The Madrid system An update on the latest development

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The Madrid systemAn update on the latest
development

• Israel
• February 2012

Debbie RoenningDirector, Legal Division, Brands
and Designs Sector
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The Madrid System

• A centralized filing mechanism
• A one-stop shop for trademark holders to obtain
  and maintain trademark protection in export
  markets
• An option to the national route
• A purely procedural treaty
• The domestic legislations of the designated
  Contracting Parties set the conditions for
  protecting a trademark and determine the rights
  which result from protection

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Madrid System
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Accessions

• Recent accessions to the Madrid Protocol
• 2010 Sudan, Israel, Kazakhstan
• 2011 Tajikistan (as of June 30, 2011)
• Future accessions?
• Colombia, Costa Rica and Dominican Republic
• ASEAN countries by 2015
• India
• South-Africa
• Barbados, Jamaica and Trinidad Tobago
• Malta
• New Zealand

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Advantages of the Madrid system

• One international application based on a basic
  application/registration
• One language (English, French or Spanish)
• One set of fees in one currency (CHF)
• One registration number and one renewal date
• The registration can be further extended
  geographically
• All subsequent changes to the international
  registration may be recorded with the IB and
  have effect through one single procedure
• Offices do not need to examine for formal
  requirements
• Statement of grant of protection

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The National Route vs. the Madrid Route

• Many Offices for filing
• Many application forms
• Many languages
• Many currencies
• Many registrations
• Many renewals
• Many modifications
• Foreign attorney needed from filing

• One Office for filing
• One single application form
• One language (E/F/S)
• One currency (CHF)
• One international registration
• One renewal
• One modification
• Foreign attorney first needed in case of refusal

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Basic features

• Entitlement
• An international application may be based on one
  or more applications or registrations
• The fees payable in connection with the
  application
• The basic fee (CHF 653 or 903)
• A complementary fee for each designated
  Contracting Party with supplementary fee OR
  individual fee
• Scope of protection to be determined by
  designated Contracting Party
• The Contracting Party may elect for 12/18 months
  refusal period

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Basic features (2)

• Statement of grant of protection
• Subsequent designation
• The 5 years dependency period
• Central attack Ceasing of effects
• Transformation of the International registration
  into national applications
• 10 years term of protection with renewal every 10
  years

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International Registration Procedure

International Application
Verifies, certifies and forwards the
International application to the International
Bureau
OFFICE OF ORIGIN
Formal examination only. Inscribes the
International registration in the International
Register, publishes it in the Gazette, issues a
certificate and sends notifications to the
designated Contracting Parties
INTERNATIONAL BUREAU
OFFICE OF THE DESIGNATED CONTRACTING PARTIES
Substantive examination. Decision on refusal or
granting of rights based on their domestic
legislation

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Benefits for Trademark Owners

• Simple and economical procedure
• A single set of simple formalities
• A single filing Office
• Low registration fees
• No need to pay foreign agents for filings
• No need to pay translation of the paperwork into
  several languages
• Effective procedure
• A single international application produces the
  same legal effect in various countries
• A fixed deadline for the confirmation or refusal
  of the legal effects in each designated country

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Benefits for the Offices and Government

• The Contracting Parties can focus on substantive
  examination
• The Madrid system has a positive effect on
  economic growth
• It empowers SMEs
• It promotes international trade by contributing
  to the opening of new markets and assisiting in
  development of export
• It creates a more favorable climate for foreign
  investment in the internal market

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Benefits for Local Agents

• The Madrid Protocol is optional and it does not
  replace the direct filing route
• Applicants would need the services of local
  agents at filing stage or at post-registration
  stage
• Increased designations will create more business
  opportunities (substantive work), like searches,
  refusals, oppositions, request for cancellations,
  dispute settlements, license and assignments
  contracts, and enforcement
• Post-registration activity may compensate for any
  reduction in local filing activity

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Recent developments

• Mandatory Statements of grant of protection as of
  January 1, 2011
• Two anniversaries in April 2011
• 120 years of the Madrid system (April 14, 1891)
• 15 years of operations of the Madrid Protocol
  (April 1, 1996)
• Translation of certain documents upon request
• Statement of grant of protection following a
  provisional refusal
• Limitation of the list of goods and services

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Online Information Services

• Legal texts, Guide and Information Notices
• WIPO Gazette of International Marks
• E-Renewal Tool
• Fee Calculator Costing service
• Madrid Simulator On-line filing guide tool
• Goods Services Manager A WIPO-administered
  database of accepted indications of goods and
  services
• ROMARIN On-line search database
• Dynamic Madrid Statistics
• free access at http//www.wipo.int/madrid/en/

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Thank you for your attention
debbie.roenning_at_wipo.int