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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
2
Objectives and Principles
3
A 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

4
Going 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)

5
Direct Filing Route / Madrid Route

6
Advantages 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

7
Main Principles
  • An additional route
  • An optional route
  • A closed system
  • One registration - a bundle of rights

8
Legal Framework and Geographical Scope
9
Legal 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

10
Madrid Union
  • 84 members

(Including EC)
Agreement only 6Protocol only 28Agreement
and Protocol 50
11
Madrid Union
1996-2008
12
Madrid 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
13
Basic Principles
14
Basic 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

15
Entitlement to File an International Application
16
Someone
  • 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

19
Establishment
  • 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?

20
Domicile
  • 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?

21
Nationality
  • 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?

22
Comparison
  • 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

23
Link 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)

24
Types of International Applications
25
Types 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
26
MM1
Why is this type of international application
governed exclusively by the Agreement?
A
A
Liberia
or
A
Sudan
Algeria
27
MM1
Why is this type of international application
governed exclusively by the Agreement?
A
A
AP
A
Liberia
or
A
A
France
Sudan
28
MM1 - 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
29
MM2
Why is this type of international application
governed exclusively by the Protocol?
P
P
Denmark
AP
AP
or
A
France
AP
Vietnam
30
MM2 - 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 ...
31
MM3
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
32
MM3 - 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 ...
33
Repeal of the Safeguard Clause
34
Review 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

35
MM1
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
36
Pre-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
37
MM3
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
38
Agreement-only Filings and Mixed Filings
  • Applicants must
  • Observe the cascade
  • Have a basic registration in the Office of origin
  • - Common Regulations Rule 9(5)

39
New 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.

41
From 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
42
From 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
43
2008 Agreement-only States
  • Algeria
  • Egypt
  • Kazakistan
  • Liberia
  • Sudan
  • Tajikistan

44
Languages 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

45
Statistics
46
Share 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)

47
Major 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

48
Most Designated CPs
2008
49
International Registration Profiles
50
International 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

51
General Profile 2007
52
Most 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.

53
Recent Growth
23 7
14 42
10 3
9 12
54
Trademarks in Force (June 2008)
55
Some 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
56
Communication and Information
57
Electronic 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)

58
Information 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
59
Information 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/

60
Information 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
61
Recent 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

62
Recent 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

63
Prospective 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

64
Promoting 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

65
Our 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

66
Thank you
yves.ngoubeyou_at_wipo.int
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