The Madrid System for the International Registration of Marks: Objectives and Principles
Antonina Stoyanova Senior Legal Officer International Registries of Madrid and Lisbon WIPO 1989 Russ Suchard et Cie 1970 Madrid Protocol PCT 1967
1960 WIPO Convention
BIRPI moves to Geneva 1925
Hague Agreement 1893 BIRPI 1891 1886 Madrid Agreement
1883 Berne Convention Paris Convention More than 100 years of Experience … NOT Printed … More than a Million Trademarks
Worldwide NOT Printed
IRN 158 574
This Longine trademark is the oldest international trademark still in effect. Originally registered in Switzerland in 1889, then internationally in 1893. Marking a Million The registration of the millionth mark by Austrian eco- company
IRN 1 000 000
NOT Printed Concept of the Madrid System CONCEPT
A simple, low-cost and effective system facilitating trademark protection in export markets through:
• one central application and registration procedure ensuring effects in a number of territories bound by the system
• one central procedure to maintain and manage an international registration with effects in all territories concerned Comparison between national and international route
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 (exchange–rate implications)
Management of IRs:
Recording of changes One procedure with respect of all countries (in each separate country a different procedure) Renewals
Representative required Representative required only in case of from outset refusal Legal Framework and Geographical Scope Madrid Union
2 Agreement only 29 Protocol only (including EU) 54 Agreement and Protocol 85 Members Geographical Scope II
81 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, Kazakhstan, 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
2 MEMBERS PARTY TO THE AGREEMENT ONLY Algeria and Tajikistan
www.wipo.int/madrid/en/members/ipoffices_info.html 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%) 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 Main Principles
An additional route
An optional route
A closed system
One registration - a bundle of rights Basic Features Basic Features
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
Possibility of a refusal of protection by the Offices of the DCPs Possibility of subsequent designation (SD) IR is dependent on basic mark for 5 years 10-year term of protection Centralized management of IR Filing Formalities
One form:MM1, MM2, MM3
One language, English, French or Spanish (Office may restrict)
One set of fee in Swiss Franc (Fees = basic fee ( 653 or 903 if color) + additional class fees,supplementary (beyond three classes100 CHF); desingation fees, complementary-100CHF or individual, if opted)
Can be paid through OO if so declared; Central Registration by the IB
International Mark
Central registration in the Madrid Register
Central Publication (WIPO Gazette)
One Certificate
Many notifications to all designated CPs
10-year term of protection, renewable centrally Application and Registration Flow
Certify and forward OFFICE OF ORIGIN application to the IB
APPLICANT
Entitlement Basic mark Formal examination; EN INTERNATIONAL registration; publication (Gazette); Certificate; BUREAU Notification to all DCPs
OFFICE OFFICE OFFICE Substantive examination under local law, within 12/18 months
refusal protection= effect of a local registration Centralized Management before the IB
Subsequent designations Representative before the IB Assignments Changes in name and address of holder and representative Recording of Limitation, Renunciation and Cancellation Recording of Licenses
Recording of Restriction of the Holder’s Right of Disposal Madrid SystemMadrid Information Services
Legal Texts and Guide www.wipo.int/madrid/en/legal_texts) paper publication, on-line-fr
WIPO Gazette /www.wipo.int/madridgazette/en) (09) -E-Gazette + PDF format: (free of charge) + DVD
Fee calculator www.wipo.int/madrid/en/fees/calculator.jsp) -on-line service (free ) Application Simulator www.wipo.int/madrid/en/madrid_simulator) on-line service (free)
Renewal webaccess.wipo.int/trademarks_ren/erenewal_en.jsp) on-line service
On-line Payment : webaccess.wipo.int/epayment) on-line for fees notified by WIPO
Madrid Express www.wipo.int/madrid/en/services/madrid_express.htm)- on-line database (free
ROMARIN :// www.wipo.int/madrid/en/romarin) - on-line database (free ) plus DVD for subscription Country Profiles www.wipo.int/madrid/en/members/ipoffices_info.html) 76 CPs’pages
http://www.wipo.int/madrid/en Some Developments and Statistics International Registrations in Force as of December 31, 2009
515,562 the total number of registrations in force, equivalent to
over 5.6 million active national/regional registrations, belonging to
169,939 trademark holders General Profile 2009
35,925 International Registrations
Average Number of Designations 7.4
Average Number of Classes 2.6
Average Fee CHF 3,408
All Fees 57%< 3,000 CHF Top Filer CPs in 2010(until September) as compared to 2009
Origin No. Filing 2009 Germany 2 713 1 EU 2 611 2 France 2 541 3 USA 2 375 4 Switzerland 1 057 8 Benelux 1,221 6 Italy 1,444 5 China 1,090 7 Japan 747 9 Russian Fed. 697 10 Austria 557 13 UK 655 11 Australia 597 12 Top Designated CPs for 2010( but only until September )
Origin 2010 2009 Share Growth
China 1 8 646 14,766 4.9% -17.2% Russian Federation 4 7 855 14,150 4.7% -15.6% United States of America 3 8 079 13,406 4.4% -14.7% Switzerland 5 7 322 13,161 4.3% -11.7% European Union 2 8 452 12,564 4.1% -13.4% Japan 6 6 150 10,386 3.4% -18.5% Australia 7 5 102 8,575 2.8% -18.6% Ukraine 8 4 431 8,539 2.8% -19.7% Turkey 10 4 257 9,844 2.6% -19.3% Republic of Korea 9 4 305 9,539 2.6% -18.7% Norway 11 4 205 9,787 2.5% -22.1% Croatia 14 3 008 5,967 2.0% -20.2% Singapore 12 3 392 5,957 2.0% -21.7% Germany 13 3 194 5,593 1.8% -19.6% Belarus 15 2 793 9,380 1.8% -20.0%
Most Popular classes of goods and services in IRs in 2009 Classes Products and Services 2008 2009 Share Growth
Class 9 covers e.g. computer hardware and software and other electrical or electronic apparatus of a scientific nature 9,305 7,935 8.3% -14.7%
Class 35 covers services such as office functions, advertising and business management 7,683 6,798 7.1% -11.5%
Class 42 covers services provided by e.g. scientific, industrial or technological engineers and computer specialists 6,092 5,337 5.6% -12.4%
Class 5 includes mainly pharmaceuticals and other preparations for medical purposes 4,868 4,553 4.7% -6.5%
Class 25 covers clothing, footwear and headgear 5,308 4,482 4.7% -15.6%
Class 41 covers services in the area of education, training, entertainment, sporting and cultural activities 4,882 4,469 4.7% -8.5%
Class 16 includes mainly paper, goods made from that material and office requisites 4,652 3,925 4.1% -15.6%
Class 3 includes mainly cleaning preparations and toilet preparations 3,979 3,405 3.6% -14.4%
Class 30 includes mainly foodstuffs of plant of origin, prepared for consumption or conservations as well as auxiliaries intended for the improvement of the flavour of food 3,191 2,991 3.1% -6.3%
Class 7 includes mainly machines, machine tools, motors and engines 3,294 2,857 3.0% -13.3% Top 50 Holders in 2009
Novartis (CH), Lidl Stiftung (DE); Henkel (DE); Zhejiang Medicine Company (CN), Shimano (JP), KRKA (SL), Richter Gedeon (HR), L’Oréal (FR), BSH Bosh und Siemens (DE), Egis Gyógyszergyár (HU), Pfizer (CH), Janssen Pharmaceutical (BE), Bayer (DE), Glaxo Group (UK), Boehringer Ingelheim (DE), Nestlé (CH), Sanofi Aventis (FR), Callaway Golf Company (US), Siemens (DE), Deutsche Telekom (DE), Biofarma (DE), Beiersdorf (DE), Tui AG (DE), Syngenta Participations (CH), DSM IP Assets (NL), ITM Entreprises (FR), Kabushiki Kaisha (JP), ICN (PL), Spar (AT), Gazprom(RU), Kaufland (DE), Daiichi Sankyo (JP), Audi AG (DE), Unilever (NL), GDF Suez (FR), Hofer (AT), ZF (DE), BASF (DE), Novo Nordisk (DK), Brillux GmbH (DE), Beijing Wanjindao (CN), Pivovarna Union (SL), Christian Dior Couture (FR), Ningbo Far East (CN), Microsoft Corporation (US), Hangzhou Zhongce Rubber (CN), Mibe GmbH (DE), Strauss Adriatic (RS), Merck (DE), Ecom Holdings (AU) International Registrations and Subsequent Designations -1996 - 2009
54'000
44'000
34'000
24'000
14'000
4'000
1996 1997 1998 1999 2000 2001 2002 2003 2004 2005 2006 2007 2008 2009 -6'000
Registrations Subsequent designations Signs of Recovery
Reflecting the weaker economic conditions, total TM applications declined by 0.9% in 2008 –the first decrease since 2001. The drop in demand for trademarks is largely due to decreases in the number of applications filed by residents of China, Japan , Spain and the USA.
2009- Madrid System IRs declined by 12.3 %, being primarily due to a fall in applications from residents of France, Germany and USA, because of the weaker economic conditions. Beyond 2009 there are grounds for optimism as international trademarks registrations under MS have returned to growth The experience of the first six months of 2010 points to a positive rebound in Madrid IRs Some significant filing increases in 2009 (as compared to 2008)
Application growth
European Union 3,710 3.1% Japan 1,312 2.7% Republic of Korea 249 33.9% Hungary 245 14.5% Croatia 235 17.5% Singapore 200 20.5% Where is Hungary
IRs by Office of Origin, - 2005-132 IRs, 2006-162, 2007 - 447, 2008 -183, 2009- 240 for 2009. At present- September 2010-133 IRs (together with renewals and subsequent designations by Office of Holder- 281 IRs Individual Designations of Hungary in IRsas DCP- slow decrease as from 2005-5170, 4477,4011, 3607, 2670 for 2009 Hungary is at 38 th place for 2009 as designated country among all Madrid member states And at 25th place for 2009 as number of applications filed by Hungary ( that is where there is significant increase in 2009 as compared to 2008) The Madrid System and LDCs
In order to improve the ability of trademark owners from LDCs to benefit from the Madrid system, the system offers applicants, originating from LDCs, a 90% reduction in the basic fee, since January 1, 2006 (Bhutan, Lesotho, Liberia, Mozambique, Sierra Leone, Sudan and Zambia)
http://www.wipo.int/ldcs/en/country Electronic communication and Information Tools Enhancement of ROMARIN
As from January 1, 2009 Notifications of provisional refusals, their confirmation or withrawal, invalidations or statements of grant of protection, received by IB are available in Romarin E-Communication
Filing of international applications 37% sent electronically to WIPO (AU, BX, CH, EM, KR, US)
Transmission from Offices to WIPO refusals (EM, JP, US, RU) statements of grant of protection (EM, JP,BX) modifications (AU, BX, CH, KR, EM, US)
Transmission from WIPO to the Offices
51 Offices receive various notifications electronically ( the most recent Offices started in 2008 were Madagascar, Oman and Syrian Arab republic) Electronic Communications: Holders and Reps. IB
MM4 Subsequent Designation MM5 Change in Ownership MM6 Limitation of Goods and Services MM7 Renunciation MM8 Cancellation of International Registration MM9 Change in Name and/or Address of Holder MM10 Change in Name and/or Address of Rep. MM11 Renewal of International Registration MM12 Appointment of Representative MM13 Recording a License MM14 Amendment of Recording of a License MM15 Cancellation of Recording of a License MM16 Subsequent Designation Conversion (EM) MM17 Claim of Seniority MM18 Declaration of Intent to Use MM19 Recording of Restriction Against Holder’s Right of Disposal Fee payments
Electronic Communications: Holders and Reps. IB Electronic Communications: IB Holders and Reps.
Notifications
Irregularity Letter Provisional Refusal Invalidation (total or partial) of IR Cancellation (total or partial) of IR due to Ceasing of Effect Statement of Grant of Protection 2nd Part of Fee Due Extension of Opposition Period Final Decisions
Information Concerning Procedures 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 IPOffices, 76 country profiles to date
hp://www.wipo.int/madrid/en/members/ipoffices_info.html International Application Simulator
The simulator is designed to respond specifically to the individual need in using the Madrid System when seeking protection of your mark abroad. At the end of the simulation, it will also help you estimate the cost of registering your mark through the Madrid System. http://www.wipo.int/madrid/en/madrid_simulator/ E- Payment
Payment of fees with regard to IAs and IRs, as notified by IB in irregularity letters at:online services :http://www.wipo.int/madrid/en/services/ Made through a credit card or through a current account with WIPO Any queries regarding e-payment at: [email protected] Recent Accessions
The most recent Members of MP are
Madagascar(P): January 28, 2008 Ghana (P): September 16, 2008 Egypt (P): September 3, 2009 Liberia(P): December 11,2009 Sudan(P): February, 16, 2010 Israel (P): September 1, 2010 Kazakhstan (P): December 9, 2010 Prospective Accessions
Most promising: Mexico, Tajikistan(A), Algeria (A)
Under consideration: Indonesia, New Zealand, Thailand, South Africa, Brazil, India, Canada Conclusion: the Madrid System
• A simple, low-cost and effective international TM application and registration system (1891 - 2010)
• Two treaties: the Madrid Protocol (1989) and the Madrid Agreement (1891)
• Benefits trademark holders in 85 members • Signifiant Instrument to facilitate global trade Future evolvements
Simplification of MS - After the repeal of the safegurad clause and the predominant position of the P more that 90% of the annual IRs are exclusively governed by the MP - If and when the two remaining Agreement only member states accede to Protocol, the Agreement will cease to exist( or will be frozen) - That will make the system simpler, even more efficient and more attractive The Madrid System Simplifies TM Registration & Management worldwide
Empowers Businesses in export markets See what our users say about the Madrid system at: http://www.wipo.int/multimedia/en/madrid/madrid- videos/index.html Thank you [email protected]