WIPOD – International Trademark System Talks: Transcript of Episode 3

A History of Trademarks: The Birth of the Madrid Agreement

Hi and welcome to International Trademark System Talks, a brand new podcast brought to you by WIPO’s Madrid System Information and Promotion Division. 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.

In our previous episode, we went over the Paris and Rome conferences where a first draft of the Madrid Agreement was discussed.

In today’s episode, we will look at the Madrid Diplomatic Conferences of 1890 and 1891, where the Madrid Agreement was approved. We will discuss today why Madrid, the capital of Spain, became the birthplace of the International Trademark Registration System. We will also tell you all about these conferences, who attended and which states were represented.

Why Madrid? And Why Spain?

Some of you may be wondering why participants in the Rome Conference of 1886 chose Madrid, the capital of Spain for their next session.

Well, at the time of the Rome Conference Spain had enjoyed, an unprecedented period of political stability, for over 11 years, which coincided with the pinnacle of mining, agricultural boom, growing wool industry, and colonial trade.

The development of trademark law created a situation where Spain could actively participate in legal and economic debates such as the international registration of trademarks, as a host of the International Conference.

Madrid was also known for its endless nightlife. It is said that during the late 1890’s, Ortega y Gasset, a famous Spanish philosopher, had advised Valle-Inclán, Spanish novelist known for his bitter social satire:

“Trasnoche usted. Apure todo lo que pueda la noche madrileña. Es ya la única noche que queda en el mundo”

For the translation, "Stay up late. Hurry the Madrid night as much as you can. It is the only night left in the world".

Therefore, it’s not a coincidence that the first trademark registered in Spain, in 1886 was a smoking paper brand known as “El calendario”, “the calendar” again for the translation, yours truly.

The Madrid Conference of 1890

Let’s begin with the Madrid Conference of 1890. The conference was held from April 2 to April 14 of 1890. The International Bureau, which is the predecessor of WIPO as well as the organizer of this conference, was formed by the international secretariat of both Unions of Paris and Berne and headed by Henri Morel, the Secretary General, only assisted by two staff members. Compare that with WIPO today, which now has more 1,500 staff members.

They invited all 14 member states which were part of the Paris Union, at the time of the preliminary organization of the Conference. The States represented in Madrid were Belgium, Brazil, France, Great Britain, Guatemala, Italy, the Netherlands, Norway, Portugal, Spain, Sweden, Switzerland, Tunisia, and the United States of America. Germany, although not yet a member of the Paris Union, was also represented.

The Spanish Intellectual Property Office published on Twitter last year, a picture of a historical act in which the Ministry of Development informs the Royal Academy of San Fernando of the cession of its Assembly Hall, so that "the diplomatic delegates of the conferences for the protection of Industrial Property" could hold the session. So, the conference was held at the Royal Academy of San Fernando, a Fine Arts Academy, which you can still visit in the Alcala Street, in Madrid. Interesting fact, six years after the meeting, in 1897, someone you may know as Pablo Ruiz Picasso, 16 years old at the time, spent a year studying realistic painting in this same venue. He then decided that the teachings of this Academy were not his cup of tea.

Back to the Conference on the Trademark System. This conference was a private meeting. While the initial discussions started on the afternoon of Wednesday the 2nd of April, 1890, the sessions would not start until that following Saturday. Firstly, Segismundo Moret, the Spanish Government delegate, who had to preside the events, could not attend. It is not clear if it was due to an illness or because he was just “out of town”, according to newspapers. Therefore, the Conde de San Bernardo took his place until the 7th of April. The Conde de San Bernardo was a Spanish Diplomat and a Politician who would become mayor of the city of Madrid, two years later.

The conference adopted rules and procedures, prepared by the Spanish Administration and the International Bureau, to govern itself. French was chosen as the official language. The base for negotiation was the proposal made by participating states.

As a reminder, during the Diplomatic Conferences different documents were reviewed. The Madrid Conference is not an exception and the Madrid Agreement was not the only document discussed. Four other documents were addressed, namely:

  • a draft agreement concerning the prevention of false indications of source;
  • a draft protocol on the interpretation and application of the Paris Convention;
  • a draft protocol on the definitive establishment of the International Bureau, and,
  • a draft agreement concerning the international registration of marks, together with draft Regulations applicable to it.

The discussion on the draft Agreement regarding the international registration of marks began at the fourth session of the Conference following the composition of the Working Committee. A commission was decided during the meeting of April 5.

The commission formed by France, England and Switzerland was created to prepare the several topics to be discussed. It agreed on meeting every morning at 10 a.m., while the conferences would begin at 2 p.m.

Deliberations were private, and it was decided that only the definitive agreements would be made public.

In the fifth session held on the afternoon of Thursday, April 10, 1890, a more detailed discussion led to the adoption of an agreed text. This was the first version of the Madrid Agreement.

However, the conference, was also accompanied by social events. Queen Victoria’s ambassador conveyed all member states’ representatives, as well as the Spanish Development and State ministers to a sumptuous banquet. The event was even covered by the international press such as The Times and The Standard.

We already mentioned that during this conference there was a discussion regarding the denomination of origin and its legitimacy. According to some newspapers, this conference was of the utmost importance for all participating states, in particular for Spain.

It was organized by the Marquis de la Vega de Armijo, in accordance with the International Office in Berne. Regarding the issue of denomination of origin, newspapers reported that Havana tobacco manufactured in Germany or Jerez wines made in France could be prosecuted as counterfeit or fraudulent, which would be extremely beneficial to the Spanish Industry. As a reminder, Cuba was part of the Spanish Crown at that time. It was also discussed whether this agreement could be applicable to the colonies of the various participating states.

The conference also addressed which competences should be granted to the courts of the various member states to resolve issues in relation to the denomination of origin.

They also discussed the reciprocal independency of the patents expedited in the different states. In other words, whether goods could be refused entry in a country, in case a patent for an identical product was established in that country. To simplify, for example inventors would have to manufacture and use their products in Spain, if they want their patents to be protected in that country.

This led to discussions about how inventors could protect their inventions in international exhibitions. One of the proposed solutions was the issuance of legal protection certificates for inventors. Remember the exhibition of Vienna where inventors refused to expose? We talked about it in our two previous episodes.

On April 13th, on the very last evening before the end of the conference, the regent queen María Cristina, mother of the future King of Spain Alphonse XIII, offered a gala banquet to all the delegates of the conference. More than 1000 people attended the event, including Ministers, ex-ministers, lords, diplomats and army generals, among others. After all, this was an important event that put Spain in the spotlight of the International Scene.

This is the reason why the Madrid conference was extensively covered by the press, appearing in daily newspaper articles. This is remarkable, considering newspapers at that time were only four pages long on average. Can you imagine that?

Madrid Conference of 1891

As mentioned at the beginning of this episode, not one but two conferences were held in Madrid.

The second one took place one year later, in April 1891. The purpose of this conference, was to ratify and sign the Agreement approved in 1890. On April 14, 1891 the Signature session of the Conference took place to sign not only the Madrid Agreement but the Regulations related to the Agreement. It was signed during this session by the delegates of Belgium, France, Guatemala, Italy, the Netherlands, Portugal, Spain, Switzerland and Tunisia. They establish a six-month period to ratify the treaty in Madrid. I mean, six months is short to ratify a treaty today, so imagine back then without internet. The date had to be postponed, to June 15, 1892, when five of the States ratified the Agreement. Those states were Belgium, Spain, France and Tunisia, as well as Switzerland, making them the first historical members of the Madrid System.

Based on today’s episode we hope you can better understand why it is called the Madrid Agreement Concerning the International Registration of Marks.

In this episode, we went through the series of events that led to the ratification of the Madrid Agreement.

In the next episode, we will take an in-depth look at the Madrid Agreement and its evolution from 1891 to nowadays. See you next time on International Trademark System Talks. Olivier Pierre signing off.