The aim of these articles is to keep our Clients and Associates updated about developments in the sector of Intellectual Property in general and our firm in particular. In this way, we wish to provide a broader view of the tools that the field of trade marks, domain names, patents, designs and related rights offers to entrepreneurs to enhance and protect their efforts in researching and developing new solutions and ideas.
Madrid System Developments: Insights from the 23rd session of the WIPO working group in Geneva
Manuela Bruscolini of our Firm, Member of the MARQUES International Trade Mark Law and Practice Team, participated as representative of MARQUES, the famous international association representing the brand owner interests, in the 23rd Session of the WIPO Working Group on the Legal Development of the Madrid System for the International Registration of Marks, which took place in Geneva from 22 to 26 September.
The session brought together representatives of contracting parties, observers and associations of right holders, like MARQUES, to discuss how to modernize and simplify the Madrid System — the cornerstone of international trademark registration.
Key topics discussed in Geneva
The Working Group addressed several themes of direct relevance to trademark practitioners:
- Procedural modernization - proposals to improve communication flows, digital tools, and transparency within the Madrid System.
- New language options - discussions on the “international registration language option,” which could make filings and correspondence under the System more accessible to a wider user base.
- Review of the dependency principle and “central attack” - examining potential reforms to mitigate the risk of international registrations being cancelled due to the invalidation of their basic marks.
- Clarification of terms and harmonization of goods and services - the use of unified databases to improve consistency and legal certainty across jurisdictions.
- User-centric improvements - simplification of fees, procedures, and post-registration operations to make the System more efficient and predictable.
In short, the Madrid System is evolving to become more accessible, transparent, and business-oriented - a development that benefits both users and their IP advisors worldwide.
Why this is the right moment to promote international filings
The ongoing reform discussions provide a compelling argument for advising clients to expand their trademark portfolios internationally:
- Streamlined coverage and cost efficiency
The Madrid System remains the most cost-effective way to secure protection across multiple jurisdictions with a single application and centralized management. - Strategic anticipation
By filing now, clients can benefit from the current system while positioning themselves ahead of forthcoming procedural enhancements. - Enhanced enforcement value
A registered international mark significantly increases a brand’s credibility and enforceability across jurisdictions, serving as a powerful deterrent to infringement. - Key designations: the EU
The European Union, including Italy, continues to be an economically strategic market with strong, harmonized IP frameworks. Including these designations strengthens a brand’s position in Europe and demonstrates global reach.
The critical role of local representatives for Italy and the EU
While the Madrid System centralizes the filing and management of international registrations, local expertise remains essential both before proceeding (in case for instance of trademark availability searches) and after filing once a designation enters the examination phase at national or regional offices. In particular, provisional refusals issued by the Italian Patent and Trademark Office (UIBM) or the EUIPO must be handled promptly and precisely.
Applying to a local representative offers multiple advantages:
- Trademark clearance searches, i.e. effectively evaluating whether the proposed brand is a) available and b) protectable
- Reviewing class specifications, ensuring alignment with Italian and EUIPO practice.
- Timely management of deadlines - local attorneys are familiar with procedural time limits and administrative practices, ensuring swift and compliant responses.
- Effective response to provisional refusals - local counsel can draft reasoned arguments in line with national practice, improving the likelihood of overcoming objections.
- Representation in opposition or appeal procedures - when conflicts arise, local representation is mandatory and strategically invaluable.
- Tailored strategic advice - experienced local practitioners provide guidance on prior-rights conflicts, coexistence agreements, and enforcement strategies.
- Integrated portfolio management - coordinating local and international rights ensures consistency between national, EU, and Madrid registrations, minimizing dependency-related risks.
Conclusion
The 23rd Session of WIPO’s Working Group has reaffirmed the Madrid System’s ongoing modernization and its central role in global brand protection. For international IP firms, this is the perfect time to promote the use of the Madrid System and to establish partnerships with trusted local representatives for the management of provisional refusals and oppositions or for preliminary trademark clearance searches.
Please do not hesitate to contact us for any need in the Eu and in Italy, we will be happy to be of help to ensure that clients’ brands receive in our jurisdictions the best comprehensive protection they deserve.
