Back in 2013, we wrote an article about the Madrid Protocol, the treaty that regulates the international trade mark registration system. We expressed the view that it was high time that South Africa joined this ever-growing club of nations. We expressed the hope that it would happen soon. It’s now mid- 2019 and... well we’re still waiting. We’re told that accession to the Madrid Protocol is imminent. 

The Madrid Protocol has been in the news of late. First, because Canada has joined, bringing the total membership close to 120. But also because there’s speculation that Brazil is very close to joining, perhaps before the end of the year. Once Brazil joins, South Africa will be the only BRICS country that isn’t a member of the Madrid Protocol – China, India and Russia have been members for some time.

South Africa is already the odd man out in Southern Africa, as its immediate neighbours are all members: Botswana, Eswatini, Lesotho, Mozambique, Namibia and Zimbabwe. Not only are our neighbours all members, but so are these other African countries: Algeria, Egypt, Gambia, Ghana, Kenya, Liberia, Madagascar, Malawi, Morocco, Rwanda, Sao Tome, Sierra Leone, Sudan, Tunisia and Zambia. As are all the countries that belong to the OAPI , which is itself a member and provides protection in the following countries: Benin, Burkina-Faso, Cameroon, Central African Republic, Chad, Republic of Congo, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal, Togo and the Union of the Comoros.

In an article entitled Madrid Protocol: The Road to Madrid, IP lawyer Robert Daniel Shores suggests that, although Brazil has toyed with the idea of joining the Madrid Protocol for many years, it was the recent economic crash in the country that gave the whole thing fresh impetus (this has a certain resonance here). Shores says that the economic pain persuaded the Brazilian authorities to set about improving the performance of the Brazilian registry, to make sure that it would be able to examine trade mark applications within the 18 month-period required by the Madrid Protocol.

So, what will change when South Africa does finally become a member of the Madrid Protocol? Well, things will certainly change quite significantly for international companies who see South Africa as a viable market. At present, any foreign company wishing to sell goods or services in South Africa needs to seek a South African trade mark registration if it wants to ensure that it has exclusivity. Once South Africa joins the Madrid Protocol, however, this will no longer be necessary. The foreign company will be able to simply include South Africa in the list of countries that it wishes to cover in an International Registration (“IR”). The IR will be filed with the World Intellectual Property Office (“WIPO”) in Geneva. WIPO will, in turn, notify the South African authorities of the request for protection in South Africa, and the South African authorities will then have a period of 18 months to notify WIPO of any objections (for example prior rights). If there is no objection, the IR will be valid in South Africa.

Things will change for South African companies too. South African companies who wish to export their goods or services will no longer need to seek trade mark registrations in all those countries where they want to do business. They too will be able to file an application for an IR that covers those countries that are of interest to them. Assuming that there are no objections, the IR will then cover all those countries. Instead of having multiple foreign registrations to renew, there will simply be one. Belonging to the Madrid Protocol should simplify administration and bring about significant cost savings.

There is a perception that the people who are most likely to be negatively affected by South Africa joining the Madrid Protocol are the South African lawyers who specialise in trade marks. The thinking goes like this: foreign companies will no longer need to get South African trade mark registrations and, therefore, no longer need to use South African trade mark attorneys – the whole IR process will be managed from abroad, most likely by foreign lawyers. The other side of the coin, of course, is that South African trade mark lawyers will have a far greater involvement when it comes to South African companies seeking trade mark protection abroad. But South Africa is, of course, more of an importer of trade marks than an exporter. So, it seems that South African lawyers perhaps stand to lose more than they stand to gain.

But this thinking does overlook a number of things. Local lawyers will remain necessary for trade mark clearance exercises. They will need to be appointed to deal with objections raised against IRs by the South African Registry.  They will be required for the opposition and other contentious work. They will be required for all trade mark matters that go beyond registration – licensing, commercialisation, valuation, litigation, anti-counterfeiting. They will play a far greater role with foreign trade mark protection for South African companies. And, if the cost of foreign protection abroad does indeed go down because of the Madrid Protocol, perhaps South African companies may eventually protect many more trade marks abroad than they do now.

Swings and roundabouts.

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