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Saturday, May 2, 2015

WIPO Advances Global Reach and Efficiency of Madrid System with New Members and IT Upgrades

The Madrid System expands its footprint in Africa and Asia while addressing user concerns on processing times and digital services

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WIPO Advances Global Reach and Efficiency of Madrid System with New Members and IT Upgrades

The World Intellectual Property Organization (WIPO) convened a meeting today for users of the Madrid System, the international trademark registration mechanism, to discuss recent developments and future plans. David Muls, Senior Director of the Madrid Registry at WIPO in Geneva, provided insights into the System’s expanding global reach and ongoing reforms.

Since last year’s focus on Latin America, the Madrid System has shifted its attention to Africa, with plans to highlight Southeast Asia next year. Muls emphasized that the System is moving away from its traditional European Union-centric orientation, a trend expected to solidify over the next five to ten years.

Currently, the Madrid System encompasses 95 contracting parties covering 111 countries, with additional accessions anticipated later this year. This expansion is not only geographical but also reflects changing user demographics. Notably, the United States emerged as the largest single user last year, surpassing Germany, France, and Switzerland. This surge is partly attributed to opportunities for protecting trademarks in Mexico and Colombia.

Looking ahead, Muls highlighted the strategic importance of ASEAN countries joining the System, which will significantly boost Asian participation. He also expressed optimism about further growth in Latin America, Canada, and the Gulf states, regions that remain underrepresented in the Madrid framework.

Addressing user concerns, Muls acknowledged criticisms regarding the pendency rates for Madrid transactions at WIPO’s International Bureau. To enhance transparency and accountability, WIPO will begin publicly disclosing pendency data for key transaction types—including applications, renewals, subsequent designations, modifications, decisions, and corrections. This data, available since 2008 and now detailed on a monthly basis, will be annexed to the 2016-17 program and budget documents, enabling members to monitor performance closely.

In addition to transparency measures, WIPO is rolling out significant IT improvements. A new, more efficient e-renewal system is launching, alongside progress toward a streamlined e-filing platform. The Benelux and Australian trademark offices already support e-filing, with the Office for Harmonization in the Internal Market (OHIM) and other offices of origin expected to follow. The goal is to maximize adoption of electronic filing across member offices in the coming years.

Further digital enhancements include seven new electronic forms for administrative tasks such as change of address and subsequent designations. These forms are currently undergoing testing with examiners and select users. WIPO is also introducing the ROMARIN system and new rules on continued processing, which provide grace periods for missed deadlines, improving procedural flexibility.

The recent accession of Zimbabwe and the Organisation Africaine de la Propriété Intellectuelle (OAPI) last December, followed by Cambodia in March, marks a significant expansion in African and Southeast Asian representation. OAPI’s inclusion adds 17 primarily French-speaking African countries, although some practitioners have questioned the constitutional validity of this accession and the recognition of international registrations within OAPI member states. WIPO has stated that these issues are constitutional matters for OAPI itself. OAPI’s Director General, Paulin Edou Edou, is participating in the meeting to address such concerns.

Similarly, questions have arisen regarding Zimbabwe and eight other African member states. Ghana has recently enacted Madrid-compatible legislation and is collaborating with WIPO to enhance operational processes. Zimbabwe’s Controller of Patents, Trademarks and Industrial Designs, Fidelis Maredza, is also present to provide further details. Malawi and Gambia are potential next candidates for joining the System from Africa.

Cambodia’s membership is the first in what is expected to be a wave of accessions from ASEAN countries, most of which are committed to joining by year-end, except possibly Thailand and Myanmar. Sim Sokheng, Director of the Department of Intellectual Property Rights in Cambodia’s Ministry of Commerce, is attending the meeting to represent this regional momentum.

Beyond these regions, Canada is anticipated to advance toward Madrid membership this year following the enactment of its new Trademarks Act, signaling further North American integration.

Muls, who joined the Madrid Registry from WIPO’s Patent Cooperation Treaty division in 2013, underscored the necessity of continuous reform to maintain the System’s relevance and efficiency. He described Madrid as a comprehensive platform managing the entire trademark lifecycle, whose power grows as it covers more countries centrally.

The Madrid System Users Meeting was scheduled from 11:00 a.m. to 1:00 p.m. today, providing a forum for users to engage directly with WIPO staff and leadership. For additional resources, practitioners are directed to the International Trademark Association’s Practitioner’s Guide to the Madrid Agreement and Madrid Protocol at www.inta.org/madridprotocol.

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WIPO Advances Global Reach and Efficiency of Madrid System with New Members and IT Upgrades The World Intellectual Property Organization (WIPO) is accelerating the globalization of the Madrid System for international trademark registration by welcoming new members from Africa and Asia and implementing signific... Read the full IIPLA article: https://iipla.org/news/wipo-advances-global-reach-and-efficiency-of-madrid-system-with-new-members-and-it-upgrades

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