WIPO-INSME International Training Program on Intellectual Property and Management of Innovation in Small and Medium-Sized Enterprises May 12, 2005 José Graca-Aranha Director, Information and Promotion Division Sector of Trademarks, Industrial Designs and Geographical Indications. - PowerPoint PPT Presentation
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WIPO-INSME International WIPO-INSME International Training Program on Training Program on Intellectual Property and Intellectual Property and Management of Innovation Management of Innovation in Small and Medium-Sized in Small and Medium-Sized Enterprises Enterprises May 12, 2005 May 12, 2005 José Graca-Aranha José Graca-Aranha Director, Director, Information and Promotion Division Information and Promotion Division Sector of Trademarks, Industrial Sector of Trademarks, Industrial Designs and Geographical Designs and Geographical Indications Indications
Transcript
WIPO-INSME International WIPO-INSME International Training Program on Intellectual Training Program on Intellectual
Property and Management of Property and Management of Innovation in Small and Medium-Innovation in Small and Medium-
Sized EnterprisesSized Enterprises
May 12, 2005May 12, 2005José Graca-AranhaJosé Graca-Aranha
Director,Director,Information and Promotion DivisionInformation and Promotion Division
Sector of Trademarks, Industrial Designs and Sector of Trademarks, Industrial Designs and Geographical IndicationsGeographical Indications
THE MADRID SYSTEMTHE MADRID SYSTEM
• Easier market accessEasier market access
• Protection in multiple countriesProtection in multiple countries
• Advantages for SME’sAdvantages for SME’s
OBJECTIVESOBJECTIVES
Registration and Administration of Registration and Administration of Trademarks in up to 77 territories of Trademarks in up to 77 territories of Contracting Parties Contracting Parties – through a single procedurethrough a single procedure– with a single administrationwith a single administration– in a single languagein a single language
Madrid Union(77 Members)
Agreement only 11Protocol only 21
Agreement and Protocol 45(Including
EC)
27
42
11
21
45
54
J une 1989 Apr-96 Oct-04
Agreement & Protocol
Protocol
Agreement
MembershipMembership
Madrid Agreement (1891)Madrid Agreement (1891)Madrid Protocol (1989)Madrid Protocol (1989)
27
51
77
A useful economic toolA useful economic tool
• over a 135,000 usersover a 135,000 users
• 412,000 international trademarks in 412,000 international trademarks in forceforce(= 4.8 million national registrations)(= 4.8 million national registrations)
• lower costs (10 to 20 times less)lower costs (10 to 20 times less)
to obtain and maintain protectionto obtain and maintain protection
BASIC FEATURESBASIC FEATURES
• One System - Two TreatiesOne System - Two Treaties
• Closed systemClosed system
• Single international registration with a Single international registration with a national basisnational basis
• Effect of national application or Effect of national application or registrationregistration
• Subsequent DesignationSubsequent Designation
One System - Two TreatiesOne System - Two Treaties
Madrid Agreement Concerning the Madrid Agreement Concerning the International Registration of Marks International Registration of Marks (1891)(1891)
Protocol Relating to the Madrid Protocol Relating to the Madrid Agreement (1989)Agreement (1989)
Closed SystemClosed System
• Attachment necessaryAttachment necessary– establishment (real and effective)establishment (real and effective)– domiciledomicile– nationalitynationality
• Office of OriginOffice of Origin
Procedure through the Procedure through the Madrid SystemMadrid System
• via national officevia national office• languagelanguage• formal examinationformal examination• registrationregistration• notification and publicationnotification and publication• refusal (or not) by designated Contracting refusal (or not) by designated Contracting
PartiesParties
Central AdministrationCentral Administration
• AssignmentsAssignments
• Changes in Names and AddressesChanges in Names and Addresses
Major User Countries in 2003Major User Countries in 2003
France3 281=15.0%
Germany4 999=22.9%
Other Countries in transition1484=6.8%
Other DevelopingCountries197=0.9%
Czech Republic355=1.6%Italy
1 806=8.3%
United Kingdom599=2.7%
Benelux2 104=9.6%
Denmark347=1.6%
Other Countries
1303=6.0%Sweden
355=1.6%
Austria723=3.3%
Switzerland2 204=10.1%
Spain914=4.2%
Turkey408=1.9%
China413=1.9%
Russian Federation355=1.6%
Right-holders
1-2 marks32%
11-100 marks27% 3-10 marks
25%
101-500 marks11%
> 500 marks5%
Registrationsin force(400,000)
RegistrationsRegistrationsby Category of Right-holdersby Category of Right-holders
Trademarksby Right-holder
1-2 marks3-10 marks11-100 marks101-500 marks> 500 marks
All
80.00%16.33%
3.47%0.19%0.01%
100.00%
10490021408
4555245
18
131126
Number ofRight-holders
Agreement and ProtocolAgreement and Protocol
ComparisonComparison
ComparisonComparison• Basis of the international applicationBasis of the international application
• Language (E, F, S)Language (E, F, S)
• Refusal of protectionRefusal of protection
• FeesFees
• Regional SystemsRegional Systems
• Safeguard ClauseSafeguard Clause
2003/2004 - a turning point2003/2004 - a turning point
• United States of AmericaUnited States of America -- November 2, 2003November 2, 2003
• European CommunityEuropean Community -- October 1, 2004October 1, 2004
• Spanish languageSpanish language -- April 1, 2004April 1, 2004
three catalysts for growththree catalysts for growth
THE HAGUE SYSTEMTHE HAGUE SYSTEM
• Easier market accessEasier market access
• Protection in multiple countriesProtection in multiple countries
• Advantages for SME’sAdvantages for SME’s
The Hague Agreement is constituted by threeThe Hague Agreement is constituted by threedifferent Acts:different Acts:– the Geneva (1999) Act, entered into force on – the Geneva (1999) Act, entered into force on December 23, 2003,December 23, 2003,– the Hague (1960) Act, entered into force on – the Hague (1960) Act, entered into force on August 1, 1984August 1, 1984– the London (1934) Act, which was adopted – the London (1934) Act, which was adopted on June 2, 1934, andon June 2, 1934, andentered into force in June 1939.entered into force in June 1939.
What is the Hague Agreement?What is the Hague Agreement?
A procedural filing system for the A procedural filing system for the international registration of international registration of industrial designs, administered by industrial designs, administered by the International Bureau of WIPO the International Bureau of WIPO in Geneva (Switzerland).in Geneva (Switzerland).
Objectives of the Hague AgreementObjectives of the Hague Agreement
Registration and Administration of Industrial Designs in up to 41 States / Contracting Partiesby means of -
• a single procedure• with a single administration• in one language• on the payment of fees in a single currency
FILINGFILING
• No prior filing neededNo prior filing needed
• May be filed directly with WIPOMay be filed directly with WIPO
• ... in English or French... in English or French
Management of International Management of International RegistrationRegistration
• Renewal
• Change in Ownership
• Change of Name or Address
• Renunciation, Limitation and Cancellation
… centralised and streamlined procedures
Advantages of the Hague SystemAdvantages of the Hague System
For Industrial Design OwnersFor Industrial Design Owners Simple, efficient and cost-effective Simple, efficient and cost-effective procedure for obtaining protection for procedure for obtaining protection for industrial designs in the (41) countries industrial designs in the (41) countries bound by the Hague Agreement.bound by the Hague Agreement.
Effective and economical means of maintaining protection and subsequently managing the registration
For OfficesFor Offices
Simplification of procedures - - Simplification of procedures - - examination as to form, classification of examination as to form, classification of the industrial designs and publication is the industrial designs and publication is handled by the International Bureau.handled by the International Bureau.
