The Madrid System

Basic features and recent developments

July 13-15, 2010IsraelDebbie Ronning

Director, Legal and Promotion DivisionDebbie.Ronning@wipo.int

The Madrid System for the International Registration of Marks

Simple, Flexible, Time and Cost-Effective Option

http://www.wipo.int/trademarks/en/ http://www.wipo.int/trademarks/en/ (video)(video)

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

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_info.html

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 Partygoverning the substantive conditions for granting the protection in each relevant territory

Madrid Union

3 Agreement only29 Protocol only (including EU)53 Agreement and Protocol

85 Members

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 People’s 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 also3 MEMBERS PARTY TO THE AGREEMENT ONLY

Algeria, Kazakhstan and Tajikistanwww.wipo.int/madrid/en/members/ipoffices_info.html

Concept I: Many Routes or One Route

Madrid Route

NationalRegistration

NationalRegistration

NationalRegistration

InternationalApplication

NationalApplicationNational

ApplicationNationalRegistration

InternationalRegistration

National Protection

National Protection

National Protection

Bundle of National Applications /Registrations

=

Concept II: Go National or Concept II: Go National or InternationalInternational ? ?

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

Basic featuresAn 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

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

International Filing and Registration Flow

INTERNATIONALBUREAU

OFFICE OF ORIGIN

OFFICE

APPLICANTFormal examination; registration; publication (Gazette); Certificate; Notification to all designated CPs

Substantive examination under domestic law, within 12/18 months

Protection = effect ofa local registration

Certify and forward the application to the IB

OFFICE OFFICE

ENEntitlementBasic markForm

Refusal

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

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

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

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 Government’s Finance

Generates revenue

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%)

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

35,925 International Registrations

Average Number of Designations 7.4

Average Number of Classes 2.6

Average Fee CHF 3,408

All Fees 57%< 5,000 CHF

General Profile 2009

Top Filer CPs in 2009Origin 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%

Top Designated CPs in 2009Origin 2008 2009 Share Growth China 17,829 14,766 4.9% -17.2% Russian Federation 16,768 14,150 4.7% -15.6% United States of America 15,715 13,406 4.4% -14.7% Switzerland 14,907 13,161 4.3% -11.7% European Union 14,502 12,564 4.1% -13.4% Japan 12,748 10,386 3.4% -18.5% Australia 10,529 8,575 2.8% -18.6% Ukraine 10,635 8,539 2.8% -19.7% Turkey 9,844 9,844 2.6% -19.3% Republic of Korea 9,539 9,539 2.6% -18.7% Norway 9,787 9,787 2.5% -22.1% Croatia 7,482 5,967 2.0% -20.2% Singapore 7,607 5,957 2.0% -21.7% Germany 6,955 5,593 1.8% -19.6% Belarus 6,724 9,380 1.8% -20.0%

International Registrations and Subsequent Designations -1996 - 2009

-6'000

4'000

14'000

24'000

34'000

44'000

54'000

1996 1997 1998 1999 2000 2001 2002 2003 2004 2005 2006 2007 2008 2009

Registrations Subsequent designations

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/

Comparison Agreement vs Protocol

Madrid Agreement

Basic registration

French

Entitlement – strict

12 months refusal limit

Complementary fee

Country of origin

No transformation

Madrid Protocol

Basic application/registration

French/English/Spanish

Entitlement – more flexible

12/18 months refusal limit +

Individual fee

Office of origin

Transformation

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

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

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

Thank you for your attention!

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

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

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

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

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

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

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

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

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

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