ECTA actively seeks your opinion on the dependency issue for international trade marks in the Madrid System.

As you may be aware, there is a recent proposal to modernise the Madrid Protocol regarding the dependency issue for international trade marks put forward by a number of delegations, including Australia, Chile, Ghana, the Philippines, the Republic of Korea, and the US (hereinafter the Proposal). The Proposal discusses three options to go about the dependency:

1) Retain the basic mark requirement, but reduce the dependency period from 5 to 3 years

Everything would remain the same as under the existing system except for the dependency period, which would be shortened from 5 to 3 years.

2) Retain the basic mark requirement, but eliminate the dependency principle

The basic mark requirement would remain but, if the basic mark ceases to have effect, it would not result in cancellation of the international registration and all designations.

3) Eliminate both the basic mark requirement and dependency principle

A trade mark holder would simply file an international application and designate the territories for protection. Each designated Contracting Party would examine the request for extension of protection according to its national laws and decide whether to grant or refuse protection.

For the above option 3 (i.e. if the basic mark and dependency requirements were to be abolished) a suggestion is made in the Proposal to retain a different form of a central attack mechanism.

According to such suggestion third parties may, instead of objecting to or cancelling the registration of basic mark before the competent national Offices/Courts, centrally attack the international registrations before a central, independent dispute settlement body, which could be established at the WIPO Arbitration and Mediation Center. If such a central attack was successful, the international registrations and all designations would be cancelled.

Further, the Proposal is also suggesting that Member States may choose which of the three above options of the dependency, if any, they want to retain, namely:

“If the Protocol is amended, each Contracting Party may either continue the current practice, or make a voluntary declaration to elect a new option. This would be similar to existing declarations in the Protocol to select an 18-month time limit to respond to provisional refusals and to elect individual fees. This proposal does not require Contracting Parties to immediately decide whether to choose one of the new options or which option to choose. Rather, they need only agree that the Protocol be amended to offer these flexibilities, and recommend formal adoption of the amendments by the Madrid Union Assembly.”

If this was adopted there could be at the end 3-4 types of countries following different dependency rules.

In 2018, ECTA had already prepared a paper on dependency, which you can consult here for your further information.

WIPO now has requested User Associations to submit observations and suggestions regarding the dependency issue for consideration at the 22nd session of the Madrid Working Group.

Given the information provided, ECTA kindly requests its members, who have not yet done it, to express their opinion by voting Yes or No to the options presented in this SHORT SURVEY no later than 22 April 2024.

Thank you for your contribution.