South Africa: Madrid - A Club We Should Join

Last Updated: 14 August 2013
Article by Vicky Stilwell

Most Read Contributor in South Africa, September 2016

Groucho Marx famously said that he would never want to belong to any club that accepted people like him as members.  So what is South Africa to make of the Madrid club? Well, the club would certainly accept South Africa as a member, in the same way that it has recently accepted India, Mexico, New Zealand, Rwanda and Tunisia.  As well as Southern African states like Botswana, Lesotho, Mozambique, Namibia, Swaziland and Zambia. Not to mention economic powerhouses like Australia, China, the European nations (including the EU), Japan, Korea, Russia and the USA.

What's the Madrid club you ask? You can be forgiven for not knowing what it is, because its real name is the Madrid Union. In fact, these days, it's more commonly referred to as the Madrid Protocol, which is one of the two treaties that created it, the other being the Madrid Agreement. If that all sounds very complicated don't worry it is, but all you need to remember is that, in the context of trade marks, the name 'Madrid' signifies the international trade mark registration system.  A system which means that you, the business owner, don't need to get a separate trade mark registration in every country where you want protection. Which, at the very least, will be every country where you do business, but is more likely be every country where you intend to do business in the foreseeable future, and may even be every country where you wouldn't want to see a competitor using your trade mark or a similar trade mark, although certain countries, such as the USA, prohibit registration of trade marks in the absence of evidence of actual commercial use of the mark sought to be registered.  For the sake of completeness, I should mention that, aside from the international trade mark registration system, there are certain exceptions to the rule that separate trade mark registrations are required in every country, namely the regional registrations that  exist in the EU (the Community Trade Mark)  and certain parts of Africa (OAPI and ARIPO registrations).

So just how does the international trade mark registration work? The system basically works like this: any time after you have filed a trade mark application in your home country you can file a further application for an international registration covering as many of the member countries as you wish to cover (even the entire EU) – the cost of the exercise does vary according to the number of countries you designate, so in that sense you are dissuaded from covering countries which you have no real interest in.  Your application for an international registration is, in fact, filed with your local trade mark office, which then verifies that there is an identical application or registration in the home country and forwards the application to the international body that administers the international registration system, the World Intellectual Property Organization (WIPO).  WIPO, in turn, sends copies of the application to the national trade mark offices of all the countries that have been designated in the application. Each national trade mark office then has a period of  up to 18 months to let WIPO know if there are any obstacles to the mark being registered in its country, for example an earlier registration for a similar mark. If an objection is raised, it can be contested. The international registration is then valid in all those countries where no objections have been raised, as well those where objections have been raised but successfully contested.

The term 'international registration' is, in fact, a bit of a misnomer – rather than being a single registration, it is basically a bundle of national registrations, although each one bears the same number. The international registration is, to all intents and purposes, the same as a national registration in each country where it is valid - so for example, if you, the trade mark owner, find out that a competitor is infringing your rights in one of the countries covered, you can sue for trade mark infringement of the international registration in that country.   But the big difference is that the international registration is administered centrally - not only is it registered through WIPO, but is also renewed through WIPO. This leads to significant cost savings at both registration and renewal stages.

The problem for South African companies is that South Africa has not joined the club. This means that the only South African companies who can use the international registration system are those large ones who have genuine offices in member countries – what they do is file a national application in the country where they have the office, and then base an international registration on that 'home' application or registration.  For many years the received wisdom was that South Africa could not join the international registration system because it was incapable of meeting the 18-month deadline for examining applications. But those days are long over, and trade mark applications in South Africa are now typically examined within nine months of filing.  So, other than the Groucho Marx reason, there's no reason why South Africa shouldn't join Madrid.

There are, of course, very good reasons why South Africa should join the international registration system.   One is that South Africa and Brazil are now the only Brics countries that are not members of Madrid, and Brazil has indicated that it will be joining in the near future.  Another is that joining will bring down the cost of international trade mark registration for South African companies, and this should make it easier for them to compete on the global stage.

All the signs are that South Africa will be joining Madrid shortly. South African companies would be well advised to start considering the implications.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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