The Madrid Protocol: an analysis of the rationale regarding South Africa’s possible accession to the protocol relating to the Madrid Agreement concerning the International Registration of Marks.

Abstract

Where South Africa’s accession to the Madrid Protocol has not been confirmed by any state entity or government, there are numerous legal practitioners and academics who have alluded to the possibility of South Africa acceding to the Madrid Protocol. The objective of this study is to analyse whether various perceived advantages and practical disadvantages of acceding to the Madrid Protocol, will amount to actual consequences in South Africa. This study will expand on the arguments made in support of South Africa’s accession to the Madrid Protocol and will also give consideration to opposing perspectives. The purpose of this study is two-fold. Firstly, to establish whether filing a trade mark application, in terms of the Madrid Protocol, would result in effective protection of an international trade mark in South Africa. Secondly, to establish whether South African trade mark owners, who file trade mark applications in terms of the Madrid Protocol, would receive effective protection for their trade mark in foreign countries that are party to the Madrid Protocol. The academic aim is to provide a synthesis of the advantages and disadvantages of acceding to the Madrid Protocol, in respect of a South African context. The strategic aim is to make recommendations to policy-makers on whether accession to the Madrid Protocol will provide effective protection for South African International trade mark owners in foreign countries that are party to the Madrid Protocol, as well as whether accession to the Madrid Protocol will result in effective protection of an international trade mark in South Africa. The legal problem area relates to the fact that should South Africa accede to the Madrid Protocol, enabling legislation will need to be enacted in order to ensure the legality of international trade marks in South Africa. The policy problem area relates to whether or not South Africa should actually accede to the Madrid Protocol or not, in light of potential practical consequences of accession. Overall, the study provides direction as to whether South Africa should accede to the Madrid Protocol – where the question of South Africa’s accession to the Madrid Protocol assesses the positives and negatives, in a South African context, for both South Africans and foreign trade mark owners.