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The Madrid System

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The Madrid System Basic features and recent developments July 13-15, 2010 Israel Debbie Ronning Director, Legal and Promotion Division Debbie.Ronning_at_wipo.int – PowerPoint PPT presentation

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Title: The Madrid System


1
  • The Madrid System
  • Basic features and recent developments

July 13-15, 2010 Israel
Debbie Ronning Director, Legal and Promotion
Division Debbie.Ronning_at_wipo.int
2
The Madrid System for the International
Registration of Marks
  • Simple, Flexible, Time and Cost-Effective Option
  • http//www.wipo.int/trademarks/en/ (video)

3
Objectives
  • A simple, low-cost and effective system to
    facilitate trademark protection in export markets
    through
  • one central filing and registration procedure
    producing effects in one or more territories
    bound by the system
  • one central procedure to maintain and manage an
    international registration with effects in all
    territories concerned

4
Legal Framework I
  • Madrid Agreement (1891) latest revised in 1979
  • Madrid Protocol (1989) latest revised in 2007
  • Common Regulations as in force from
  • September 1, 2009
  • Administrative Instructions as in force from
    January 1, 2008
  • Law and Regulations of each Contracting Party
  • See at http//www.wipo.int/madrid/en/legal_texts/
  • http//www.wipo.int/madrid/en/members/ipoffices_in
    fo.html

5
Legal Framework II
  • Under the Madrid system
  • Treaties and Regulations
  • providing the basic principles and mechanism of
    the system governing the formal conditions for
    an international registration
  • Domestic Law and Regulations of a Contracting
    Party
  • governing the substantive conditions for granting
    the protection in each relevant territory

6
Madrid Union
7
Geographical Scope II
  • 82 MEMBERS PARTY TO THE PROTOCOL
  • Albania, Antigua and Barbuda, Armenia,
    Australia, Austria, Azerbaijan, Bahrain, Belarus,
    Belgium, Bhutan, Bosnia Herzegovina, Botswana,
    Bulgaria, China, Croatia, Cuba, Cyprus, Czech
    Republic, Democratic Peoples Republic of Korea,
    Denmark, Estonia, Egypt, European Union, Finland,
    France, Georgia, Ghana, Germany, Greece, Hungary,
    Iceland, Iran, Ireland, Israel, Italy, Japan,
    Kenya, Kyrgyzstan, Latvia, Lesotho, Liberia,
    Liechtenstein, Lithuania, Luxembourg, Madagascar,
    Moldova, Monaco, Mongolia, Montenegro, Morocco,
    Mozambique, Namibia, Netherlands (Netherlands
    Antilles), Norway, Oman, Poland, Portugal,
    Republic of Korea, Romania, Russian Federation,
    San Marino, San Tome and Principe, Serbia, Sierra
    Leone, Singapore, Slovakia, Slovenia, Spain,
    Sudan, 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
  • 3 MEMBERS PARTY TO THE AGREEMENT ONLY
  • Algeria, Kazakhstan and Tajikistan

www.wipo.int/madrid/en/members/ipoffices_info.html
8
Concept I Many Routes or One Route
Madrid Route

Bundle of National Applications /Registrations
9
Concept II Go National or International ?
  • 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

10
Basic features
  • An international application may be based on one
    or more applications or registrations
  • The Contracting Party may elect for 12/18 months
    refusal period
  • The Office of a Contracting Party may receive
    individual fees for designations
  • Central attack
  • In case an international registration is
    cancelled because the basic has been cancelled,
    the holder may transform his right into a
    national/regional applications
  • Fees for designation is transferred from WIPO to
    the Office

11
Advantages
  • One international application based on one or
    several basic applications/registrations
  • One language English, French or Spanish
  • One set of fees (CHF) to one Office
  • One registration number and one renewal date
  • The registration can be further extended
    geographically
  • All subsequent changes to the international
    registration may be recorded and have affect by
    one single procedure
  • Offices do not need to examine for formal
    requirements

12
International Filing and Registration Flow
Certify and forward the application to the IB
OFFICE OF ORIGIN
APPLICANT
Formal examination registration publication
(Gazette) Certificate Notification to all
designated CPs
Entitlement Basic mark Form
EN
INTERNATIONALBUREAU
Substantive examination under domestic law,
within 12/18 months
OFFICE
OFFICE
OFFICE
Refusal
13
Effects of the International Registration
  • Can be compared to a domestic application with
    protection as from the date of the international
    registration
  • Can be compared to a domestic registration in the
    absence of refusal

14
Benefits for Trademark Owners
  • Simple
  • 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
  • A single international application produces the
    same legal effect in many countries
  • A fixed dead line for confirmation or refusal the
    legal effect in each country concerned

15
Benefits for the IP Offices
  • No need to carry out formalities examination, and
    other services provided by the International
    Bureau (Gazette, Database ROMARIN etc.)
  • Income relevant to number of designations to the
    country

16
Benefits for the Government
  • Positive Effect on Economic Growth
  • Empowers SMEs
  • Promotes economic growth, by contributing to the
    opening of new markets and assisting in the
    development of exports
  • Creates a more favorable climate for foreign
    investment in the internal market
  • Advantages for the Governments Finance
  • Generates revenue

17
The Madrid System in Trademarks World
  • Some 965,000 trademark applications were filed
    worldwide by non-residents in 2007 of which
  • Some 370,000 are through the designation under
    the Madrid system (38)

18
International Registrations in Forceas of
December 31, 2009
  • 515,562 the total number of registrations in
    force, equivalent to
  • over 5.6 million active national/regional
    registrations
  • 169,939 trademark holders

19
General Profile 2009
35,925 International Registrations 35,925 International Registrations
Average Number of Designations 7.4
Average Number of Classes 2.6
Average Fee CHF 3,408
All Fees 57lt 5,000 CHF
20
Top Filer CPs in 2009
Origin No. Filing Share Growth
Germany 4,793 13.6 -22.9
EU 3,710 10.5 3.1
France 3,523 10.0 -16.5
USA 3,201 9.1 -13.1
Switzerland 2,671 7.6 -7.4
Benelux 1,968 5.6 -26.2
Italy 1,872 5.3 -32.2
China 1,358 3.9 -14.3
Japan 1,312 3.7 2.7
Russian Fed. 1,068 3.0 -10.3
21
Top Designated CPs in 2009
22
International Registrations and Subsequent
Designations -1996 - 2009
23
Information Products Services
  • Various legal texts, guide and notices
  • WIPO Gazette of International Marks
  • Fee Calculator on-line costing service
  • Madrid Simulator on-line filing guide tool
  • ROMARIN on-line search database
  • free access at http//www.wipo.int/madrid/en/

24
Comparison Agreement vs Protocol
  • Madrid Agreement
  • Madrid Protocol
  • Basic registration
  • French
  • Entitlement strict
  • 12 months refusal limit
  • Complementary fee
  • Country of origin
  • No transformation
  • Basic application/registration
  • French/English/Spanish
  • Entitlement more flexible
  • 12/18 months refusal limit
  • Individual fee
  • Office of origin
  • Transformation

25
Today and tomorrow
  • There is a strong focus on promoting better use
    of the Madrid System
  • Customer-service policy
  • Further automation of the procedures under the
    Madrid System
  • Madrid Filing Assistant
  • Madrid Portfolio Manager
  • Madrid Electronic Alert System
  • Monthly newsletter regarding the Madrid System

26
Future Development of the Protocol
  • Working Group on the Legal Development of the
    Madrid System for the International Registration
    of Marks
  • Mandatory Statements of Grant of Protection from
    01/2011
  • Ongoing discussion on how the Madrid Protocol
    would look like in the future to be able to
    accommodate the needs of the users
  • Proposal on the deletion of the basic mark
    requirement
  • Focus on simplifications for the benefits of
    applicants, holders, Offices and the
    International Bureau

27
Future accessions
  • Closing of the Madrid Agreement?
  • Algeria, Kazakhstan, Tajikistan 3 remaining
    members
  • South-America
  • Colombia
  • African countries
  • Tunisia
  • South-Africa
  • ASEAN-countries members by 2015
  • Other
  • India

28
  • Thank you for your attention!

29
Date of the international registration
  • The international registration will bear the date
    on which the international application was
    received by the Office of origin
  • The international application may use priority
    from basic application with the Office of origin
  • If received by the IB after the period of two
    months, then the date of registration will be the
    date of receipt in the IB
  • If late receipt resulted from an irregularity in
    a postal or delivery service, then the date of
    registration may still bear the date on which the
    international application was received or deemed
    to have been received by the Office of origin

30
Irregularities date in special cases
  • The date of international registration may be
    affected if any of the following important
    elements is missing from the international
    application
  • - indications allowing the identity of the
    applicant to be established and sufficent to
    contact him or his representative
  • - designation of the Contracting Parties where
    protection is sought
  • - a reproduction of the mark
  • - the indication of the goods and services for
    which registration of the mark is sought

31
Irregularities cont.
  • If the date on which the last missing element
    reached the IB is still within the two-months
    period, the international registration will bear
    the date on which the defective international
    application was originally received by the Office
    or origin
  • Where any of these elements does not reach the IB
    until after the expiry of this two-month period,
    the international registration will bear the date
    on which that element has reached the IB
  • If irregularity is not remedied within a
    three-months time limit, the applicaton will be
    considered abandoned

32
Example
  • An international application is filed with the
    Office of origin on May 1, and is received by the
    IB on June 1
  • The IB notices that no Contracting Party is
    designated
  • On June 5, the IB notifies the Office of origin
    of the irregularity and invites it to reply
    within September 5
  • If the Office remedies the deficiency on or
    before July 1, the date of the international
    application will be May 1

33
Example cont.
  • If the Office remedies the deficiency after July
    1, but on or before September 5, the date of the
    international registration will be the date on
    which the missing information was received by the
    IB
  • If the Office does not remedy the irregularity on
    or before September 5, the international
    application will be considered abandoned
  • The date of an international registration is not
    affected by any deficiencies other than those I
    have referred to

34
Effects of the International Registration
  • The effects of the international registration
    extend to the Contracting Parties expressly
    designated by the applicant in the international
    application
  • An international registration can be compared to
    a domestic application with protection as from
    the date of the international registration
  • An international registration can be compared to
    a domestic registration in the absence of refusal

35
Statement of grant of protection
  • When all the procedures before the Office have
    been completed before the expiry of the refusal
    period, the Office can either send to the IB a
    notification of provisional refusal or a
    statement of grant of protection
  • Rule 18ter entered into force on September 1,
    2009
  • Mandatory statement of grant of protection from
    January 1, 2011
  • A statement of grant of protection may concern
    several international registrations and may take
    form of a list

36
Statement of grant cont. (2)
  • The IB will convert such a list into individual
    communications that it transmits to the holders
    of the international registrations concerned
  • No legal consequence if a statement of grant of
    protection has not been sent by an Office
  • In the absence of the communication of a
    notification of provisional refusal within the
    time limit the Office has chosen (12/18 months),
    the mark is automatically protected in the
    Contracting Party concerned, for all the goods
    and services in question

37
Statement of grant cont. (3)
  • If the Office earlier has sent a provisional
    refusal, the Office has then two options
  • 1) An Office which has sent a notification of
    provisional refusal shall, once all procedures
    have been completed, send either
  • - a statement to the effect that the provisional
    refusal is withdrawn and that protection of the
    mark is granted for all goods and services
    requested, or
  • - a statement indicating the goods and services
    for which protection is granted

38
Statement of grant cont. (4)
  • 2) the Office may send a statement to the IB
    confirming total refusal of the protection of the
    mark
  • Where the Office has sent a statement to the IB
    either granting protection after provisional
    refusal or confirming total refusal, and where a
    further decision affects the protection of the
    mark, the Office shall, to the extent that it is
    aware of that decision, send to the IB a further
    statement indicating the goods and services for
    which the mark is protected
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