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Madrid System for the International Registration of Marks Basic Features and Recent Developments

Madrid System for the International Registration of Marks Basic Features and Recent Developments . Mr. Yves Ngoubeyou Senior Information Officer Information and Promotion Division International Registrations Department

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Madrid System for the International Registration of Marks Basic Features and Recent Developments

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  1. Madrid System for the International Registration of Marks Basic Features and Recent Developments Mr. Yves Ngoubeyou Senior Information Officer Information and Promotion Division International Registrations Department Sector of Trademarks, Industrial Designs and Geographical Indications

  2. Objectives and Principles

  3. A Global Trademark Registration System • Facilitating trademark protection in export markets through a simple, expeditious and cost-effective procedure for: − the central filing of applications − the central management of registrations

  4. Direct Filing Route / Madrid Route

  5. Advantages of the Madrid System National (direct) routevs.Madrid (inter.) route Different proceduresOnly one procedure Different languagesOne language 1 of 3 (E/F/S) Different fees in localOne set of fees in CH currencies (exchange–rate implications) Management of IRs: Recording of changes One procedure in respect of all countries (in each separate country a different procedure) Representative required Representative required only in case of from outset refusal

  6. Main Principles • An additional route • An optional route • A closed system • One registration - a bundle of rights

  7. Legal Framework and Geographical Scope

  8. Legal Framework • Madrid Agreement (1891)latest revised in 1979 • Madrid Protocol (1989) as in force from September 1, 2008 • Common Regulationsas in force from September 1, 2008 • Administrative Instructionsas in force from January 1, 2008 • Law and Regulations of each Contracting Party-procedural System

  9. 84 members Madrid Union (Including EC) Agreement only 6Protocol only 28Agreement and Protocol 50

  10. Madrid Union 1996-2008

  11. Madrid Union Sept 2008 78 PROTOCOL Albania, Antigua and Barbuda, Armenia, Australia, Austria, Azerbaijan, Bahrain, Belarus, Belgium, Bhutan, Bosnia and Herzegovina, Botswana, Bulgaria, China, Croatia, Cuba, Cyprus, Czech Republic, Democratic People’s Republic of Korea, Denmark, Estonia, European Community, Finland, France, Georgia, Ghana, Germany, Greece, Hungary, Iceland, Iran, Ireland, Italy, Japan, Kenya, Kyrgyzstan, Latvia, Lesotho, Liechtenstein, Lithuania, Luxembourg, Madagascar, Moldova, Monaco, Mongolia, Montenegro,Morocco, Mozambique, Namibia, Netherlands, Norway, Oman, Poland, Portugal, Republic of Korea, Romania, Russian Federation, San Marino, Serbia, Sierra Leone, Singapore, Slovakia, Slovenia, Spain, Swaziland, Sweden, Switzerland, Syrian Arab Republic, the Former Yugoslav Republic of Macedonia, Turkey, Turkmenistan, Ukraine, United Kingdom, United States of America, Uzbekistan, Viet Nam, Zambiaunderlined = Agreement also 6 AGREEMENT ONLY Algeria, Egypt, Kazakhstan, Liberia, Sudan, Tajikistan http://www.wipo.int/madrid/en/members/ipoffices_info.html

  12. Basic Principles

  13. Basic Principles • 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 • A time limit for refusal • Possibility of subsequent designation (SD) • IR is dependent on basic mark for 5 years • 10-year term of protection • Centralized management of IR

  14. Entitlement to File an International Application

  15. Natural Person Legal Entity Someone …

  16. … who has a connection … • Real and Effective Industrial or Commercial Establishment (“Establishment”) • Domicile • Nationality

  17. … with a Member of the Madrid Union • Contracting State • Establishment or domicile within territory of State • National of State • Contracting Organization • Establishment or domicile within territory of Contracting Organization • National of a Member State of Contracting Organization • Individual Member States of Contracting Organization do not have to be party to the Agreement or Protocol

  18. Comparison AgreementProtocol MembersStates States/Organizations Basic rightBasic registrationBasic registration/application EntitlementCascade No cascade FeesSupplementary and Or individual fee option complementary Refusal12 monthsOr 18 months or 18+ months (opposition) options Dependency5 years5 years with possible transformation SubsequentIndirect filingIndirect or direct filing designations

  19. Link with the CTM • Obtaining CTM through IR but only under the Protocol • Base an IA on a CTM-OHIM as Office of Origin • New features in the Common Regulations: • indication of a second language (one of the 5 official EU languages), where EC is designated • claim of a seniority (MM17) • possibility of opting-back in case the designation of the EC drops before OHIM (conversion into Madrid designations)

  20. Types of International Applications

  21. Types of Applications Governed by Agreement and Protocol some designations made under Agreement some designations made under Protocol Rule 1(viii): Governed exclusively by Agreement all designations made under Agreement MM1 Rule 1(ix): Governed exclusively by Protocol all designations made under Protocol MM2 Rule 1(x): MM3

  22. MM1 Why is this type of international application governed exclusively by the Agreement? A A Liberia or A Sudan Algeria

  23. MM1 Why is this type of international application governed exclusively by the Agreement? A A AP A Liberia or A A France Sudan

  24. MM1 - Requirements International Application Office of Origin: Filing basis: Form: Language: Cascade applies - Article 1(3) of the Agreement Basic Registration MM1 English, French or Spanish Each Designation Fees: Refusal Period: Supplemental + Complementary 12 months

  25. MM2 Why is this type of international application governed exclusively by the Protocol? P P Denmark AP AP or A France AP Vietnam

  26. Cascade does not apply Basic Registration or Basic Application MM2 French, English or Spanish Office of Origin: Filing basis: Form: Language: MM2 - Requirements International Application Each Designation Fees: Refusal Period: Supplemental + Complementary, or Individual 12 months, or 18 months or 18+ months * * * Madrid Protocol, Article 9sexies If AP  AP: “ … a declaration made under Article 5(2)(b), Article 5(2)(c) or Article 8(7) of the Protocol ... shall have no effect ...”

  27. MM3 Why is this type of international application governed by the Agreement and Protocol? A A Sudan P AP AP AP Belarus P France AP Switzerland

  28. Cascade applies - Article 1(3) of the Agreement Basic Registration MM3 English, French or Spanish Office of Origin: Filing basis: Form: Language: MM3 - Requirements International Application Each Designation under the Agreement Fees: Refusal Period: Supplemental + Complementary 12 months Each Designation under the Protocol * Fees: Refusal Period: Supplemental + Complementary, or Individual 12 months, or 18 months, or 18+ months * * Madrid Protocol, Article 9sexies If AP  AP: “ … a declaration made under Article 5(2)(b), Article 5(2)(c) or Article 8(7) of the Protocol ... shall have no effect ...”

  29. Repeal of the Safeguard Clause

  30. Review of the SC • Article 9sexies(2) • Extraordinary power to the Assembly to restrict or repeal the SC • Review by Madrid Working Group • Met 4 times 2005-2007 • Recommended a repeal of the SC • Assembly adopted amendment • Entry into force is September 1, 2008

  31. MM1 Pre-September 1, 2008 Safeguard Clause – no application in this example: i.e., an ‘Agreement-only’ filing A A A A Liberia or A AP Sudan France

  32. Pre-September 1, 2008 Application of the Safeguard Clause : Madrid Protocol, Article 9sexies (“Safeguard Clause”) “. . . the provisions of this Protocol shall have no effect . . .” A A AP A Sudan or A France AP i.e., still an ‘Agreement-only’ filing Vietnam

  33. MM3 Pre-September 1, 2008 Application of the Safeguard Clause A A Egypt P AP P AP Denmark A France AP A ‘mixed’ (A+P) filing Switzerland

  34. ‘Agreement-only’ Filings and ‘Mixed’ Filings Applicants must : • Observe the ‘cascade’ • Have a basic registration in the Office of origin - Common Regulations Rule 9(5)

  35. New Article 9sexiesSeptember 1, 2008 (1)(a) « This Protocol alone shall be applicable as regards the mutual relations of States party to both this Protocol and the Madrid Agreement » - i.e., AP / AP situations Note: No change to Rule 9(5) of the Common Regulations !

  36. Remember: The basic principle remains unchanged – Application that is ‘Agreement-only’ or Agreement + Protocol = Cascade + Basic Registration But: After repeal of Safeguard Clause, this priniciple will be hugely ‘diluted’, because of the consequences of the repeal.

  37. From September 1, 2008 This is no longer an ‘Agreement-only’ filing; now a ‘mixed’ (A+P) filing - So it is still subject to ‘cascade’ + basic registration A A A+P AP Liberia or P !! France AP Vietnam

  38. From September 1, 2008 P !! AP France P !!! P !! AP AP Italy P Germany P Japan From Sept. 1, 2008, because of the repeal of the SC, a filing such as this will no longer be ‘mixed’, but will, instead be a ‘Protocol-only’ filing

  39. 2008 : Agreement-only States • Algeria • Egypt • Kazakistan • Liberia • Sudan • Tajikistan

  40. Languages and Fees • Rule 6 French, English, Spanish in all new situations (after repeal of SC, only 0.3% of applications will be Agreement-only) • Exception : transitional situations (Rule 40(4)) • Schedule of Fees • All Standard Fees From 73 to 100 CHF (1st increase since 1996) All amendments enter into force on September 1

  41. Statistics

  42. Share within Global Trademark Activity • Over 200 different national/regional trademark jurisdictions worldwide • Some 700,000 trademark applications filed by non-residents annuallyof which • Some 350,000 are designations in international registrations (Madrid System)

  43. Germany 6,090 7.5% 15.2% 5004 France 3,930 6.1% 9.8% 3205 US 3,741 18.8% 9.4% 3172 EC 3,371 37.9% 8.4% 3079 Italy 2,664 -9.9% 6.7% 2129 Switzerland 2,657 7.7% 6.7% 2360 Benelux 2,510 -4.9% 6.3% 2037 China 1,444 8.7% 3.6% 1298 UK 1,178 11.8% 2.9% 1007 Japan 984 19.8% 2.6% 1039 Morocco 81 -21.8% 0.2% 72 Algeria 2 -92.3% 0.05% 2 Egypt 15 -31.8% 0.037% 28 Kenya 1 -800% 0.01% 4 Mozambique 1 - 2 Sudan Major User Contracting Parties(Applications Filed) 2008 2007 No. Filings Growth Share Jan-Oct

  44. Most Designated CPs 2008

  45. International Registration Profiles

  46. International Registrations in Force International Register contained on June 30, 2008 • Some 499,000 registrations in force, representing • Some 5.5 million active designations, belonging to • Approx. 164,000 different right holders (many of them SMEs) • Average number of DCP in an IR - 8.2 CPs • As from January 2008 until October, the International Bureau received 33,618 applications

  47. General Profile 2007

  48. Trademarks in Force (June 2008)

  49. Some Top Users (2007)

  50. Communication and Information

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