The Madrid System is anticipated to face the following challenges in the biennium 2016/17: (i) accurately forecasting the number of Madrid filings due to the continuing fragility of the global economy; (ii) ensuring the ability to effectively absorb the likely increase in the number of accessions by new countries; (iii) enhancement of the Madrid System as a whole so that it may operate more effectively for both private sector users and Offices alike, including those in new member countries; (iv), improvement in the consistency, predictability and overall quality of the work of the International Bureau (IB) in as cost-effective a manner as possible; and (v) adequately identifying, harnessing and mastering opportunities offered by increased levels of automation in all aspects of the international procedure.
The IB will actively engage with potential new members at the early stages of the accession process to provide guidance on the requisite preparatory work, such as change management leadership, legislation, organizational and institutional considerations, procedural and operational issues, IT automation and community changes. The IB will also provide operational support and guidance to new members in the stages immediately following the entry into effect of the Madrid Protocol. Given the extent of work likely to be involved and the need to bring various perspectives to the matter, the IB will use the WIPO External Offices, national and regional Offices and other key stakeholders to bring these efforts to a successful conclusion.
The series of initiatives launched in early 2014 to improve performance in the handling of Madrid international applications and the management of the International Register will also be sustained. Foundational progress already made in the areas of workload/resource planning, customer services and staff training will be strengthened with a view to yielding tangible benefits for private sector users and Offices. As these aspects of the work continue to mature, the focus will shift increasingly to quality, including more consistent and predictable examination results through enhanced examination documentation and process control. In conjunction therewith, special efforts will be made to make the IB’s classification process more effective through advancement of the development of a seamless platform for the Nice listed goods and services and the Madrid Goods and Services Manager (MSG) database in order to make the classification practices in all concerned Offices more transparent.
In the area of promotion, greater emphasis will be placed on market research and marketing/outreach plans tailored to the specific needs and profiles of potential local users. Additional and improved quality information regarding the Madrid System, including examination practices both within the IB and at designated Contracting Parties, will be made available on the IB’s web site, catering to the needs of both new and more experienced users. The existing online tools for managing Madrid trademark portfolios by trademark owners will be streamlined into an integrated electronic environment, permitting users to seamlessly search, file, monitor and manage their trademarks online. In addition, the existing online tools permitting Offices to manage Madrid applications, notifications of designations and other official notifications will be similarly streamlined into an integrated electronic environment.
With the rapid expansion of its geographical scope, the Madrid System will need to serve the interests of all stakeholders equally to deliver its full potential in the new environment. The Working Group on the Legal Development of the Madrid System will consider how the System’s legal framework needs to evolve to cater to the changing needs.
As opportunities for increased and improved application of information and communication technologies present themselves, the IB will follow a number of guiding implementation policies aimed at accommodating the expectations of the various Madrid System stakeholders, including Offices, applicants, rightsholders or IP professionals, as part of efforts towards moving to a fully electronic environment. Such implementation policies will ensure that stakeholders can safely and progressively interact with the international register online and synchronously, in a real-time, self-service mode. Great attention will be paid to delivering improved online services that offer identical services and performance to all stakeholders, irrespective of geographic location.
B. LISBON SYSTEM PLANNING CONTEXT
The main focus as regards the Lisbon System will be the effective administration of the International Registry for Appellations of Origin and preparations for the possible entry into force of the proposed New Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications (“New Act”), including information and promotion activities in that respect.
The New Act is expected to pave the way for a significant increase in the membership of the Lisbon Union. Although the accession rate is difficult to predict, entry into force of the New Act may already occur in the course of the biennium or soon thereafter. Consequently, as the New Act will coexist with the current Lisbon Agreement for as long as not all Member States of the current Lisbon Agreement have acceded to the New Act, preparations need to be made for the adoption of Common Regulations under the two instruments.
The preparation of future Common Regulations will also provide an opportunity for critically reviewing current administration procedures and further developing electronic notification and publication tools to maximize efficiency.
In addition, technical assistance will be provided to Member States and relevant regional organizations, in particular to developing countries and LDCs, interested in adhering to the Lisbon System. Also in this context, outreach and additional training activities will be undertaken to further promote the use of the System.
The average number of international applications and other requests for recording in the International Register under the Lisbon System since 1967 has amounted to approximately 25 such transactions per year, with large variations, however, between years (for example, seven requests for the recording of transactions were received in 2009 and 596 requests in 2007). The number of transactions was considerably higher in 2014 (121) and in 2015 is also expected to be higher than the average. In view of the possible entry into force of the New Act and further accessions, it is estimated that such an increased level of registration activity will continue in the years to come.
Program 6 collaborates primarily with other Programs as illustrated below:
MAJOR RISKS AND MITIGATION STRATEGIES
Madrid System is considered less attractive than the national route in respect of certain Designated Contracting Parties.
Enhance the effectiveness of the Madrid System through legal and practical adjustments which facilitate the securing of trademark protection in all designated Contracting Parties
Promote new accessions in key regions and countries
Quality of the International Bureau’s services does not meet customer expectations
Improve staff profile alignment; improve consistency of operational practices and their compliance with the legal framework; continue to strengthen quality control procedures; and provide training support.
Prolonged unavailability of operations at the International Bureau.
Further develop the Business Continuity Plan of the International Bureau.
II.6 Wider and more effective use of the Madrid & Lisbon systems, including by developing countries and LDCs
Total Membership of the Madrid System
Market share (i.e., national route versus Madrid route)
Improved electronic services for the Lisbon Registry and Article 6ter
Simple implementation of an electronic register
Electronic filing web forms
RESOURCES FOR PROGram 6
The increase in resources under this Program is driven by the expanding membership of the Madrid System and the resulting expected increase in the demand for services and provisions to enhance the operational efficiencies of the system. The increase is reflected under Expected Result II.7.