WIPOD – International Trademark System Talks: Transcript of Episode 8

Washington 1911 to Stockholm 1967; Fine-tuning the Madrid Agreement (Part 1)

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.

Introduction

Welcome to episode 8 of our series where we explore the evolution of the Madrid System. In our previous episode, we examined the influential Brussels Conference, which saw the Madrid Agreement undergo significant changes.

To recap briefly, these amendments included streamlining the international application process, revising the grounds for refusal by designated countries, changing transfer of entitlement procedures, and adjusting registration fee rates - all designed to enhance the system's efficiency for its members and trademark owners. The conference further introduced new rules regarding the substitution of national registrations with international ones and the request for official documents related to international trademarks, exemplifying a commitment to an ongoing improvement of the International Trademark System.

As we move forward, we'll delve deeper into the evolution of the Madrid System, examining the influence of later diplomatic conferences and the pivotal milestones leading to its 1967 Stockholm revision.

Priority rights

The fundamental principles of national treatment and the priority right held significant value for the evolution of the international registration of trademarks under the Madrid Agreement. A fitting revision was the definition of a time frame for the priority right across the Union, as set out in Article 4 of the Washington Revision of 1911 of the Agreement. This right allowed applicants or their legal successors to apply for protection in other member countries, based on an earlier legitimate trademark application in one member country, within a defined time frame (as per the 1911 text, within four months following the date of filing in the country of origin). Registration in these countries could then date back to the original filing date. Thus, the applicant could claim priority over any subsequent applications for the same trademark filed after his initial application in any member country.

Concept of country of origin

The initial 1891 Act of the Madrid Agreement required trademark owners to file through an intermediary known as the "country of origin," although this term wasn't clearly defined. This process implied that the country of origin was the location of the applicant's primary establishment, as generally inferred from Article 6 of the Paris Convention. However, this wasn't expressly stated in the Madrid Act of 1891.

Problems identifying the country of origin surfaced by the Hague Conference of 1925, particularly with enterprises operating in multiple countries who chose their country of origin arbitrarily for benefits such as avoiding delays, higher fees, or potential rejection of their national mark.

To resolve these problems, the Hague Act of 1925 formally linked the "country of origin" definition to Article 6 of the Paris Convention, stating that it is the country where the applicant's principal establishment is located. This is similar to the provision currently in Article 1(3) of the Stockholm Act.

The Stockholm Act of 1967 further refined this definition by introducing a "cascade" approach to determine a single country of origin. The process first identifies the country of origin as the Madrid Union member where the applicant has a significant and active commercial or industrial establishment. If no such establishment exists, the country of origin defaults to the Madrid Union member where the applicant is domiciled. If neither condition is met, the country of origin finally becomes the Madrid Union member country of the applicant's nationality.

Let me remined you that, the "cascade" entitlement principle no longer applies in the Madrid System, and applicants are now free to choose their entitlement and Office of origin based on a real and effective industrial or commercial establishment, domicile, or nationality.

Procedure to achieve an international registration

The original Madrid Agreement of 1891 didn't outline the procedure for international registration applications, merely implying that marks should be submitted and immediately registered at the International Bureau. The Hague Conference of 1925 filled this gap, introducing provisions in Article 3 that clarified the process for obtaining an international registration. Specifically, it stated that the Office of the mark's country of origin must confirm the international application's details match the national registration. This was done to formalize to trademark owners the reasons why they need to coordinate with their country's Administration for the international registration process.

More significantly, the Nice Act of 1957 incorporated a change in Article 3(2) that made the use of the classification system for goods and services from the Nice Agreement mandatory for international trademark applications. The adoption of this classification system, where each good or service is categorized into a specific class, simplified the trademark registration process significantly. The idea was first proposed in 1886 but failed, yet by 1957, it was evidently needed due to a growing trend of registering marks for unrelated goods or services. This habit of filing for goods and services that went beyond the scope of the mark added unnecessary burdens to administrations and created obstructions for other businesses that needed protections for these goods at the international level. The implementation of the classification system, along with an additional fee for every class beyond the third, was designed to discourage needless registrations and streamline the process for administrations.

Designation of contracting parties in which protection is sought

The original Madrid Agreement of 1891 stipulated automatic registration of trademarks in all member countries, regardless of whether or not the owner intended to operate in them. This practice was critiqued at the London Conference of 1934, notably by the Netherlands Delegation, due to the unnecessary burden it placed on national Administrations to register marks for countries not of interest to the applicant, and the resultant unnecessary oppositions users had to navigate. The Netherlands Delegation proposed that applicants should specify desired countries for protection with an adjusted international fee. Although this suggestion was initially deemed too radical and postponed for further study, it sparked the exploration of various drafts focused on the concept of territorial limitation for international registrations, none of which achieved full approval.

Ahead of the Nice Conference of 1957, the French Administration and the International Bureau revisited the idea of territorial limitation, proposing its application be optional rather than mandatory. This idea was accepted, primarily due to concerns that the automatic system led to numerous denunciations of the Madrid Agreement and could hinder the growth of the Madrid Union. The resolution led to the establishment of Articles 3bis and 3ter in the Nice Act of 1957, largely preserved in the Stockholm Act of 1967. These articles allow any member country to determine if an international registration's protection applies to it and set the process for designating such a country. This designation can be made during the international application or following international registration via an official form, referred to as "later designation" or "subsequent designation".

Refusal of protection by designated contracting parties

The Swiss Delegation's initial proposal for the International Registration System at the 1886 Rome Conference aimed to give absolute effect to such registration, preventing contracting countries from denying protection unless invalidated by a court. This was contested by countries like Sweden and Norway as they had begun to examine marks for conflicts before granting protection.

To resolve this, the 1890 Madrid Conference proposed a one-year period for each contracting country to refuse protection to an internationally registered mark. However, the connection between the right of refusal under the Madrid Agreement and the Paris Convention wasn't explicitly stated. To clarify this link, a Final Protocol was adopted in 1891 and later incorporated into the Madrid Agreement itself during the 1900 Brussels Conference. This stated that refusals could only be based on grounds valid under the 1883 Paris Convention for national registrations. Moreover, two significant amendments were introduced at the 1934 London Conference. The first related to the disclosure of reasons behind a country's refusal to protect a mark, leading to the establishment of Article 5, paragraph (4) of the London Act of 1934, which required the International Bureau to communicate the reasons for refusal to concerned parties upon request. The second amendment addressed fairness in national procedures concerning mark invalidation, following complaints about inadequate opportunities for owners to defend their rights. As a result, Article 5, paragraph (6) of the London Act of 1934 was implemented, stipulating that an international mark cannot be invalidated without giving the owner sufficient opportunity to defend their rights.

Dependency

The Madrid Agreement of 1891, under Article 6, created an interdependence between national and international trademarks, leading to the loss of legal protection in the Madrid System Members if the “basic” national trademark was invalidated. However, this rule was criticized at the Nice Act of 1957 as conflicting with the Article 6D of the Paris Convention's London Act of 1934, which considered trademarks registered in different countries as independent.

The French delegation and the International Bureau proposed a removal of this total dependence at the Nice Conference, but this was viewed as too radical, threatening the Madrid Agreement's key advantage of having a single procedure for all trademark processes. It would have required separate invalidation procedures in each contracting country, which would upset the Madrid Agreement's benefits. As a result, a compromise, known as the 'central attack' concept, was reached. According to this, an international registration becomes independent after five years. This rule, now in Article 6(2) of the Stockholm Act of 1967, maintains the single procedure benefit of the Madrid Agreement while allowing a limited period of dependence on the national registration.

Conclusion

In this episode, we’ve seen some of the revisions of the Madrid Agreement that have introduced several significant changes to the initial text of the 1891. We've sought to highlight some the most critical amendments to the Madrid Agreement text, from the conferences of Washington to Stockholm. In upcoming episodes, we will focus on additional revisions and their impact on the Madrid Agreement in the 20^th century. Later we will address the final revision of the Madrid Agreement in 1979 and the inception of the Madrid Protocol.

Outro

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.

See you next time on International Trademarks System Talks. Olivier Pierre out!