the parties involved.
With the challenges of the 20th century, namely the wars, the breakdown in communications between countries, the reopening of talks, the accessions and defections, and the reopening of communications have shown how resilient those who believed in the Madrid Agreement have been throughout this period.
With all these elements in consideration, the stage was therefore perfectly set for the birth of the Madrid Protocol in 1989.
As I have hinted in my last sentence, in our next episode we will have a close look at the inception of the Madrid Protocol in 1989 and its transformative features, which is the treaty that is in force today, as we speak.
This takes us to the end of today’s episode. Thank you for listening and if you have any suggestions or any topic you want us to discuss, please let us know. Subscribe to our podcast to be notified of new releases.
This episode was prepared with Hojjat Khademi and Claire Rigaud. Recorded, mixed, and musically engineered by Christophe Ioannitis-McColl.
We would also like to take this opportunity to wish our listeners and your loved ones a Happy New Year 2024. See you next time for the next episodes of International Trademark System Talks. Olivier Pierre out!