The MARQUES International Trademark Law and Practice Team, represented by Tove Graulund, Gavin Stenton and Jessica Le Gros, participated in the (postponed) Madrid Working Group meeting last week. The meeting was a hybrid virtual and in-person meeting, which worked well, with live simultaneous translation and contributions both remotely and in the meeting room.

The Madrid Working Group meeting is the forum by which Contracting Parties (generally national trade mark offices) and official observer organisations such as MARQUES work to improve the International Trade Mark system.

There were a number of important topics on the agenda including partial replacement, new means of representation of marks (and the removal of the requirement of graphic representation when filing an IR), and changes to the Regulations to allow more streamlined electronic communications with users and extensions of time limits in force majeure situations.

There were also detailed discussion on the feasibility of introducing Arabic, Chinese and Russian languages as working languages of the Madrid system.

MARQUES submitted a paper on these topics prepared by the International Trade Mark Law & Practice team, which advocates for improvements to the system from the perspective of brand owners.

MARQUES also contributed to a joint paper regarding provisional refusals, urging that the date of the deadline to respond to a provisional refusal be clearly stated on the communication from the International Bureau of WIPO to the holder of the IR. This joint paper was also signed by CITMA, AIM, ECTA and APRAM.

This is an important topic for brand owners as it is key to have clarity over not only how a deadline to respond to a provisional refusal is calculated, but also the specific date by which a response must be submitted or the holder risks losing their right.

During the meeting, the Working Group agreed that partial replacement should be implemented into the system, which will allow brand owners the option to use replacement to streamline the management of their trade mark portfolios.

Report provided by Jessica Le Gros, Co-Chair of the Team