The Madrid system An update on the latest development

1. The Madrid systemAn update on the latest development Israel February 2012 Debbie RoenningDirector, Legal Division, Brands and Designs Sector

2. The Madrid System A centralized filing mechanism A one-stop shop for trademark holders to obtain and maintain trademark protection in export markets An option to the national route A purely procedural treaty The domestic legislations of the designated Contracting Parties set the conditions for protecting a trademark and determine the rights which result from protection

3. 1 Agreement only29 Protocol only (including EU)55 Agreement and Protocol 85 Members Madrid System

4. Accessions • Recent accessions to the Madrid Protocol • 2010: Sudan, Israel, Kazakhstan • 2011: Tajikistan (as of June 30, 2011) • Future accessions? • Colombia, Costa Rica and Dominican Republic • ASEAN countries by 2015 • India • South-Africa • Barbados, Jamaica and Trinidad & Tobago • Malta • New Zealand

5. Advantages of the Madrid system One international application based on a basic application/registration One language (English, French or Spanish) One set of fees in one currency (CHF) One registration number and one renewal date The registration can be further extended geographically All subsequent changes to the international registration may be recorded with the IB and have effect through one single procedure Offices do not need to examine for formal requirements Statement of grant of protection

6. The National Route vs. the Madrid Route 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

7. Basic features Entitlement An international application may be based on one or more applications or registrations The fees payable in connection with the application The basic fee (CHF 653 or 903) A complementary fee for each designated Contracting Party with supplementary fee OR individual fee Scope of protection – to be determined by designated Contracting Party The Contracting Party may elect for 12/18 months refusal period

8. Basic features (2) Statement of grant of protection Subsequent designation The 5 years dependency period Central attack – Ceasing of effects Transformation of the International registration into national applications 10 years term of protection with renewal every 10 years

9. International Registration Procedure International Application Verifies, certifies and forwards the International application to the International Bureau OFFICE OF ORIGIN Formal examination only. Inscribes the International registration in the International Register, publishes it in the Gazette, issues a certificate and sends notifications to the designated Contracting Parties INTERNATIONAL BUREAU OFFICE OF THE DESIGNATED CONTRACTING PARTIES Substantive examination. Decision on refusal or granting of rights based on their domestic legislation

10. Benefits for Trademark Owners Simple and economical procedure 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 procedure A single international application produces the same legal effect in various countries A fixed deadline for the confirmation or refusal of the legal effects in each designated country

11. Benefits for the Offices and Government The Contracting Parties can focus on substantive examination The Madrid system has a positive effect on economic growth It empowers SMEs It promotes international trade by contributing to the opening of new markets and assisiting in development of export It creates a more favorable climate for foreign investment in the internal market

12. Benefits for Local Agents The Madrid Protocolis optional and it does notreplacethe direct filing route Applicants would need the services of local agents at filing stage or at post-registration stage Increased designations will create more business opportunities (substantive work), like searches, refusals, oppositions, request for cancellations, dispute settlements, license and assignments contracts, and enforcement Post-registration activity may compensate for any reduction in local filing activity

13. Recent developments • Mandatory Statements of grant of protection as of January 1, 2011 • Two anniversaries in April 2011 • 120 years of the Madrid system (April 14, 1891) • 15 years of operations of the Madrid Protocol (April 1, 1996) • Translation of certain documents upon request • Statement of grant of protection following a provisional refusal • Limitation of the list of goods and services

22. Online Information Services • Legal texts, Guide and Information Notices • WIPO Gazette of International Marks • E-Renewal Tool • Fee Calculator: Costing service • Madrid Simulator: On-line filing guide tool • Goods & Services Manager: A WIPO-administered database of accepted indications of goods and services • ROMARIN: On-line search database • Dynamic Madrid Statistics free access at http://www.wipo.int/madrid/en/

23. Thank you for your attention debbie.roenning@wipo.int