Title: Madrid%20System%20for%20the%20International%20Registration%20of%20Marks%20Basic%20Features%20and%20Recent%20Developments
1 Madrid System for the International
Registration of Marks Basic Features and
Recent Developments
Mr. Yves Ngoubeyou Senior Information
Officer Information and Promotion
Division International Registrations
Department Sector of Trademarks, Industrial
Designs and Geographical Indications
2Objectives and Principles
3A Global Trademark Registration System
- Facilitating trademark protection in export
markets - through a simple, expeditious and cost-effective
- procedure for
- - the central filing of applications
- - the central management of registrations
4Going Global
- Accelerated geographic expansion
- more attractive as more trading partners join
- increased flexibility in targeting markets with
respect to particular goods and services - Increased use
- by existing as well as new Contracting Parties
(developing as well as developed) - by small, medium and large enterprises (SMEs)
5Direct Filing Route / Madrid Route
6Advantages of the Madrid System
- National (direct) route vs. Madrid (inter.)
route -
- Different procedures Only one procedure
-
- Different languages One language 1 of 3
(E/F/S) - Different fees in local One set of fees in CH
- currencies (exchangerate
- implications)
-
- Management
of IRs -
- Recording of changes One procedure in respect
of all countries - (in each separate country a
- different procedure)
-
- Representative required Representative required
only in case of - from outset refusal
7Main Principles
- An additional route
- An optional route
- A closed system
- One registration - a bundle of rights
8Legal Framework and Geographical Scope
9Legal Framework
- Madrid Agreement (1891)latest revised in 1979
- Madrid Protocol (1989)
- as in force from September 1, 2008
- Common Regulationsas in force from September 1,
2008 - Administrative Instructionsas in force from
January 1, 2008 - Law and Regulations of each Contracting
Party-procedural System
10Madrid Union
(Including EC)
Agreement only 6Protocol only 28Agreement
and Protocol 50
11Madrid Union
1996-2008
12Madrid Union
Sept 2008
- 78 PROTOCOL
- Albania, Antigua and Barbuda, Armenia,
Australia, Austria, Azerbaijan, Bahrain, Belarus,
Belgium, Bhutan, Bosnia and Herzegovina,
Botswana, Bulgaria, China, Croatia, Cuba, Cyprus,
Czech Republic, Democratic Peoples Republic of
Korea, Denmark, Estonia, European Community,
Finland, France, Georgia, Ghana, Germany, Greece,
Hungary, Iceland, Iran, Ireland, Italy, Japan,
Kenya, Kyrgyzstan, Latvia, Lesotho,
Liechtenstein, Lithuania, Luxembourg, Madagascar,
Moldova, Monaco, Mongolia, Montenegro, Morocco,
Mozambique, Namibia, Netherlands, Norway, Oman,
Poland, Portugal, Republic of Korea, Romania,
Russian Federation, San Marino, Serbia, Sierra
Leone, Singapore, Slovakia, Slovenia, Spain,
Swaziland, Sweden, Switzerland, Syrian Arab
Republic, the Former Yugoslav Republic of
Macedonia, Turkey, Turkmenistan, Ukraine, United
Kingdom, United States of America, Uzbekistan,
Viet Nam, Zambia underlined Agreement
also - 6 AGREEMENT ONLY
- Algeria, Egypt, Kazakhstan, Liberia, Sudan,
Tajikistan
http//www.wipo.int/madrid/en/members/ipoffices_in
fo.html
13Basic Principles
14Basic Principles
- A need for a basic application or basic
registration (basic mark) in a CP of the Madrid
System - Attachment necessary between the owner and that
CP establishment, domicile, or nationality - IA must designate one or more other CPs with
common treaty - Indirect filing through OO
- A time limit for refusal
- Possibility of subsequent designation (SD)
- IR is dependent on basic mark for 5 years
- 10-year term of protection
- Centralized management of IR
15Entitlement to File an International Application
16Someone
- Natural Person
- Legal Entity
17 who has a connection
- Real and Effective Industrial or Commercial
Establishment (Establishment) - Domicile
- Nationality
18 with a Member of the Madrid Union
- Contracting State
- Establishment or domicile within territory of
State - National of State
- Contracting Organization
- Establishment or domicile within territory of
Contracting Organization - National of a Member State of Contracting
Organization - Individual Member States of Contracting
Organization do not have to be party to the
Agreement or Protocol
19Establishment
- Taken from Paris Convention, Article 3
- Excludes fraudulent or fictitious entities
- Some industrial or commercial activity must take
place (i.e., not a mere warehouse) - Need not be principle place of business
- Question of National Law
- Headquarters?
- Law under which establishment was constituted?
- Parent/subsidiary relationship?
- Others?
20Domicile
- Taken from Paris Convention, Article 3
- Question of National Law
- Natural person
- Can be defined narrowly or broadly
- Official authorization?
- Actual residence?
- More or less permanent situation of fact
- Generally believed intent was to be broad
- Legal entity
- Law under which entity was constituted?
- Actual headquarters?
- Others?
21Nationality
- Taken from Paris Convention, Articles 2 and 3
- Question of national law
- Natural person
- As accorded or withdrawn by the State in question
- Legal entity
- State Enterprise?
- Place of incorporation?
- Headquarters?
- Others?
22Comparison
-
- Agreement Protocol
- Members States States/Organizations
- Basic right Basic registration Basic
registration/application - Entitlement Cascade No
cascade - Fees Supplementary and Or individual fee option
- complementary
- Refusal 12 months Or 18 months or 18 months
- (opposition) options
- Dependency 5 years 5 years with possible
transformation - Subsequent Indirect filing Indirect
or direct filing
23Link with the CTM
- Obtaining CTM through IR but only under the
Protocol - Base an IA on a CTM-OHIM as Office of Origin
- New features in the Common Regulations
- indication of a second language (one of the 5
official EU languages), where EC is designated - claim of a seniority (MM17)
- possibility of opting-back in case the
designation of the EC drops before OHIM
(conversion into Madrid designations)
24Types of International Applications
25Types of Applications
Rule 1(viii)
Governed exclusively by Agreement all
designations made under Agreement
MM1
Governed exclusively by Protocol all designations
made under Protocol
Rule 1(ix)
MM2
- Governed by Agreement and Protocol
- some designations made under Agreement
- some designations made under Protocol
Rule 1(x)
MM3
26MM1
Why is this type of international application
governed exclusively by the Agreement?
A
A
Liberia
or
A
Sudan
Algeria
27MM1
Why is this type of international application
governed exclusively by the Agreement?
A
A
AP
A
Liberia
or
A
A
France
Sudan
28MM1 - Requirements
International Application
Office of Origin Filing basis Form Language
Cascade applies - Article 1(3) of the
Agreement Basic Registration MM1 English, French
or Spanish
Each Designation
Supplemental Complementary 12 months
Fees Refusal Period
29MM2
Why is this type of international application
governed exclusively by the Protocol?
P
P
Denmark
AP
AP
or
A
France
AP
Vietnam
30MM2 - Requirements
International Application
- Cascade does not apply
- Basic Registration or Basic Application
- MM2
- French, English or Spanish
- Office of Origin
- Filing basis
- Form
- Language
Each Designation
Supplemental Complementary, or Individual 12
months, or 18 months or 18 months
Fees Refusal Period
Madrid Protocol, Article 9sexies
If AP ? AP a declaration made under Article
5(2)(b), Article 5(2)(c) or Article 8(7) of the
Protocol ... shall have no effect ...
31MM3
Why is this type of international application
governed by the Agreement and Protocol?
A
A
Sudan
P
AP
AP
AP
Belarus
P
France
AP
Switzerland
32MM3 - Requirements
International Application
- Cascade applies - Article 1(3) of the Agreement
- Basic Registration
- MM3
- English, French or Spanish
- Office of Origin
- Filing basis
- Form
- Language
Each Designation under the Agreement
Supplemental Complementary 12 months
Fees Refusal Period
Each Designation under the Protocol
Supplemental Complementary, or Individual 12
months, or 18 months, or 18 months
Fees Refusal Period
Madrid Protocol, Article 9sexies
If AP ? AP a declaration made under Article
5(2)(b), Article 5(2)(c) or Article 8(7) of the
Protocol ... shall have no effect ...
33Repeal of the Safeguard Clause
34Review of the SC
- Article 9sexies(2)
- Extraordinary power to the Assembly to restrict
or repeal the SC - Review by Madrid Working Group
- Met 4 times 2005-2007
- Recommended a repeal of the SC
- Assembly adopted amendment
- Entry into force is September 1, 2008
35MM1
Pre-September 1, 2008 Safeguard Clause no
application in this example
i.e., an Agreement-only filing
A
A
A
A
Liberia
or
A
AP
Sudan
France
36Pre-September 1, 2008 Application of the
Safeguard Clause
Madrid Protocol, Article 9sexies (Safeguard
Clause)
. . . the provisions of this Protocol shall have
no effect . . .
A
A
AP
A
Sudan
or
A
France
AP
i.e., still an Agreement-only filing
Vietnam
37MM3
Pre-September 1, 2008 Application of the
Safeguard Clause
A
A
Egypt
P
AP
P
AP
Denmark
A
France
AP
A mixed (AP) filing
Switzerland
38Agreement-only Filings and Mixed Filings
- Applicants must
- Observe the cascade
- Have a basic registration in the Office of origin
- - Common Regulations Rule 9(5)
39New Article 9sexiesSeptember 1, 2008
- (1)(a) This Protocol alone shall be
applicable as regards the mutual relations of
States party to both this Protocol and the Madrid
Agreement - - i.e., AP / AP situations
- Note No change to Rule 9(5) of the Common
Regulations !
40- Remember
- The basic principle remains unchanged
- Application that is Agreement-only or Agreement
Protocol -
- Cascade Basic Registration
- But
- After repeal of Safeguard Clause, this priniciple
will be - hugely diluted, because of the consequences of
the repeal.
41From September 1, 2008
This is no longer an Agreement-only filing now
a mixed (AP) filing - So it is still subject
to cascade basic registration
A
A
AP
AP
Liberia
or
P !!
France
AP
Vietnam
42From September 1, 2008
P !!
AP
France
P !!
P !!!
AP
AP
Italy
P
Germany
P
Japan
From Sept. 1, 2008, because of the repeal of the
SC, a filing such as this will no longer be
mixed, but will, instead be a Protocol-only
filing
432008 Agreement-only States
- Algeria
- Egypt
- Kazakistan
- Liberia
- Sudan
- Tajikistan
44Languages and Fees
- Rule 6
- French, English, Spanish in all new
situations - (after repeal of SC, only 0.3 of applications
will - be Agreement-only)
- Exception transitional situations (Rule 40(4))
- Schedule of Fees
- All Standard Fees From 73 to 100 CHF
- (1st increase since 1996)
- All amendments enter into force on September 1
45Statistics
46Share within Global Trademark Activity
- Over 200 different national/regional trademark
jurisdictions worldwide - Some 700,000 trademark applications filed by
non-residents annuallyof which - Some 350,000 are designations in international
registrations (Madrid System)
47Major User Contracting Parties(Applications
Filed)
2008
2007
No. Filings Growth Share Jan-Oct
- Germany 6,090 7.5 15.2 5004
- France 3,930 6.1 9.8 3205
- US 3,741 18.8 9.4 3172
- EC 3,371 37.9 8.4 3079
- Italy 2,664 -9.9 6.7 2129
- Switzerland 2,657 7.7 6.7 2360
- Benelux 2,510 -4.9 6.3 2037
- China 1,444 8.7 3.6 1298
- UK 1,178 11.8 2.9 1007
- Japan 984 19.8 2.6 1039
- Morocco 81 -21.8 0.2 72
- Algeria 2 -92.3 0.05 2
- Egypt 15 -31.8 0.037 28
- Kenya 1 -800 0.01 4
- Mozambique 1 - 2
- Sudan
48Most Designated CPs
2008
49International Registration Profiles
50International Registrations in Force
- International Register contained on June 30,
- 2008
- Some 499,000 registrations in force, representing
- Some 5.5 million active designations, belonging
to - Approx. 164,000 different right holders (many of
them SMEs) - Average number of DCP in an IR - 8.2 CPs
- As from January 2008 until October, the
International Bureau received 33,618 applications
51General Profile 2007
52Most popular classes of GsSs recorded in 2007
- Class 9 (computer hardware and software and other
electronical apparatus of a scientific
nature)-8.5 of the total, - Class 35 (services, such as office functions,
advertising and business management)-6.4, - Class 25 (clothing, footware and headware)-5.3 ,
- Class 42(services provided by pharmaceuticals
-4.7.
53Recent Growth
23 7
14 42
10 3
9 12
54Trademarks in Force (June 2008)
55Some Top Users (2007)
Holder CP
Henkel DE
Janssen Pharmaceutica BE
Novartis CH
LOreal FR
Unilever NL
Société des Produits Nestlé CH
Sanofi-Aventis FR
Siemens Building Technologies Fire Security Products DE
BASF DE
ITM Enterprises FR
Bayer DE
BIOFARMA FR
Richter Gedeon HU
Lidl Stiftung DE
56Communication and Information
57Electronic Communication Constantly Expanding
- With Offices of Contracting Parties
- 6 offices (Australia, Benelux, Switzerland, EC,
Republic of Korea, US) transmit IAs to IB
electronically - 4 offices (EC, Japan, Russia and US) transmit
refusals electronically to the IB - 4 offices (Australia, Benelux, EC and US) send
modifications electronically to the IB - 48 offices receive various notifications from IB
electronically (of these 5 began in 2007 -
Bahrain, Botswana, Cyprus, Egypt and Monaco) -
58Information Products andServices (1)
Legal Texts and Guide - paper publication
- on-line (free of charge) WIPO Gazette
- paper and CD subscription - on-line
(free of charge) Fee calculator - on-line
service (free of charge) Renewal - on-line
service Madrid Express - on-line database (free
access) Romarin - on-line database (free
access) - DVD subscription (as from Oct 3,
2008 - additional enlarged
information available on Romarin
database in relation to the status
of a protection of a mark)
http//www.wipo.int/madrid/en/services
59Information Products andServices (2)
- Simulator
- is designed to respond specifically to individual
needs in using the Madrid System - at the end of the simulation, it provides you
with an estimated cost of registering your mark - http//www.wipo.int/madrid/en/madrid_simulator/
60Information ConcerningProcedures Before IP
Offices
- The legal framework of Madrid system includes the
national trademark legislations of all Madrid
Member states - In order to improve information concerning this
issue, WIPO provides specific information in
regard to procedures before IP Offices -
- 74 country profiles to date
http//www.wipo.int/madrid/en/members/ipoffices_i
nfo.html
61Recent Developments in the Madrid System
- As of Sept. 1, 2009, a statement of grant of
protection will be obligatory - improve accessibility of information regarding
the fate of IRs in designated CPs - Enlarging the language regime
- study to be conducted by WIPO for introducing
Arabic, Russian, Chinese and Portuguese as
official filing languages
62Recent Accessions
- In the last 5 years 22 new Members joined MP
- most recent
- Azerbaijan (P) April 15, 2007
- San Marino (P) September 12, 2007
- Oman (P) October 16, 2007
- Madagascar (P) January 28, 2008
- Ghana (P) September 16, 2008
- Sao Tome and Principe (P) December 8, 2008
- Bosnia and Herzegovina (P) January 29, 2009
63Prospective Accessions
- Most promising
- Mexico, Israel, Tajikistan(A), Kazakhstan (A),
Bosnia and Herzegovina (A) - Under consideration
- Brazil, Canada, India, Indonesia, New Zealand,
Thailand, Sudan (A), South Africa
64Promoting the Madrid System in LDCs
- In order to improve the ability of trademark
owners from LDCs to benefit from the Madrid
System, WIPO offers applicants, originating from
LDCs, a 90 reduction in the basic fee, since
January 1, 2006 - Bhutan, Lesotho, Liberia, Mozambique, Sierra
Leone, Sudan, Zambia, Sao Tome and Principe - http//www.wipo.int/ldcs/en/country
65Our Aim at WIPO
- Make the Madrid System ever more
- attractive
- flexible
- user friendly
- cost effective
- to meet the expectations of
- rights holders
- representatives
- Contracting Parties
-
66Thank you
yves.ngoubeyou_at_wipo.int