WIPOD – International Trademark System Talks: Transcript of Episode 7

The First Revision of the Madrid Agreement at the Brussels Conference of 1900

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.

Welcome to Episode 7 of the Madrid System podcast. In this episode, we will discuss the first of the six revision of the Madrid Agreement Concerning the International Registration of Marks that took place in Brussels, Belgium in 1900. These revisions added more detail, sophistication, and clarity to the operation of the legal mechanism.

Main Elements of the Madrid Agreement of 1890

In Episode 4 of our Madrid System podcast, we have discussed the seven main elements of the Madrid Agreement of 1890. These elements included the existence of a basic trademark right, the entitlement to seek international trademark registration, filing of the application and registration, designation of countries, refusal of protection by designated contracting parties, dependency of the international registration to the national trademark, and duration and renewals of the international registration.

The Paris Convention, in its article 14, contained provisions that stipulated that the Madrid Agreement should be reviewed periodically for improvements in relation to its real life use and application. In this context, we will explore the revision conferences that took place in order to make the Madrid Agreement even more effective for participating countries and users.

The first revision of the Madrid Agreement in 1900 in Brussels brought amendments concerning the entitlement to seek international registration and the refusal of protection by designated Madrid System Member. It also changed the registration fees.

The entitlement to File International Trademark Applications

Originally, the Madrid Agreement allowed two groups of people to use its system to register their trademarks internationally. The first group was made up of citizens or residents of any of the countries that had signed the agreement. The second group included people from countries that were not part of the Agreement, but who lived or had businesses in one of the member countries of the Paris Union. However, the rules for the second group were changed at the Brussels Conference of 1900. From then on, people from non-member countries could only use the Madrid Agreement if they had a real and effective business presence in one of the Madrid Union countries.

Entitlement of the Transferee to Be the New Holder

The first revision conference also dealt with the question of transfers of ownership of a trademark that was the subject of an international registration. Article 9bis of the Brussels Act added extensive provisions on the transfer of marks, including the rule that no transfer of a mark registered in the International Register could be effected for the benefit of a person not established in one of the signatory countries.

Refusal of Protection by Designated Contracting Parties

When the idea of an international trademark registration system was first proposed in 1886, the plan was for the registration to be automatic and not subject to refusal by countries that signed the agreement. However, Sweden and Norway objected to this because they wanted to be able to examine trademarks for conflicts with existing national trademarks. In 1890, a new proposal was made that allowed each country a one-year time limit to refuse protection to any trademark registered internationally. However, this proposal didn't mention the Paris Convention of 1883, which had introduced limitations on trademark registration. To make things clearer, a Final Protocol was added to the Madrid Agreement, which explained that the right to refuse protection under the agreement was limited by the Paris Convention. This clarification was included directly in the article 5 of the Agreement at the Brussels Conference of 1900, and the Final Protocol was removed. Any refusal of protection could now only be based on the same grounds that applied to trademarks registered nationally under the Paris Convention of 1883.

Substitution of a national registration with an international registration

Article 4bis states that if someone has already registered a trademark in one or more countries, and then registers the same trademark with the International Bureau (which existed before WIPO), the international registration will replace the previous national registrations. However, this won't affect the rights that the person had with the national registrations. We could consider it the ancestor to the current replacement procedure.

Registration Fees

The Madrid Agreement established a “Madrid Union”. It’s primary source of revenue is the payment of registration and renewal fees by users of the international trademark system. The most significant fee is the basic fee for the registration or renewal of a trademark, which has remained unchanged since its inception. In 1891, it was established at a flat rate of 100 Swiss If we were to adjust the 100 Swiss Francs to today’s value considering inflation, it would be equivalent to roughly 1070 Swiss Francs in 2023, according to the Swiss Consumer Index[1]. T. We could say that, technically it is cheaper to file now than back in the days right?

The Brussels Act of the Madrid Agreement, also introduced a favorable multiple deposit system that allowed a single depositor to register additional marks simultaneously with a first mark, all at a discounted rate. Additional trademarks were registered at half the cost of the basic registration fee. This was the “buy one get 50% off” promotion of the Madrid System at that time.

The possibility to request the international registration documents

Participants also decided to introduce an Article 5bis to the Agreement, allowing anyone to request the International Bureau a copy of the entries recorded in the Register in relation to a given trademark for/against a fee.

The Rate of International Trademark Registrations after the Act of Brussels of 1900

Following the implementation of the Madrid Agreement in 1892, the number of international trademark registrations steadily increased from 76 in 1893 to 368 in 1900, averaging to 299 registrations per year.

Nonetheless, with the adoption of the Brussels Act in 1900, the Madrid System Members experienced a significant surge in international registrations. From 1900 to 1911, when the Washington Act was approved, the average annual registrations skyrocketed to 845, representing a staggering 300% increase in international registrations.

Participating Countries of the Brussels Conference

We had:

  • Belgium, Brazil, Spain, France, Italy, the Netherlands, Portugal, Switzerland and Tunisia, all concluded the Brussels Act of 1900.

Members of the Madrid Agreement after Approval of the Brussels Act of 1900

Let’s look at the members of the Madrid Agreement after the approval of the Brussels Act of 1900.

  • Belgium and Brazil who ceased to be a member in 1934, while Mexico ceased to be in 1943.
  • Spain, France, Italy, the Netherlands, Portugal, Switzerland, and Tunisia were the member of the original Act of Madrid Agreement in 1889.
  • The newly created Republic of Cuba became the member of the Madrid Agreement in 1905, but ceased to be a member in 1932, and later rejoined in 1989). Austria - Hungary joined to the Brussel Act in 1909[2].

Closing Speech

In this episode, we delved into the amendments made to the Madrid Agreement during the Brussels Conference. These changes aimed to simplify the provisions of the Agreement with respect to the entitlement to file an international application, transfer of entitlement to the new holder of an international registration, grounds for refusal of the international application by designated countries, and registration fee rates. Notably, these modifications were designed to support Madrid System members and trademark owners in making the International Trademark System more efficient for all the parties involved. Additionally, the conference attendees introduced fresh regulations regarding the replacement national registrations with international registrations and the possibility to request official documents related to international trademarks.

In our upcoming episodes, we will explore the evolution of the Madrid System through the other diplomatic conferences that took place.

Credits

  • Hojjat Khademi
  • Olivier Pierre
  • Christophe Ioannitis-Mccoll
  • Benoît Apercé