Norwegian proposal to change the Madrid system of international registration of marks

The Norwegian Patent Office has submitted a proposal to WIPO to abolish the requirement for a basic application / registration in order to obtain an international trade mark registration. It is currently under consideration by various Swedish authorities and interest groups.

The proposal is motivated by the conception that the requirement for a basic application or registration is old-fashioned, now that trademark holders often have their activities in markets other than the State of origin. There are not any similar requirements in the Hague system for international registration of designs.

According to the proposal, such a change would make the Madrid system more user-friendly for holders who in their countries of origin (e.g. Japan) use a language other than the language in the selected markets. Moreover, it would be an easier option for holders who have their activities in markets other than the State of origin. They would thus not run the risk that their basic application is subject to cancellation because of non-use, which would in turn lead to the lapse of their entire international registration.

The idea is, as for applications for international registration of designs, to designate the countries of interest to the holder, including the State of origin, and then only to have one sole registration to keep track of.

Furthermore, Norway has proposed that the current system with the requirement for a basic application / registration is maintained, and that the holder, at the end of the 5 year period during which the international registration is dependent on the basic application / registration, shall be able to designate the State of origin. As a result, the holder will again only have a single registration to keep track of.

WIPO has also presented its own proposal to change the current system. That is, a holder from a Member State should be able to rely on a basic application / registration from any of the Madrid Union states as the basis for an international registration. Referral agencies will give their views on this proposal as well.

We will follow up on this matter in the future.

//Maria Lagergren