Strategic Use of Madrid and Hague Systems for SMEs

1. The Strategic Use for SME’s of the Madrid and Hague Systems Betty Berendson, Senior Information Officer Information and Promotion Division, Sector of Trademarks, Industrial Designs and Geographical Indications

2. THE MADRID SYSTEMObjectives and Basic Features

3. Objectives of the System • International Registration of Trademarks • Simplified access to foreign markets

4. Characteristics • Economical • Fast • Simple

5. The Protection Abroad National Route(with national Offices) • different procedures • different languages • fees paid in local currency • recording of changes:several operations • (usually) through a local agent An Alternative to the National Route VS International Route(with Office of origin  WIPO)  • one procedure  • one language  • fees paid in Swiss francs only  • recording of changes:one operation • local agent not compulsory Usually when there is a refusal

6. Advantages for Users • Simpler, faster and much more affordable • Simplified registration in one country with the possibility of many designations • Simplified management of a trademark portfolio • Flexibility

7. Registration and Administration of Trademarks in up to 80 Contracting Parties • through a single procedure • with a single administration • in a single language

8. Closed System • Attachment necessary • establishment (real and effective) • domicile • nationality • Office of Origin

9. Procedure through the Madrid System • Via national office • Language • Formal examination • Registration • Notification and publication • Refusal (or not) by designated Contracting Parties

10. Bundle of National Rights • National (designated) Offices determine: • substantive conditions of protection • applicable procedure if refusal • scope of protection

11. Central Administration • Subsequent Designations • Assignments • Changes in Names and Addresses • Limitation, renunciation, cancellation • Renewal

12. (Including EC) Agreement only 8Protocol only 23Agreement and Protocol 49 Madrid Union(80 Members)

13. International trademarks in force • some 471.325 registrations in force • over 5 million active designations • more than 159,000different trademark owners

14. Number of right-holders 128,080 25,579 5,114 280 22 159,075 Right-holders (159,075)  Registrations by Category of Right-Holderby end of December 2006 Marks by right-holder 1-2 3-10 11-100 101-500 > 500 Total 80.52% 16.8% 3.21% 0.18% 0.01% 100,00%

15. Trademarks Worldwide • Over 2,000,000 trademark applications are filed worldwide annually • Approximately 700,000 are international trademarks filings, from which: • Over 300,000 are filed through the Madrid System (43%)

16. On-line Services • Madrid Express database • ROMARIN database • WIPO Gazette of International Marks • E-Renewal • Fee Calculator http://www.wipo.int/madrid/en/services/

17. Top filer Membersin 2006

18. Top filer Membersin 2006 # filings share Germany 6,552 18.0% France 3,896 10.7% United States 3,148 8.6% Italy 3,086 8.5% Benelux 2,784 7.6% European Community 2,523 6.8% Switzerland 2,468 6.8% United Kingdom 1,489 4.1% China 1,328 3.6% Spain 1,215 3.3% Austria 1,197 3.3% Australia 1,100 3.0%

19. Some significant filing increasesin 2006 (as compared to 2005)

20. European Community 2,523 65.5% Italy 3,086 25.5% Australia 1,100 29.1% Spain 1.215 17.2% United States 3.148 10.5% other than the top 20 3,260 11.3% Some significant filing increasesin 2006 (as compared to 2005) # applications growth

21. Most designated Contracting Partiesin registrations + subsequent designationsin 2006 (as compared to 2005)

22. Most designated Contracting Partiesin registrations + subsequent designationsin 2006 (as compared to 2005) # designations growth China 15,801 16.4% Russian Federation 14,432 12.7% Switzerland 14,260 8.1% United States of America 13,994 18.0% Japan 11,844 17.3% European Community 10,640 68.7% Australia 9,115 14.1% Norway 9,102 7.8% Ukraine 9,057 9.5% Turkey 8,958 4.2% Rep of Korea 8,334 16.4% Germany 8,147 11.0% Romania 8,103 4.4%

23. Conclusion Madrid System A useful economic tool to obtain and maintain protection of marks!

24. THE HAGUE SYSTEMObjectives and Basic Features

25. Purpose of the HagueAgreement • An international registration system for protection of industrial designs in several countries, by means of a single international application filed with the International Bureau of WIPO. • A single international application replaces a whole series of national applications.

26. Legal Framework • Hague Agreement • London Act (1934) • Hague Act (1960) • Geneva Act (1999) • Entered into force on 23 Dec 2003 • Operational on 1 Apr 2004 Hague SystemConcerning the International Registrationof Industrial Designs • Common Regulations(1996) • Last revised: 1 Apr 2004 • Admin. Instructions(2002) • Last revised: 1 Apr 2004

27. As of April 2007 Hague Union Members (46) (by most recent act) www.wipo.int/hague/en/members Geneva Act (1999): 22Albania, Botswana, Croatia, Egypt, Estonia, France, Georgia, Hungary, Iceland, Kyrgyzstan, Latvia, Liechtenstein, Moldova, Namibia, Romania, Singapore, Slovenia, Spain, Switzerland, The former Y.R. of Macedonia, Turkey, Ukraine Hague Act (1960): 21 Belgium, Belize, Benin, Bulgaria,Côte d’Ivoire, D.P.R. of Korea, Gabon, Germany, Greece, Italy, Luxembourg, Mali, Monaco, Mongolia, Montenegro, Morocco, Netherlands, Niger, Senegal, Serbia, Suriname London Act (1934): 3Indonesia, TunisiaHoly See (denounced as of August, 2007)

28. 20 Geneva Act (1999) 21 Hague Act (1960) 3 London Act (1934) By Most Recent Act As of April 2007 Hague Union Members (46) (by most recent act)

29. Advantages • One vs. Many RelationshipsProvides for the centralized acquisition, maintenance and management of industrial design rights around the world by filing a single international application in which one or more Contracting Parties are designated. • “Bundle of Rights”The resulting international registration has the effect of a grant of protection in each designated Contracting Party, although it is not itself, nor does it result in, an independent grant of protection in each designated Contracting Party (DCP).

30. . . . What It Is Not. • Since the Hague System is primarily a procedural arrangement, it does not determine: • the conditions for protection; • the refusal procedure to be applied when deciding whether a design may be protected; or • the rights which result from protection. • Such issues are governed by the law of each Contracting Party designated in an international registration.

31. Filing the International Application • Closed System • Entitlement: Connection between applicant and a Contracting Party via establishment, domicile, habitual residence (Geneva Act) or nationality • Only designate Contracting Parties to Hague System • Not required to have a prior national application or grant of protection • “Self-designation” is possible • Application can be filed either directly with International Bureau (IB) or indirectly via the Contracting Party from which entitlement is derived

32. Formal Examination by IB • IB examines for formalities only • Substantive grounds, such as novelty, not considered by IB • Recorded in an International Register • Registration certificate sent to holder • Publication in WIPO International Designs Bulletin • Immediate publication at applicant’s request • Differed publication and payment of related fees at applicant’s request

33. Substantive Examination by DCP • Substantive examination, if any, undertaken by each DCP as provided by its national law • Refusal by DCP must be sent to IB within set time limits from the date of publication of international registration • Holder has same remedies as would have been available if filed under national law • If not refused, or if refusal withdrawn, the IR produces the same effect as a grant of protection under national law

34. OFFICE OFDESIGNATEDCONTRACTINGPARTY OFFICE OFDESIGNATEDCONTRACTINGPARTY General Procedure OFFICE OF CONTRACTING PARTY OFENTITLEMENT Indirect Filing InternationalApplication self-designation Direct Filing INTERNATIONALBUREAU OFFICE OFDESIGNATEDCONTRACTINGPARTY

35. Duration of Protection • International registration initially valid for 5 years from date of international registration • Renewable for five-year periods • Minimum duration of protection set by governing treaty • May be renewed, with respect to a given DCP, for the full grant of protection allowed under the national law of that DCP • Maximum duration of protection set by each DCP

36. Effects of International Registration • As an application • As of the date of the International Registration • As a grant of protection • Hague (1960) • By default, as of the date of the international registration, but can be later (if office examines for novelty) • Geneva (1999) • By default, as of the date of the expiry, at the latest, of the applicable refusal period, but can be later (if office examines for novelty)

37. / Central Management • Appointment [DM/7] or cancellation [DM/9] of representative before IB • Change of name and address of holder [DM/6] or representative [DM/8] • Record change of ownership [DM/2] • Limit designs in one or more DCP(s) [DM/3 ] • Renounce all designs in one or more DCP(s) [DM/5] • Renewal in 5-year terms [DM/4] http://www.wipo.int/hague/en/forms

38. General Advantages National or RegionalInternational RouteRoute (Hague System) • many Offices for filing • one Office for filing • many languages • one language • many currencies • one currency • many registrations • one int. registration • many renewals • one renewal • many modifications • one modification • foreign attorney or agent • foreign attorney or agentfirst needed at filingfirst needed if refused

39. International Registrationsin force as of December 31, 2006 • 27,927 international registrations • 292,389 designations • 1,260,164 designs

40. International Registrations 2006

41. Thank you!betty.berendson@wipo.int