Implementation of the Madrid Protocol is scheduled for mid 2001. In this article Trevor Stevens updates you on the changes and what it means for your trade mark portfolio.
Accession to Protocol
Australia is expected to accede to the Madrid Protocol in March of this year. Implementation of the Protocol is scheduled for mid 2001.
The Australian Trade Marks Office and the Implementation of the Protocol
Madrid Protocol submissions were tabled in the Australian Parliament on 10 October 2000. A decision regarding Australia's accession to the Protocol is due in February 2001. The Parliament is expected to agree to adopt the Protocol and the instrument of accession will be deposited with WIPO in March 2001. The Protocol would then come into effect three months later, in mid June or July 2001.
The role of the Australian Trade Marks Office is crucial in the implementation of the Protocol in this country. The Trade Marks Office has recognized that there are already delays in examination and is currently recruiting more examiners in order to improve its processes and get ready for the implementation procedure.
According to data received from liaising with other countries that have adopted the Protocol, the Trade Marks Office expects that the number of filings in Australia will increase over time. It is also anticipated that domestic filings will increase because of the ease with which the Protocol allows applicants to file for registration of their trade marks internationally.
Once the Protocol is implemented the time periods for both domestic and international filings will be 18 months. This is to avoid any differential treatment between international and domestic applications. Although the Madrid Protocol requires the first examination report to be provided within 12 months, the Trade Marks Office intends to declare that it requires up to 18 months to issue its first report.
The indications are that the Trade Marks Office will be fully prepared for an efficient introduction of the Protocol in Australia.
Applications
Applications made under the Protocol will require a local address for service in many situations, notably for purposes of responding to examination requirements and in opposition proceedings.
On ratification of the Protocol by Australia, Davies Collison Cave will be well placed to meet the needs of trade mark owners seeking to protect and enforce their trade marks in Australia.