EXPLANATORY MEMORANDUM ON THE RATIFICATION OF THE
MADRID AND HAGUE SYSTEMS ON THE REGISTRATION OF TRADE
MARKS AND DESIGNS
The World Intellectual Property Organisation (WIPO) administers twenty-two treaties or agreements relating to the regulation of intellectual property rights. Three of the agreements relate to the international registration of industrial property rights in respect of trademarks, patents and designs. These are the Madrid System (incorporating the Madrid Agreement and the Madrid Protocol) concerning the International Registration of Marks, the Patent Co-operation Treaty (POT) for International Registration of Patents, and the Hague System (incorporating the Hague Agreement and Geneva Act) concerning the International Deposit of Industrial Designs.
South Africa acceded to the Berne Convention for the Protection of Literary and Artistic Work, the POT and the Paris Convention, which relates to the registration of Industrial Property Rights, but has not yet ratified the Madrid Agreement or the Madrid Protocol, The Hague agreement and the Geneva Act.
The Hague System seeks to facilitate the establishment and maintenance of design protection through a single international deposit/registration simultaneously in all member countries designated by the applicant. The Hague System consists of the London Act, 1934, the Hague Act, 1960, and the Geneva Act, 1999. Although the Hague Act governs the majority of international deposits, the Geneva Act, which is not yet in force, seeks to make the system more responsive to the needs of users and provide for the participation of regional registration Systems, such as the European Patent Office (EPO) and the African Regional Industrial Property Office (ARIPO). Of the thirty members to the Hague System, thirty-three percent are developing countries. Member countries include important trading partners of South Africa such as Germany, the Netherlands, Italy, Spain and Switzerland.
The Madrid System for the international registration of marks, which came into force in 1995, consists of the Madrid Agreement, 1891, and the Madrid Protocol, 1989. Unlike the Hague System, the Madrid System does not seek to provide international protection for trademarks, rather to facilitate their international registration, maintenance and renewals.The national laws of designated member countries are applicable to trademarks in an international registration. The Madrid Agreement and the Madrid Protocol are independent international instruments and are ratified independently by member countries. Some members have ratified both instruments, whereas others have only ratified the Protocol. The Madrid Protocol is less rigid in. In the period 1990 to 1999, prior to the ratification of the PCT, South Africa received twelve thousand (12 000) patent applications and two thousand (2000) design applications per year. Since ratification of the PCT in 1999, the number of patent applications increased to sixty four thousand (64 000) per year. The Companies and Intellectual Property Registration Office currently receives twenty six thousand (26 000) trademark applications per year. It is envisaged that there will be a surge in the number of applications, as has occurred under the PCT, if the Madrid and the Hague Systems are ratified.
An Increase in the number of applications is accompanied by monetary benefits to CIPRO and the country, an increase in the activities of trademarks and designs, improved cost effectiveness and quicker registration and protection of rights in a number of designated countries using a single registration process.
In terms of 231(2) of the constitution, Parliament is requested ratify the accession to the Madrid and Hague Systems. The Departments of Foreign Affairs and of Justice and Constitutional Development have expressed the view that the instruments do not conflict with the Constitution of South Africa, Act 108 of 1996, nor with intellectual property legislation.