Manuela Bruscolini of the MARQUES International Trade Mark Law and Practice Team has written a paper on how the Madrid System is evolving to meet the needs of members and be more flexible and effective.

The paper is available to download on the Team’s website here (MARQUES log-in required).

Each year, the Madrid System Working Group meets in Geneva. MARQUES plays an active role in these meetings given its observer status at WIPO. The next meeting is from 7 to 11 October 2024.

Since a Road Map for improvements was adopted several years ago, there have been discussions on core issues: replacement, transformation, new types of marks, limitations, a harmonized time limit to reply to provisional refusals, a possible reduction of the dependency period and corrections.

The paper summarises the latest plans in the following areas:

• Minimum time limits for holders to respond to provisional results: entered into force on 1 November 2023
• Simplification of schedule of fees
• Additional languages: specifically the addition of Arabic, Chinese and Russian: the Secretariat is preparing detailed documents for the next session
• Reduction of dependency period: there is a discussion on reducing this from five to three years – but this would need to be agreed at a Diplomatic Conference
• Practical functioning of the Madrid System – including examination practices of the International Bureau; declarations by member offices – exclusion of subsequent designations; and individual fees payable in two parts
• Process improvements – including opposition procedures, use of the mark in commerce, scope of protection of designations; and training.

The MARQUES International Trade Mark Law and Practice Team will continue to monitor developments and provide input at the next Working Group meeting.

If you would like to know more about this topic, or have any input for the Team, please contact Manuela Bruscolini or another Team member.

This article first appeared in the July 2024 issue of the HouseMARQUES newsletter.