The Madrid system for the International Registration of Marks

1. The Madrid system for the International Registration of Marks Basic and General Principles when Filing an International Application Podgorica June 6, 2011 Marie-Laure Douay Legal Division International Registries of Madrid and Lisbon

2. Entitlement to file under the Madrid System • Filing Basis under the Madrid System • Two Categories of Connections • Three Types of Connections • Three Types of International Applications

3. Filing Basis Under the Madrid System

4. Two categories of connections Establishment Domicile Nationality Applicant Office of origin Common Treaty Contracting Party of Office of origin Designated Contracting Party

5. Three Types of Connections Real and Effective Industrial or Commercial Establishment Domicile Nationality => Definition - Domestic Law

6. Three types of international applications Application for international registration governed exclusively by the Madrid Agreement Application for international registration governed exclusively by the Madrid Protocol Application for international registration governed by both the Madrid Agreement and the Madrid Protocol

7. Application for international registration governed exclusively by the Madrid Agreement • MM1 Form • Designations • CASCADE • Basic registration • English, French or Spanish • Supplementary/complementary fees

8. MM1 Form Application for international registration governed exclusively by the Madrid Agreement Designated Contracting Party Office of origin AP A A Algeria Montenegro

9. MM1 Form Application for international registration governed exclusively by the Madrid Agreement Designated Contracting Parties A AP Office of origin A Montenegro A A AP Algeria France

10. Application for international registration governed exclusively by the Madrid Protocol • MM2 Form • Designations • No Cascade • Basic application or registration • English, French or Spanish • Supplementary/complementary fees or individual fees

11. MM2 Form Application for international registration governed exclusively by the Madrid Protocol Designated Contracting Parties P P Office of origin P Norway P P Japan P Lithuania

12. Application for international registration governed exclusively by the Madrid Protocol • MM2 Form • Designations • No Cascade • Basic application or registration • English, French or Spanish • Supplementary/complementary fees • No individual fees* • Time limit for refusal = 12 months* *By virtue of article 9sexies(1)(b) of the Madrid Protocol

13. MM2 Form Application for international registration governed exclusively by the Madrid Protocol Designated Contracting Party Office of origin P* AP P AP Montenegro Switzerland * By virtue of Article 9sexies of the Madrid Protocol

14. Application for international registration governed by both the Madrid Agreement and the Madrid Protocol • MM3 Form • Designations • CASCADE • Basic registration • English, French or Spanish • Supplementary/complementary fees or individual fees

15. MM3 Form Application for international registration governed by both the Madrid Agreement and theMadrid Protocol Designated Contracting Parties A A Office of origin P Algeria AP AP P Montenegro Finland P* AP Spain * By virtue of article 9sexies of the Madrid Protocol

16. Three types of international applications Application for international registration governed exclusively by the Madrid Agreement – MM1 Form (English, French or Spanish) – CASCADE – basic registration Application for international registration governed exclusively by the Madrid Protocol – MM2 Form (English, French or Spanish) – No cascade : free choice of Office of origin – basic application or registration Application for international registration governed by both the Madrid Agreement and the Madrid Protocol – MM3 Form (English, French or Spanish) – CASCADE – basic registration

17. Some practical cases

18. First case A AP A A Montenegro Algeria Questions A P APMM1 MM2 MM3English French SpanishYes No Applicable Treaty/Treaties :Form:Language:Basic application:

19. Second case P* AP France P* P AP AP Italy P Montenegro P Japan Questions Applicable Treaty/Treaties:Form:Language : Basic application: A P APMM1 MM2 MM3 English French SpanishYes No

20. Third case P* AP A France AP AP A P Algeria Montenegro P Questions Japan Applicable Treaty/Treaties:Form:Language : Basic application: A P APMM1 MM2 MM3 English French SpanishYes No

21. Fourth case P P Sweden P* P AP AP China P P Montenegro United Kingdom The 3 designated Contracting Parties have opted for a refusal period of 18+ months and for individual fees. Questions Applicable Treaty/Treaties:Form:Language: Basic application: A P APMM1 MM2 MM3 English French SpanishYes No To which CP individual fees and 18+ months refusal period are not applicable?: SE CN UK

22. Declarations • Extension to 18 months of the refusal period – Article 5(2)(b) and (d) of the Madrid Protocol • Possible notification of refusals based on an opposition after the 18-month time limit – Article 5(2)(c) and (d) of the Madrid Protocol • Individual Fees – Article 8(7)(a) and (b) of the Madrid Protocol http://www.wipo.int/export/sites/www/madridgazette/en/remarks/declarations.html

23. Currency and mode of payment • Payment must be made in Swiss currency • Payment could be made by: • debit to a current account with WIPO • payment into the WIPO Swiss postal account or bank account (see forms) • credit card (e-payment or e-renewal)

24. Standard fees • Basic fee*: • reproduction in B/W 653 • reproduction in color903 • Supplementary fee: • for each class exceeding three 100 • Complementary fee: • for each designated CP w/o individual fee 100 * Applicants from Least Developed Countries pay 10 per cent of the basic fee: Bhutan, Lesotho, Liberia, Madagascar, Mozambique, Sao Tome and Principe, Sierra Leone, Sudan and Zambia.

25. Individual fees • Optional • Supplementary and complementary fees are not applicable with respect to designations of concerned Contracting Party. http://www.wipo.int/export/sites/www/madridgazette/en/remarks/declarations.html

26. Questions ?

27. Hvala