ECTA European Communities Trade Mark Association

Transcription

1 ECTA European Communities Trade Mark Association Antwerp, 8 May, 2007 Considerations on the possible repeal of Article 9sexies of the Madrid Protocol ECTA - The European Communities Trade Mark Association - representing users (both from industry and from private practice) of the so-called Madrid System would hereby like to provide WIPO and the national delegates with its thoughts and position on the Review of the Refusal Procedure and the Safeguard Clause of the Madrid Protocol and Possible Amendments to the Common Regulations. Having closely followed, as an observer, the discussions held at the Ad Hoc Working Group on the legal developments in the Madrid System regarding the review of the Safeguard Clause, ECTA noted that at the second session of the Ad Hoc Working Group, the Working Group considered the following five options: Option 1: Maintaining the Safeguard Clause as at present. Option 2: Repeal of the Safeguard Clause. Option 3: Repeal of the Safeguard Clause accompanied by certain measures aimed at limiting undesired effects that might result from such repeal. Option 4: Restriction of the scope of the Safeguard Clause to cover only certain features of the international procedure (in particular, the refusal period and the fee system). Option 5: Restriction of the Safeguard Clause to cover only existing international registrations or designations ( freezing ) 1. 1 This last option is in fact option 2, namely repeal of the Safeguard Clause, but allowing the benefit of the Madrid Agreement for those international trade marks filed before a certain date. As we shall comment later on, just as option 2, it should be rejected because it is not in favour of the users. 1

2 ECTA would initially like to comment on the importance of the Safeguard Clause within the framework of the Madrid System and on the aforementioned Options. ECTA s comments: 1. In 1989, Article 9 sexies of the Madrid Protocol was deemed to be the most important article of the Protocol for the users of the Madrid Agreement. Thanks to this Article, when a resident of a member country of both Conventions seeks protection in a country that is also a member of both Conventions, the Madrid Agreement applies. The adoption of the so-called Safeguard Clause resulted from the express request of the users of the System, who considered, quite unanimously, that the Madrid Agreement was on average more favourable for the users than the newly proposed Protocol would be. No arguments have been put forward to demonstrate that this has changed since then. 2. Also, we would like to underline that the Madrid System, as well as the IP Offices of the Member States (PTO s), should in the first instance serve the real users i.e. trade mark owners- and therefore when considering the possible repeal of the Safeguard Clause it is the users view that should be followed and more specifically the view of the users of the Madrid Agreement. 3. ECTA understands that some are of the opinion that one system would be better than two. In theory, this seems to be pretty obvious. However, - no complaint has come from those who use both systems; - 57 countries are still members of the Agreement and 72 of the Protocol; - it is interesting to see that since the introduction of the Protocol, some countries have nevertheless become member of both the Protocol and the Agreement. Consequently, the Agreement must not be that bad and the dual system must not be that complicated; - the Madrid Agreement has existed for more than 110 years and to our knowledge, hardly any country has left, whilst of those that have, some have returned; - as explained above, on average, from the very beginning, it has been understood that the Agreement is better for the users than the Protocol and no proof has been brought forward that the situation has changed. 4. We therefore conclude that the advantage of having one system is largely counterbalanced by the advantages of the Agreement versus the Protocol for the users. 5. This being said, ECTA must underline the fact that the Madrid Agreement has features that make it extremely beneficial to users, which should not be 2

3 underestimated, such as a much shorter refusal period and important savings in fees. 6. Regarding the fees savings we would like to provide you with the following concrete examples using the WIPO fees calculator to be retrieved at (i) A Spanish applicant filing an International trade mark In all Madrid Protocol In the same countries but (MP) countries applying Madrid Agreement Difference applying MP fees (MA) fees wherever possible In 3 classes CHF 20,406 CHF 14,588 CHF 5,818 In 1 class CHF 14,434 CHF 10,006 CHF 4,428 (ii) To be even more concrete, in 2004, a well-known Spanish company in the wine industry registered 22 International trade marks, designating all possible countries in one single class. Without the MA, the added costs (only of official fees) would have been of 22 x = CHF 97,416 (around EUR 61,000 ). 7. Many European companies apply for a substantial number of International trade marks every year, so the above example is not exceptional. 8. Therefore, contrary to some statements made at the Ad Hoc Meeting, ECTA is of the opinion that the financial changes that the repeal of the Safeguard Clause would entail are NOT of little importance and could be a major budgetary issue especially to some SMEs. 9. We now come to the question of the provisional refusal period and more specifically to an item which has hardly been spoken about, namely the additional (practically unlimited) period for opposition. 10. It is clear that 12 months is better than 18 months. All member countries of the Agreement seem to have been able to cope with this problem and furthermore, not all Protocol countries have availed themselves of the 18 months. 11. One important matter which should absolutely be discussed is the option according to which member states of the Protocol can avail themselves of a practically unlimited additional period for opposition. Twenty countries have availed themselves of this possibility, amongst which are Sweden, USA, Australia, UK and China. This constitutes one of the major disadvantages of the Protocol versus the Madrid Agreement, namely that under both systems, within a predetermined period, which is normally 12 months and possibly 18 months, the applicant for the international trade mark should know what are all the possible barriers to the new international trade mark in every country where protection has been sought. But under the above mentioned option, because this period can be extended indefinitely, in some countries the uncertainty of whether or not his mark is protected will likewise continue indefinitely. 3

4 12. It is interesting to note that the Community Trade Mark System has organised itself so that all possible obstacles, including oppositions, are communicated within the 18 months period. 13. As is well known, the Protocol differs from the Agreement in some aspects. However, most of the important differences have been made in favour of the PTO s and not in favour of the users. 14. The two main advantages of the Protocol from the point of view of the users are 2 : - Basic application instead of basic registration - Transformation 15. As to the first advantage, some Madrid Agreement countries such as the Benelux, Germany, Portugal and Spain have introduced an accelerated registration procedure and/or decided that opposition can take place after registration. 16. As to transformation, the statistical evidence shows that it is hardly ever used. Norway has declared (see WIPO report of June 2006, 149) that they only received one application in their country on the basis of a transformation. Information gathered from, amongst other, the UK (less than 20 since 1996) and the Benelux evidences that the number of users who avail themselves of this possibility is minimal. The main reason seems to be that if and when a trade mark cannot be used in the home country, it very often becomes pointless to protect it in other countries and it is abandoned. 17. However, although they are apparently more theoretical than practical, ECTA considers that these two features of the Madrid Protocol remain of interest for the users. 18. In the light of the above, ECTA would therefore favour Option 4, namely to restrict the scope of the Safeguard Clause to cover only certain features of the international procedure (in particular, the refusal period and the fee system). 19. As a result, the Protocol could be applicable in the relationship between countries bound by both the Protocol and the Agreement, except in so far as the fee regime and the refusal period are concerned (and importantly on the unlimited opposition period provided for by the Protocol). 20. With respect to the standard designation fee under the Agreement, ECTA would support a revision of its amount, by reasonably increasing it in accordance with the needs for proper services by the contracting parties concerned, if such is considered necessary. 21. Even though ECTA supports Option 4, it is deemed important to make the following comments with respect to the proposed Options 3 and 5, namely the repeal of the Safeguard Clause accompanied by certain measures aimed at limiting undesired effects that might result from such repeal and the restriction 2 Regarding a broader language regime provided by the Madrid Protocol, it has already been accepted that the Madrid Agreement will also benefit from the three working languages, namely French, English and Spanish. 4

5 of the Safeguard Clause to cover only existing international registrations or designations ( freezing ). 22. Coming to the possible compromise as defined at the last session of the Working Group, referred to as Option 5, ECTA maintains the view that the measures provided are totally insufficient regarding the loss of the advantages provided by the Agreement. Indeed, the compromise does not provide for any limitation of the undesired effects for future applications and could be understood as a total repeal of the Safeguard Clause including a transitional provision for past registrations. 23. As to Option 3, this recognises that the repeal of the Safeguard Clause would be detrimental to the interests of the users of the System a view that is completely shared by ECTA, in particular so far as the refusal period and the fee system are concerned. 24. In the light of the cost examples provided above and in the logic of today s world, where many PTO s are lowering their fees and increasing their services, which is welcomed by the users, it seems difficult to sustain the position that an increase of the fees is of no relevance to the interested parties. 25. Thus, ECTA is of the opinion that, to be satisfactory, a possible compromise leading to the repeal of the Safeguard Clause should include measures to avoid the recognised unfavourable side effects for the users. The compromise should therefore include: i. Some guarantee that the individual fees for International designations be limited to reasonable amounts in order to keep the System attractive to users. ii. iii. A revision of the time limits presently applicable under the Protocol. Thus the refusal period should be set at a maximum of eighteen months, which would include the notification of oppositions. Also, the level of services provided by the Offices of contracting parties should be of a standard level and should include the systematic and obligatory notification of the grant of protection of the designation. 26. This being said, ECTA notes the reluctance of some delegations, bound by the Protocol only, to discuss the fee question linked to the repeal of the Safeguard Clause. Therefore, the question arises whether there is room for an adequate compromise under Option 3 at this point in time. 27. To sum up, ECTA believes that in the interest of the users of the Madrid Agreement, Option 4 should be chosen, namely to restrict the scope of the Safeguard Clause to cover only certain features of the international procedure (in particular, the refusal period and fee system). A further review of the System could be planned within 10 years where Protocol only members might be in a better position to accept a discussion on the fee issue. 5

6 28. It is ECTA s belief that if Article 9sexies is to be amended, agreeing on Option 4 would be a step in the right direction, namely towards unifying both treaties, as some of the divergences will already be lifted. We sincerely hope that the foregoing is worth being considered and further discussed more in depth at the next session. Yours Sincerely, Mireia Curell President Florent Gevers Member of the Law Committee 6