PROTOCOL RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS, DONE AT MADRID ON 27 JUNE 1989
NATIONAL INTEREST ANALYSIS
Date of Proposed Binding Treaty Action
It is proposed that under Article 14(1)(a) Australia accede to the Protocol by depositing an instrument of accession with the Director General of the World Intellectual Property Organization (WIPO) (Article 14(2) and (3)) as soon as practicable after 5 December 2000. Under Article 14(4) of the Protocol, the Protocol would enter into force for Australia three months after the date on which accession has been notified by the Director General. The Protocol entered into force generally on 1 April 1996.
It is proposed in accordance with Article 5(2)(d) that Australia will make a written declaration at the time of accession to the Protocol extending the time limit from one year to 18 months to refuse protection of a trade mark (based on examination or opposition) to the International Bureau ('the IB') (Article 5(2)(a) and (2)(b)).
Under Article 14(5) any State may, when depositing its instrument of accession to this Protocol, make a declaration denying protection to any Protocol registration that predates Australia's date of entry into force of the Protocol. Australia does not intend making such a declaration.
Date of Tabling of the Proposed Treaty Action
10 October 2000.
Reasons for Australia to take the Proposed Treaty Action
Securing access to export markets is considered a priority by many traders in goods and services. To obtain a competitive edge for business many traders are relying increasingly upon the use of trade marks. A trade mark is a sign used in the course of trade to distinguish goods or services. Thus, effective trade mark protection forms a vital part of the strategy to promote goods and services in overseas markets. However, to obtain trade mark protection in another country can involve significant costs and administrative burdens to traders. A system which simplified procedures and reduced costs would offer benefits for Australian trade mark owners.
The Protocol under consideration forms part of an efficient and streamlined international trade mark registration system known as the `Madrid System' and made under the auspices of the World Intellectual Property Organization. The Protocol is based upon the Madrid Agreement Concerning the International Registration of Marks of 14 April 1891. The Agreement was revised at Brussels on 14 December 1900, at Washington on 2 June 1911, at The Hague on 6 November 1925, at London on 2 June 1934, at Nice on 15 June 1957, and at Stockholm on 14 July 1967. Countries may become Party to the Madrid Agreement or the Protocol or both. It is intended that Australia seek to accede only to the Protocol. The Protocol incorporates a number of modifications to address issues which have presented obstacles to Australia becoming a Party to that Agreement and participating in the Madrid System. The registration system established under the Protocol would offer significant improvements over present arrangements for Australian trade mark owners seeking protection of marks in overseas markets.
The Protocol provides that a trade mark owner of a Contracting Party to the Protocol may secure protection of the mark in other Contracting Parties by filing an application for international registration with the International Bureau of the World Intellectual Property Organization. International registration would operate for ten years with an option for renewal for a further ten years. The Protocol provides also that the protection to be accorded to an internationally registered trade mark by other Contracting Parties is to be the same as if the mark had been registered by the Office of that Contracting Party.
Presently, in order to protect trade marks in overseas markets an Australian trade mark owner must register and maintain trade mark protection in the trade mark office of each particular country where protection is required. This may involve filing multiple applications in foreign languages and the payment of significant government and legal fees. By contrast, if Australia were to become a Party to the Protocol, Australian trade mark owners would be able to file single applications in Australia in English, and pay fees to the one office to obtain trade mark protection in other countries that are Parties to the Protocol. This procedure would reduce significantly the administrative burdens and costs associated with overseas registration for Australian trade mark owners.
As well as providing a simple mechanism to apply for and obtain international registration, the Protocol also has a number of advantages in the maintenance process. These include allowing for a single request to renew registration and record changes in ownership.
A number of Australia's leading trading partners already participate in the international registration system under the Protocol. Indeed, nine of Australia's top twenty trading partners are Parties to the Protocol. These include Japan, China, Singapore and a number of European Union countries. Others, including the United States and the Republic of Korea, are taking steps towards becoming Parties to the Protocol.
Australia is regarded as a leader on intellectual property (IP) issues in the region. Accession to the Protocol would further enhance Australia's international reputation in this regard and would encourage our regional trading partners who have not yet already done so, to consider accession to the Protocol.
The `Madrid System' of international trade mark registration is administered by the International Bureau of WIPO, which maintains the International Register and publishes the WIPO Gazette of International Marks (Article 11). In addition, certain administrative and intermediary functions and responsibilities are imposed upon the domestic trade mark offices of Contracting Parties to the Protocol, referred to in the Protocol as the `Office of Origin'. In Australia's case, as the Office of Origin, these functions and responsibilities would be performed by the Australian Trade Marks Office within IP Australia.
The Protocol provides that applications for international registration may be made by individuals or legal entities that have the necessary connection to a Contracting Party to the Protocol (Article 2(1)). The necessary connection may be nationality, or domicile, or a real and effective industrial or commercial establishment in a Contracting Party (Article 2(1)(i)). In addition, applications for international registration may be made only where the trade mark has already been applied for (called 'basic application') or registered (called `basic registration') with the Office of Origin of the Contracting Party to which the applicant has the necessary connection (Article 2(1)).
An international application must designate the Contracting Parties in which the trade mark is to be protected (Article 3bis). The applicant may designate any or all other Contracting Parties to the Protocol. An application for international registration must also be accompanied by the payment of fees set out in the Protocol (Article 8). Certain other requirements relating to the form of applications, alteration of fees and administrative procedures are set out in Regulations concerning the implementation of the Protocol (Common Regulations Concerning the International Registration of Marks and the Protocol Relating to the Agreement).
The Office of Origin presents applications for international registration to the International Bureau (Article 2). The International Bureau checks that the application complies with the requirements of the Protocol and, provided there are no defects, records the mark in the International Register and publishes it in the Gazette (Article 3(4)). The International Bureau also notifies each Contracting Party in which protection has been requested.
Except in those cases where trade mark protection is refused (see below), designated Contracting Parties are required to provide the same protection to an internationally registered mark as they do to marks registered directly with their own trade mark office (Article 4). The Protocol also makes provision for the protection of a mark to be extended to Contracting Parties that were not covered by the original application for international registration, or were not Party to the Protocol at the time that an application for international registration was made (Article 3ter).
A Contracting Party is entitled to refuse protection of a trade mark (based on examination or opposition) by written notification to the International Bureau (Article 5). The time limit for a Party to refuse protection is 12 months, unless a Party has, at the time of becoming a Party to the Protocol, made a written declaration extending the time limit to 18 months (Article 5 (2)(a) and (2)(b)). It is proposed that Australia make such a declaration.
International registrations have effect for 10 years (Article 6(1)), and may be renewed for a further period of 10 years upon the payment of prescribed fees (Article 7(1)). For the first five years, international registration is dependent upon basic registration with the Office of Origin. If, within that period, the basic registration with the Office of Origin ceases to have effect, the international registration will no longer be protected (Article 6(3)). After the expiry of the five year period, the international registration becomes independent of the basic registration (Article 6(2)). In this respect, the Office of Origin is required to notify the International Bureau of facts and decisions relating to registration (Article 6(4)).
Upon becoming a Party to the Protocol, Australia would automatically become a member of the Madrid Union established under the Madrid Agreement (Article 1). Every member of the Madrid Union is a member of the Assembly (Article 10). The Assembly is responsible for the program and budget of the Madrid Union, including the adoption and modification of implementing Regulations (Article 10).
There are no direct foreseeable financial costs to the Commonwealth, the States and Territories, or Australian industry from taking the proposed treaty action.
Australia presently provides financial contributions to WIPO (approximately $AUD 750, 000, the major proportion coming from the budget of IP Australia, a self-funding federal government organisation). Those contributions would not increase as a result of Australia becoming a Party to the Protocol.
Future Protocols, Annexes or other binding Instruments
The Protocol does not provide for the conclusion of future Protocols, Annexes or other legally binding instruments.
The Protocol sets out a procedure for the amendment of Articles 10, 11, 12 and 13 of the Protocol. These Articles refer to the WIPO Assembly relating to the Madrid Agreement, the International Bureau, finances of the Madrid Union and amendment of certain Articles of the Protocol. The Protocol provides that amendments may be adopted by a majority of the Contracting Parties voting as members of the WIPO Assembly. Adopted amendments would enter into force one month after written notifications of acceptance have been received from three-quarters of the Contracting Parties who were members of the Assembly at the time of adoption. Accepted amendments are binding on all Parties to the Protocol (Article 13).
An international working group on the modification of regulations under the Protocol has been established. Any recommendations of the Working Group would be considered at future meetings of the WIPO Assembly.
The Trade Marks Act 1995 (`the Act') provides for the registration of trade marks and sets out and protects rights deriving from registration.
Upon its commencement, the Trade Marks Amendment (Madrid Protocol) Act 2000 will amend the Act to insert a new Part 17A that would enable regulations to be made to implement Australia's obligations under the Protocol.
New regulations will be required to be made under the amended Act prior to Australia taking the proposed treaty action.
* The States and Territories were notified of the proposed treaty action through the Standing Committee on Treaties and, in addition, letters were sent to all State Governments and Federal Ministers with portfolio responsibility for IP.
* IP Australia held a series of public seminars on the Protocol in the capital cities in 1999. Representatives from WIPO and the national IP office of the United Kingdom attended some of these sessions and addressed procedural matters, the benefits and the economic impact of accession to the Madrid Protocol. Approximately 200 people representing business, the legal profession, patent and trade mark attorneys and government agencies attended these sessions.
* Meetings specific to the Protocol have been held with interest groups such as the Institute of Patent and Trade Mark Attorneys, AMPICTA (the Australian manufacturers' group representing intellectual property owners) and the topic has been discussed during public consultations on IP Australia's future service delivery.
* Public notices have been placed in the Official Journal of Trade Marks and on the Internet.
* Letters inviting submissions on the subject have been sent to major interest groups and clients.
* The issue was raised at the July 2000 New South Wales State Government Exporters' seminar on protecting IP internationally.
As a result of these consultative activities, strong support and interest has been received from a number of areas, including the State Governments of Victoria and Western Australia, and from the Australian Capital Territory.
Fifteen written submissions from business and professional groups, for example The Winemakers' Federation of Australia and AMPICTA, have been received addressing the issue of possible accession to the Protocol. Most of the submissions were in favour of Australia acceding as soon as possible so that users of the system would have access to the Protocol as soon as possible. They also believe that Australia could take a leading role in encouraging other countries in the region to join and thus provide greater benefits to trade.
While the submissions from the Institute of Patent and Trademarks Attorneys and the International Federation of Industrial Property Attorneys did not oppose the principles of the Madrid Protocol, they did raise concerns about the timing of accession and aspects of the legislative changes. The concerns on timing related to the impact on workloads in the Trade Marks Office and possible pressures on the Trade Marks Register. Since these matters were raised there have been further discussions with representatives of the groups and initiatives undertaken to address their concerns. Initiatives have included an extensive recruitment exercise and business process improvements. The Trade Marks Office is committed to ongoing discussions with the groups on the subject.
Withdrawal or Denunciation
Any Party to the Protocol may, at the expiry of five years from the date upon which the Protocol entered into force with respect to that Party, denounce the Protocol by written notification to the Director General of WIPO. Denunciation takes effect one year after the day on which notice is received (Article 15).
Article 15(5) of the Protocol provides where a trade mark is the subject of an international registration having effect in the denouncing State, the holder of the registration may then file an application within two years from the date on which the denunciation became effective for the registration of the same mark with the Office of the denouncing State.
This procedure would be available also to trade mark holders in cases where, because of the denunciation of the Protocol, the holder of an international registration is no longer entitled to file international applications for international registration having effect in States other than the denouncing State (Article 15(5)(b)).
In those cases, the Protocol provides that the mark shall be treated as if it had been filed on the date of its international registration and shall enjoy the same priority as it had under the international registration (Article 15(5)(a)).
Department of Industry, Science and Resources