With a bill pending in Congress on its accession to the Madrid Protocol, Colombia could become the first Latin American country (apart from Cuba) to join the international trademark system. Bill 061 was approved by the Senate in December and is now waiting to be considered by the House of Representatives. If passed, it might provide the momentum Madrid System proponents seek throughout the region.

In a March letter to Congressman Eduardo Jose Castaneda Murillo, INTA President Gerhard Bauer urged the Colombian House of Representatives to pass Bill 163 in the interests of promoting global trade. “As a major trading partner in the region, Colombia can take the lead in its approach to economic development through adopting pragmatic policies designed to promote trade and social well-being simultaneously,” Bauer wrote. “INTA also believes that the Protocol will be an instrument to help local business, which in turn will contribute to Colombia’s economic growth and will facilitate the registration of trademarks coming from abroad.”

For years, INTA and other IP associations, as well as the USPTO and WIPO, have promoted the benefits of the Madrid Protocol in Latin America, especially with the launch of INTA’s advocacy strategy in 2006. INTA, for example, has held a number of seminars to educate industry and politicians in the region about the advantages of joining the System. “We think it’s important that those jurisdictions, where consideration is taking place, get to hear about other experiences,” says Laura Cruz, INTA’s external relations manager for Latin America. “We have invited legal counsel from Spain, for instance, to speak at our seminars about how to overcome the main challenges the Protocol presented.”

The WIPO-administered Madrid Protocol offers many advantages to trademark owners, and more than 80 countries are already members. It enables owners of a trademark registration in one country to extend that registration to other member states through a centralized system. This results in benefits such as savings on the initial fees, more efficient record keeping and a single renewal date.

But, despite extensive discussions and the introduction of Spanish as the third working language of the System, most Latin American countries have yet to be convinced of the benefits. This is partly due to concerns among trademark practitioners about the impact membership will have on workloads. Says Olof Fickert, of Herrero & Asociados in Madrid and a former subcommittee chair of INTA’s Madrid System subcommittee: “The main concern of many Latin American trademark attorneys was the loss of the trademark application filing work, which, in my opinion, is precisely that part of our ‘IP world’ that is continuously losing economic interest,” he says. “IP consultancy, legal advisers’ and lawyers’ activities support the core of our profession.”

Now, supporters of accession say they can sense a mood shift. “I am convinced of the domino effect that one country’s consent in the region will have over the others,” says Damaso Pardo, of Perez Alati Grondona Benites Arntsen & Martinez de Hoz, in Argentina. “Once Colombia joins Madrid, trademark attorneys will be able to develop an expertise in the international system, which will put them in a stronger position than the rest of the region’s lawyers.”

Cruz adds that INTA is optimistic that the Colombian government recognizes the importance of intellectual property, especially when it comes to trade policies. “There is a realization of the need to establish a modern and solid IP system, and with this comes the Protocol, which sets in place a fast and cost-effective trademark registration system,” she says.

Across the region

While Colombia’s accession will be a landmark for the Madrid System, there is still much work to be done in raising awareness in other regions. But behind the scenes a lot of work is going on.

In Brazil, for example, Congress members have shown interest in possible accession to the system. “They were keen to stress that while the benefits for foreign multinationals are obvious, the advantages of Madrid to Brazilian businesses are, if anything, even more compelling,” says Richard Heath, who runs a private practice in Cambridge, UK, and was INTA’s President in 2009. “At a time when Brazilian business is investing heavily internationally, this would only be a good thing.”

Eduardo Magalhães Machado, of Montaury Pimenta Machado & Lioce in Brazil, says in the past, local businesses weren’t so receptive. “In my opinion, one of the main reasons why the Protocol has not been successfully received by the business community in the past was due to the lack of information about its benefits,” he explains. A group of professionals in recent years has worked with INTA and MARQUES to organize seminars, visits and meetings to educate the business community. WIPO also arranged for members of Congress to see the workflow of the system at its headquarters in Geneva.

There seemed to be progress when former President Luiz Inácio Lula da Silva requested that Congress examine the country’s potential accession to the Protocol. “Unfortunately, due to the bureaucratic issues at the Civil Cabinet, the entire process was delayed,” Machado says. Now, the new Brazilian President Dilma Vana Rousseff has taken up the topic and a bill could soon be introduced in Congress. “I know that this will happen, simply because that is the desire of the people that will eventually use the Protocol,” Machado says. “The matter under discussion is when.”

In Argentina, meanwhile, despite increased activity in the past five years, talks of accession stalled in 2009, with the campaign for Congressional elections. Before then, the House of Representatives had sent a formal petition to the executive recommending ratification of the Protocol. Authorities, congressmen and diplomats have attended seminars and meetings to move the discussion forward, but the progress towards accession is slow.

“The union representing the largest Argentine companies has not pushed the Madrid System, and the small and medium enterprises that will benefit most from the system do not have enough clout or resources to lobby for Madrid,” Pardo says. “Politicians are always otherwise engaged, leaving projects like the Madrid System off the agenda.”

Looking ahead

Given the hurdles other countries have faced, proponents of the Madrid System are counting on Colombia to pave the way for the rest of the region. In the next few months, the House of Representatives will look at the bill at committee level and then in plenary session.

Fickert says he has met with open-minded and what he calls “pro-MP” colleagues who recognize the benefits of joining the Protocol, among them direct access to the Community trade mark. “With respect to the public IP stakeholders, my impression was some years ago that there did exist in many countries a positive attitude in terms of recognition of possible benefits for their countries’ internationally active enterprises and a shy willingness to adapt their own infrastructures accordingly,” Fickert adds.

While large enterprises seem most informed about the advantages of an international trademark system, it is the small- and medium-sized companies INTA especially hopes to galvanize. Cruz says they are the ones most likely to benefit from the system. “There is still a lack of understanding and awareness of what advantages the Protocol can provide,” she adds.

Still, there has been significant progress in recent years with government authorities and local trademark offices. Colombia, INTA members say, is just the beginning. “Once one or two countries sign up, the process will snowball,” Heath says. “The administrative systems in Latin America have seen vast improvements to efficiency in recent years, and I have every confidence they would be able to cope.”

INTA and the Madrid Protocol in Latin America

2006 INTA hosts seminars in El Salvador with the collaboration of the USPTO and in Argentina, collaborating with the Argentine Foundation EXPORTAR and the Association of European Trademark Owners (MARQUES), to promote the Protocol.

2007 In a letter to EU authorities regarding its free trade agreement negotiations with Argentina, INTA writes of the local industry’s interest in the system: “There is also a receptive attitude from the Argentine authorities to support the ratification of the Madrid Protocol.”

The Association meets with members of AMCHAM/Nicaragua, the Nicaraguan Association for Export and the National Registry Office. Orlando Solorzano, the Nicaraguan Minister for Industry Trade, and Ambrosia Lezama, Director of the National Registry, join INTA in a seminar.

2008 INTA promotes the Protocol in Lima, Peru.

2009 Letters are written to Colombian Congress in support of Bill 277/09 as well as Brazil as it considers accession to the Protocol.

2010 The Association applauds the Colombian Senate’s passage of Bill PL061/10 in December.

2011 INTA President Gerhard Bauer sends a letter to the Colombian House of Representatives in support of Bill 163. He calls the Madrid Protocol one of the most important international trademark treaties.