Madrid Agreement and Hague Agreement: adoption

Meeting report

TRADE AND INDUSTRY AD HOC COMMITTEE

Geneva Act of the Hague Agreement concerning the International Registration of Industrial Designs
Department briefing on Hague and Madrid Systems
Protocol relating to the Madrid Agreement concerning the International Registration of Marks

SUMMARY
The Department briefed the Committee on the ratification of the Hague and Madrid Systems that covered the registration of industrial designs and trademarks respectively. The Committee could not approve any decision to enter into these agreements until the Department had presented a document that clearly showed that the net benefits of ratifying the systems, outweighed the disadvantages.

MINUTES
Mr M Moletsi, Chief Director: Policy and Legislation, Department of Trade and Industry, said the Madrid System (incorporating the Madrid Agreement and Madrid Protocol) and the Hague System (incorporating the Hague Agreement and the Geneva Act) comprised two of three international agreements that related to the international registration of industrial property rights in respect of trademarks, patents and designs. South Africa had already acceded to the third agreement, the Patent Co-operation Treaty (PTC), but had yet to ratify the Madrid and Hague systems.

The Hague System would facilitate the establishment and maintenance of design protection through a single international registration in all member countries designated by the applicant country. The Geneva Act, not yet in force, provided for the participation of regional registration systems like the African Regional Industrial Property Office (ARIPO)

Unlike the Hague system, the Madrid System would not provide international protection for trademarks, but would facilitate their international registration. The Madrid Protocol was more rigid in its application than the Madrid Agreement, offering a choice of languages and an 18-month registration period for trademarks, as opposed to the 12-month period allowed by the Agreement.

Mr Moletsi envisaged a surge in the number of patent applications that would be lodged in South Africa if the systems were ratified, as had happened when the PCT was ratified. Such an increase would produce monetary benefits for the country and for the Companies and Intellectual Registration Office (CIPRO).

Mr Moletsi said it had previously been necessary to travel to other countries to register under other agreements, but it would be possible to register in South Africa under the Hague and Madrid Systems, thus saving time and money. The systems would also facilitate market access to other jurisdictions; protect investors and intellectual property holders; as well as encouraging foreign direct investment.

Discussion
Professor B Turok (ANC) did not understand why a longer registration period for the system was necessarily a positive thing. Mr N Macdonald, Director of Commercial law and Policy for the Department, said many countries had found that the 12-month registration period allowed by the Madrid Agreement had proved insufficient.

The Chairperson said the problem with ratifying the systems was that foreign patent holders would be recognised in South Africa, creating problems where they conflicted with local business interests. He asked if the Department was convinced that the benefits to South African patent holders outweighed the repercussions of reciprocal obligations.

Mr Macdonald said strong protection for Intellectual Property rights would encourage foreign investment. Other benefits included quick installation of the systems, because there was no need to travel to register. He believed the benefits outweighed the disadvantages.

Prof. B Turok (ANC) said the House would want to know how ratification of the systems would affect national interests. He expressed concern at the Department's "generalised" approach to the ratification. He said there was an enormous literature on intellectual property rights, and that many third world companies had suffered by entering into agreements they had not taken the time to understand. The ratification of these Systems was no mere formality.

The Chairperson suggested that the Department draw up a document that showed how the net benefits of the ratification of the Systems outweighed the potential disadvantages. The Committee agreed.

The meeting was adjourned