The 22nd Session of the World Intellectual Property Organization’s (WIPO) Working Group on the Legal Development of the Madrid System for the International Registration of Marks (Working Group) continues to operate in Geneva, Switzerland. There, the Ukrainian IP Office’s representatives also participate in the Working Group’s work on pressing issues and engage in discussions with colleagues from all over the world.

 

The Ukrainian Delegation is represented in the meeting by:

 

• Mr Bogdan Paduchak, First Deputy Director, Ukrainian IP Office;

 

• Ms Tetiana Terekhova, Head, Trademark Law Unit, Ukrainian IP Office;

 

• Mr Ramiz Ramazanov, Counsellor, Economic Section, Permanent Mission of Ukraine to the United Nations Office and other International Organizations in Geneva.

 

Introducing New Languages to the Madrid System

 

During 2023–2024, the WIPO International Bureau held a series of technical consultations with Member States to discuss details, comments and proposals regarding introducing new languages under the Madrid System. In this regard, it should be noted that, as of now, the System operates in English, French and Spanish.

 

During the consideration and discussion of this issue, the Ukrainian delegation repeatedly delivered unequivocal statements regarding the impermissibility of allowing the Madrid System to function in the russian language.

 

For the ongoing 22nd Session of the Working Group, the WIPO Secretariat prepared updated documents on the costs and methods of ensuring the quality of translations, enhancement of the Terminology Database, updated statistics, and a plan for introducing a differentiated approach to translation practice.

 

During the discussion of this issue, the Ukrainian Delegation made a statement about Ukraine’s strong opposition to the very idea of including russian as a working language in the Madrid System. Mr Paduchak, First Deputy Director of the Ukrainian IP Office, delivered the following statement on behalf of Ukraine:

 

“As ever, we emphasise the lack of evidence regarding the needs of users of the Madrid System in introducing the russian language. We firmly believe that the lack of Russian language does not pose a significant issue for the applicants, who should be the main contributor to our efforts.”

 

The Ukrainian IP Office’s First Deputy Director also emphasised that the russian language, as indicated in WIPO documents, is the most expensive among the languages discussed for implementation (the other languages being Arabic and Chinese) in terms of costs for expanding the Terminological Database, as its introduction incurs the highest costs for translation and post-editing.

 

“As a conclusion from the updated statistics and the Detailed Draft Implementation Plan for the Enhancement of the Terminological Database, we confirm our strong stance on the insufficient justification of the need to introduce the russian language into the Madrid System. We also object to advancing the issue of its introduction, as it will only create more barriers and losses for the System,” told Mr Paduchak to the esteemed international audience.

 

 

At the same time, he spoke in favour of continuing the discussion of introducing other new languages and a more detailed study of this issue, considering a comprehensive analysis and the use of an inclusive and balanced approach.

 

Changing the Principle of Dependency

 

Also, the Ukrainian IP Office’s representatives joined the active discussion of the Working Group’s agenda item regarding the principle of dependence of the international trademark registration on the basic national registration or application (hereinafter “dependency”).

 

Speaking on behalf of Ukraine, Ms Terekhova, Head of the Ukrainian IP Office’s Trademark Law Unit, emphasised the importance of a thorough discussion of this issue. According to the statement she delivered, it is extremely important to promote such modifications of the Madrid System, which would benefit all interested parties, the core of which are the users of the System.

 

Considering the fact that there are several alternative proposals regarding the rules for duration and grounds for applying dependency on the Working Group’s agenda, the Ukrainian Delegation supported the Proposal by the Delegations of Australia, Chile, Ghana, the Philippines, the Republic of Korea and the United States of America (document MM/LD/WG/21/8 Rev.) as a basis for further discussions.

 

“This proposal contains the most extensive and detailed coverage of the debate in nearly 20 years. We believe that a comprehensive and clear argumentation of this proposal, considering the position of the majority of Member States (including the comments of the CEBS Group and the EU), can serve as a solid basis for further discussions,” stated Ms Terekhova.

 

 

Based on the results of the discussion regarding dependency, the Working Group decided:

 

• to continue the discussions on dependency based on documents MM/LD/WG/22/5 Rev., MM/LD/WG/22/14, MM/LD/WG/21/8 Rev.2 and MM/LD/WG/20/5;

 

• to request the WIPO International Bureau to conduct a survey among the agencies of the Contracting Parties and the Madrid System users on:

 

• • cases of bad faith in the Madrid System and the use of “central attacks”

 

• • other reasons referred to when filing motions for cancellation of international registration due to the termination of the validity of the basic application/registration;

 

• to hold inter-sessional informal consultations with interested members and observers to discuss the various proposals contained in the documents discussed at this session and other relevant matters with a view to identifying possible elements of harmonisation.

 

Read also: 

 

Ukrainian Delegation Participates in WIPO Working Group on Legal Development of Madrid System for International Registration of Marks

 

Important Outcomes of WIPO General Assembly for Ukraine: Continuation of International Support, Condemnation of russian federation and Involvement in Global Trends (in Ukrainian)