Survey of Office Practices on Replacement

Article 4bis(1) of the Madrid Agreement Concerning the International Registration of Marks and of the Madrid Protocol Relating to the Madrid Agreement provide that a mark that is the subject of a national or regional registration in the Office of a Contracting Party is, under certain conditions, deemed to be replaced by an international registration of the same mark. Article 4bis(2) of the Agreement and of the Protocol provide that the Office in whose register the mark is recorded, is required, upon request, to take note in its register of the international registration. Rule 21(1) of the Common Regulations under the Agreement and the Protocol further provide that where, following a request by the holder, an Office has taken such a note in its register, that Office is required to notify the International Bureau accordingly.

At the first session of the Working Group held in Geneva in July 2005, it was proposed that the drawing up of model provisions regarding replacement could introduce a significant improvement in the functioning of the Madrid system, in terms of certainty and harmonization (see document MM/LD/WG/1/3, paragraph 141).

At its thirty-sixth session (September-October 2005), the Assembly of the Madrid Union took note of the conclusions and recommendations of the first session of the Working Group and requested the Director General to convene a further session of the Working Group to, inter alia, consider the preparation of such model provisions (see document MM/A/36/1, paragraphs 16 and 18 and document MM/A/36/3, paragraph 15).

For the purpose of facilitating the discussions of the second session of the Working Group, the International Bureau submitted to the Working Group a set of draft model provisions for its consideration (see Annex I of document MM/LD/WG/2/8). At the conclusion of the second session of the Working Group it was recommended that the Assembly of the Madrid Union should encourage the International Bureau to make available to the Offices of Contracting Parties such model provisions. These model provisions are now available to Offices on WIPO's website.

These model provisions, however, relate only to the procedure of note taking envisaged by Article 4bis(2) of the Madrid Agreement and of the Protocol. They do not address the more fundamental aspects of replacement for which an informal sample study by the International Bureau had revealed important divergences of practices and of interpretation amongst the Offices of Contracting Parties. The Working Group thus recommended that the Assembly extend its mandate in order to continue the preparatory work aimed at simplifying and harmonizing the practices of the Offices of Contracting Parties on the issue of replacement (see document MM/LD/WG/2/11, paragraph 170).

At its thirty-seventh session (September-October 2006), the Assembly of the Madrid Union took note of the conclusions and recommendations of the second session of the Working Group and requested the Director General to convene a further session of the Working Group in order to, inter alia, continue the preparatory work aimed at simplifying and harmonizing the practices of the Offices of the Contracting Parties with regard to replacement, and to report back to the following session of the Madrid Assembly with respect to progress on its discussions (see document MM/A/37/4, paragraph 13(c)(ii)).

At its third session, the Working Group agreed to the establishment of an open Internet Forum to discuss the question of replacement during the second part of 2007. It further agreed that the International Bureau would recall the objectives of replacement in the form of a document to be posted on the forum website and that it would conduct a survey of Office practices concerning replacement (see document MM/LD/WG/3/5, paragraph 69).