Madrid System for the International Registration of Marks
Madrid Online services: Updates
Prague, April 27, 2015
Normunds LAMSTERS Acting Coordinator, Processing Team 1, Operations Division, Madrid Registry
Content of the Presentation
Overview of Madrid Online Services
Madrid Goods and Services Manager (MGS)
E-Renewal
E-Subsequent Designation
Global Brand Database
Misleading invoices
2
Abbreviations
CP – Contracting Party
dCP – Designated Contracting Party
G&S – Goods and Services
IB – International Bureau
IR – International Registration
OO – Office of Origin
3
Overview of Madrid Online Services
4
Development of Madrid Online Tools and Services
2003 - 2009 2010 - nowMadrid Fee Calculator Madrid Goods & Services - MGSROMARIN Madrid Real Time Status - MRSE-Renewal Madrid Portfolio Manager - MPMInternational Application Simulator Madrid Electronic Alert - MEAE-Payment E-Subsequent designationStatistics under the Madrid System Madrid Office Portal - MOPWIPO Gazette of International Marks
5
E-Renewal
6
7
E-Payment
Only for payment of fees mentioned in irregularity letters of new applications or modificationsPayment by credit card or current account with WIPO
8
Madrid Goods & Services Manager (MGS)
9
MGS – Main features
Online tool for compiling lists of goods and services
Launched in December 2010
Includes terms from the Nice Classification, frequent terms extracted from the Madrid International Register and terms from other databases
More than 50,000 English terms
10
MGS Functions (1)
BROWSE to select goods and services from a “pick-list” of terms pre-accepted by WIPO
SEARCH acceptable terms using keywords
CHECK ACCEPTANCE of free-text terms:• by WIPO• by a designated Contracting Party (dCP)
11
MGS Functions (2)
TRANSLATE into any of various available languages
• National filing: when an applicant does not speak the national language, e.g. French Turkish
• International filing: when the national language is not a Madrid-filing language, e.g. Korean English
PRINT lists in any chosen language
EXPORT / IMPORT lists of terms to save and re-use later, in any chosen language
12
MGS - Languages
17 languages available as of February 2015:
- English, French, Spanish (Madrid System filing languages)
- Arabic, - Korean,- Chinese, - Norwegian,- Dutch, - Portuguese, - German, - Russian,- Hebrew, - Serbian - Italian, - Turkish- Japanese, - Ukrainian
13
MGS – Exclusive featuresDisplay of Acceptance / Rejection
14
MGS – Exclusive featuresDisplay of Acceptance / Rejection
15
MGS - Exclusive featuresWarning on synonymous terms
16
MGS - Exclusive featuresUser-friendliness
NICE indications are clearly identifiedOne-click limitation of results to NICE indicationsClear identification of all classes containing results One-click restriction of results to a selected classNo cumbersome paging to move through the resultsUser list always visibleFree-text terms can be typed with or without segmentation by semicolonsOne-click access to translationPrint or translate lists in a format directly usable for filing
17
MGS - Future Developments
Extended functionalities:
Improved display:- Search by Nice basic number- Asian similar group codes (CN, JP, KR)
Extension of EXPORT function:- More formats (Excel, PDF, Word, TXT)- Direct to MM Form for international registration
18
MGS - Advantages
Terms pre-accepted by WIPO and many IP offices
Alignment with the latest edition of the Nice Classification
Classification guidance for users
Exclusive information on terms rejected by some IP Offices
Translation into any MGS language (in total 17) for national and/or international filing
Fewer irregularity notices issued by the IB
Fewer provisional refusals from DCPs
19
MGS – “Win-Win-Win” situation
Trademark applicants- User-friendly tool- Faster registration- Higher predictability as to the outcome of
examination in DCPs
National Offices- As Office of Origin- As Office of a designated Contracting Party
International Bureau- Faster examination and registration
20
E-Renewal
21
E-Renewal
Fees calculated using the default rules in the Common Regulations
For the classes in the registration, E-Renewal takes into account cancellations
For CPs with individual fees, E-Renewal takes the classes effectively protected following limitations, partial change in ownership, final and further decisions and invalidations
If the holder wants to renew for more classes than those protected, following final and further decisions, he needs to submit a form MM11
22
23
24
25
26
27
28
29
TR in KR for 1 class
30
E-Subsequent designation
31
32
Global Brand Database
33
Global Brand Database
Search over 17,830,000 records relating to internationally protected trademarks, appelations of origin, armorial bearings, flags and other state emblems, as well as names, abbreviations and emblems of intergovernmental organizations
Collections of 25 databases:International: Madrid Trademarks, Lisbon Appelations of Origin,Article 6ter emblemsNational e.g., Algeria, Australia, Canada, Denmark, Egypt, Estonia, Israel, Indonesia, Japan, Morocco, New Zealand, Philippines, Singapore, Switzerland, United States of America
34
35
Misleading Invoices
36
Misleading Invoices: Definition
Fake or misleading documents: unsolicitedcommunications received by users of the Madrid System
Holders, representatives and IP Offices report on communications received from service providers of various sources and origins
Documents invite payment of fees for services confusingly similar to those provided by WIPO
Generated by entities monitoring publicly-available registration details and contact information (WIPO Gazette, ROMARIN, etc.).
6
Misleading Invoices: Current Situation
Number of fraudulent or misleading invoices increasing
At national, regional and international levels (CTM and Madrid System)
Renewals of international registration of trademarks, filings, publication and registration
Anti-Fraud Network, established by OHIM
7
Misleading Invoices: Actions Taken
Activities:Information notice No. 6/2010, Madrid Highlights
No. 3 September 2014, warning on certificate of international registration
Web page – warning, reference list (PDF: name, date, origin), IP Office links
39
40
41
42
Misleading Invoices: Facts & Figures
More than 250 documents collected in 2014
45 documents available on the online reference list for 2014, 130+ for 2009-2015
Origin of the senders (companies) – broad spectrum
Origin of the recipients (holders and representatives): United Kingdom, Germany, France, Canada, the United States of America, etc.
43
Misleading Invoices: Guidance for Users
How to spot misleading invoice communications?
Indications identifying notices (invoices) from WIPO:Currency: CHFLanguages: one of the three official languages (EN, ES and FR) Contact details: WIPO address in Geneva
(34, Chemin des Colombettes) + website (www.wipo.int) Method of Payment: http://www.wipo.int/about-wipo/en/finance/madrid.htmlLogo
44
Misleading Invoices: LogosWIPO Official Logos
45
Misleading Invoices: Logos
46
Swiss Francs
47
48
49
Misleading Invoices: Contact us
Questions about an invoice received or about an example of misleading invoice not mentioned in the WIPO reference list?
Contact us at [email protected] attaching a copy of the suspicious document
50
Contact Us
General queries on the Madrid System Madrid Customer Service: +41 22 338 8686
Specific queries on IA or [email protected] +41 22 338 750 1 (Czech Republic)[email protected] +41 22 338 750 [email protected] +41 22 338 750 3
http://www.wipo.int/madrid/en/contact.html
For the electronic communication with [email protected]
http://www.wipo.int/madrid/en/services/electronic_notification.html
51
Thank you
52