International Registration of Trademarks and Industrial Designs

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International Registration of Trademarks and
Industrial Designs

• WIPO Summer School (Geneva, July 7, 2005)
• Matthijs Geuze, Senior Counsellor, WIPO

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• International registration of marks
• Madrid Agreement and Protocol
• International deposit of industrial designs
• Hague Agreement

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Madrid and Hague Systems

• Legal Framework and Advantages
• Membership and Prospects
• Operations
• Main Procedures

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Madrid and Hague Systems
advantages

• National Route
• Different procedures
• Different languages
• Fees in local currency
• Recording changes several operations
• Through a local agent

• Madrid/Hague
• One procedure
• One language
• Fees in Swiss francs
• Recording changes one operation
• Local agent only if there is a refusal

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Madrid System
international registration of marks
Madrid Agreement (1891) Madrid Protocol
(1989) Common Regulations (1996 2000 2001 2003)
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Madrid System
basic principles

• Closed System
• Need of a Basic Application or Basic Registration
• International Application
• filed through Office of origin
• in one language
• containing a bundle of designations
• fees paid in Swiss francs
• Possibility refusal designated CPs within time
  limits
• Possibility to make subsequent designations
• Recording of changes in a single operation
• IR dependent on basic application/registration (5
  yrs)

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Madrid System
differences

• Agreement
• Open to States
• Basic Registration
• French
• Standard Fees
• Refusal Time Limit of 12 Months
• 5 Year Dependency

• Protocol
• and International Organizations
• or Basic Application
• plus English, Spanish
• or Individual Fees
• Possibility of Time Limit of 18 Months or Longer
• with Possibility of Transformation

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Fees for International Application

• Basic fee (653 Swiss frs)
• Complementary fee (73 Swiss frs) for each country
  designated
• Supplementary fee (73 Swiss frs) for each class
  beyond the third
• Distribution of complementary and supplementary
  fees (proportional to the number of times the
  CP has been designated, multiplied by a
  coefficient based on the examination system the
  CP has)
• Option under the Protocol individual fee
  (instead of a share in the revenues from the
  complementary and supplementary fees)

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Membership in the Madrid Union(77 by July 2005)
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(No Transcript)
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Legal Framework
implementation and further development

• Amended Common Regulations - April 2002
• Spanish language - April 2004
• Link with EC Trade Mark System - October 2004
• Scheduled Reviews

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Future Accessions
prospects

• Israel
• Jordan
• South Africa

• India
• Indonesia
• Malta

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Operations in 2004swift, reliable,
cost-effective processing

• Applications 29,473 (23)
• Renewals 7,345 (11)
• Subsequent designations 9,759 (12)

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Major User Countries in 2004
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General Overview of the Procedure

• basic registration
• Precondition OR
• basic application

International application
checks correspondence with the basic application/
registration
OFFICE OF ORIGIN
checks formalities records in the International
Register publishes in the International
Gazette notifies the designated Contracting
Parties
INTERNATIONAL BUREAU
OFFICE OF DESIGNATED CONTRACTING PARTY
substantive examination
12/18 months
12/18 months
refusal
no refusal effect as a national registration
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Procedure Before the International Bureau

• No irregularity registration
• in the International Register
• correction within time limits
• reception scanning examination
• by the
• International Irregularity
• Bureau irregularity letter
• no correction within time limits
• application considered abandoned

• classification of goods/services
• yes
• fees paid
• in whole/partly
• entitlement of the applicant
• designated Contracting Parties
• Vienna Classification

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Date of the International Registration

• reception by OO reception by IB
• date of the international
• registration
• reception by OO reception by IB
• date of the international
• registration

2 months
2 months
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Effects of the International Registration(Article
4)
From the date of IR or of subsequent designation
National application
International registration
If no refusal or if refusal withdrawn
National registration
protection runs retroactively from the date of
the international registration
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Limits to Refusal

• Time limit
• The refusal must be notified within 12 months
• or
• 18 months
• (under the Protocol only and where the CP has
  made a declaration)
• or
• 18 months
• (under the Protocol only and where the CP has
  made a declaration)

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• Limits as to the grounds for refusal
• not on formal grounds
• no objection to the classification of
  goods/services
• not on the grounds that the international
  registration is multi-class.

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Subsequent Designation

• Expansion of commercial activities
• Refusal ground that no longer applies
• New Contracting Party

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Change Ownership

• Request for the Recording of a Change of
  Ownership is Admissible
• if the transferee is entitled to use the Madrid
  System (i.e. has a connection with any CP)
• and for any designated CP bound by the same
  treaty as the CP of the transferee
• N.B. Country of Origin Remains Unchanged!

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Who can be recorded as new holder?
Spain
VIET-NAM
CP of the transferor
CP of the transferee
Germany
France
United Kingdom
EGYPT
China
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Other Changes

• limitation of the list of goods/services
• renunciation in respect of a designated CP
• cancellation in respect of all designated CPs
• invalidation in a designated CP
• recording of licenses
• ceasing of effect

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Information Technology Support
essential to ensure operational efficiency

• MAPS, IMAPS - a paperless office at WIPO
• Expanding electronic communications with offices
  and users (MECA standard)
• 23 receiving offices by end 2002
• 3 transmitting offices by March 2003 (CH, AU, BX)

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Information products
increasingly on electronic support
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Hague System
international registration of industrial designs

• Legal Framework
• London Act (1934) - 15 CPs
• Hague Act (1960) - 31 CPs
• Geneva Act (1999) - 18 CPs

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Hague Systempurpose

• Facilitating the protection of industrial designs
• in multiple countries
• by means of a single international registration
  at WIPO

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Hague System
basic principles

• Closed System
• International Application
• filed at WIPO
• in one language
• containing a bundle of designations
• fees paid in Swiss francs
• Possibility refusal designated CPs within time
  limits
• Recording of changes in a single operation

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Fees for International Application

• a basic fee
• (397 CHF for the first design and 19 CHF for
  each additional design)
• a publication fee
• (12 or 75 CHF, depending on whether the
  reproduction is in black and white or in colour)
• a designation fee for each designated States
  (42 CHF for the first design and 2 CHF for
  each additional design)
• an individual fee

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States Party to the Hague Agreement
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International Design Deposit
International deposit
through national Office if Office so permits
or requires
Irregularities
Applicant
International Bureau
rectify irregularities
no irregularities
International registration
Designated Contracting State
Designated Contracting State
Designated Contracting State
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The International Application

• An international deposit may be filed direct at
  the International Bureau.
• An international deposit is not based on a prior
  national or regional filing.
• An international deposit may be used to obtain
  protection in the State of origin.

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International Application Contents

• May comprise several different designs, up to a
  maximum of 100 (multiple deposit)
• All designs included must belong to the same
  class of the international classification of
  Locarno the international deposit is therefore
  monoclass
• The international application must contain, inter
  alia, a reproduction of the designs together with
  the designation of countries where protection is
  sought.

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Basic Principles

• What does the International Bureau do?
• - Formal examination
• - Recording in the International Register
• - Issuance of a certificate to the holder
• - Publication in the International Designs
  Bulletin
• (can be deferred up to 30 months)

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Publication

• An application complying with the prescribed
  formal requirements is registered by the
  International Bureau and such registration is
  published in the International Designs Bulletin.
• This Bulletin is published electronically, on
  WIPOs Internet site.
• Publication of registrations in this Bulletin
  takes the place of national publications

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Basic Principles

• Is there anything for the office of a designated
  Member State to do?
• - No specific task imposed by the Hague system.
  On the contrary
• - National offices do not act as an intermediary
• - National offices spared from formality
  examination
• - National offices spared from publication and
  registration
• - Member State receives every year its share of
  the fees, based on number of designations made of
  that State. Countries with a novelty examination
  office receive a greater share.

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Geneva Act

• makes the system more responsive to needs of
  users
• is expected to attract more countries
  (particularly those with examining Offices)
• allows for accession by regional
  registration systems