WIPO-INSME International Training Program on Intellectual Property and Management of Innovation in Small and Medium- Sized Enterprises May 12, 2005 José Graca-Aranha Director, Information and Promotion Division Sector of Trademarks, Industrial Designs and Geographical Indications

THE MADRID SYSTEM Easier market access Easier market access Protection in multiple countries Protection in multiple countries Advantages for SME’s Advantages for SME’s

OBJECTIVES Registration and Administration of Trademarks in up to 77 territories of Contracting Parties –through a single procedure –with a single administration –in a single language

Membership Madrid Agreement (1891) Madrid Protocol (1989)

A useful economic tool over a 135,000 usersover a 135,000 users 412,000 international trademarks in force (= 4.8 million national registrations)412,000 international trademarks in force (= 4.8 million national registrations) lower costs (10 to 20 times less)lower costs (10 to 20 times less) to obtain and maintain protection

BASIC FEATURES One System - Two TreatiesOne System - Two Treaties Closed systemClosed system Single international registration with a national basisSingle international registration with a national basis Effect of national application or registrationEffect of national application or registration Subsequent DesignationSubsequent Designation

One System - Two Treaties Madrid Agreement Concerning the International Registration of Marks (1891) Protocol Relating to the Madrid Agreement (1989)

Closed System Attachment necessaryAttachment necessary –establishment (real and effective) –domicile –nationality Office of OriginOffice of Origin

Procedure through the Madrid System via national officevia national office languagelanguage formal examinationformal examination registrationregistration notification and publicationnotification and publication refusal (or not) by designated Contracting Partiesrefusal (or not) by designated Contracting Parties

Central Administration AssignmentsAssignments Changes in Names and AddressesChanges in Names and Addresses Limitation, renunciation, cancellationLimitation, renunciation, cancellation RenewalRenewal

Major User Countries in 2003 France 3 281=15.0% Germany 4 999=22.9% Other Countries in transition 1484=6.8% Other Developing Countries 197=0.9% Czech Republic 355=1.6% Italy 1 806=8.3% United Kingdom 599=2.7% Benelux 2 104=9.6% Denmark 347=1.6% Other Countries 1303=6.0% Sweden 355=1.6% Austria 723=3.3% Switzerland 2 204=10.1% Spain 914=4.2% Turkey 408=1.9% China 413=1.9% Russian Federation 355=1.6%

Right- holders  1-2 marks 32% marks 27% 3-10 marks 25% marks 11% > 500 marks 5% Registrations in force (400,000)  Registrations by Category of Right-holders Trademarks by Right-holder 1-2 marks 3-10 marks marks marks > 500 marks All 80.00% 16.33% 3.47% 0.19% 0.01% % Number of Right-holders

Agreement and Protocol Comparison

Comparison Basis of the international applicationBasis of the international application Language (E, F, S)Language (E, F, S) Refusal of protectionRefusal of protection FeesFees Regional SystemsRegional Systems Safeguard ClauseSafeguard Clause

2003/ a turning point United States of America-November 2, 2003United States of America-November 2, 2003 European Community-October 1, 2004European Community-October 1, 2004 Spanish language-April 1, 2004Spanish language-April 1, 2004 three catalysts for growth

THE HAGUE SYSTEM Easier market accessEasier market access Protection in multiple countries Protection in multiple countries Advantages for SME’s Advantages for SME’s

The Hague Agreement is constituted by three different Acts: – the Geneva (1999) Act, entered into force on December 23, 2003, – the Hague (1960) Act, entered into force on August 1, 1984 – the London (1934) Act, which was adopted on June 2, 1934, and entered into force in June 1939.

What is the Hague Agreement? A procedural filing system for the international registration of industrial designs, administered by the International Bureau of WIPO in Geneva (Switzerland). A procedural filing system for the international registration of industrial designs, administered by the International Bureau of WIPO in Geneva (Switzerland).

Objectives of the Hague Agreement Registration and Administration of Industrial Designs in up to 41 States / Contracting Parties by means of - a single procedure with a single administration in one language on the payment of fees in a single currency

FILING No prior filing neededNo prior filing needed May be filed directly with WIPOMay be filed directly with WIPO... in English or French... in English or French

Management of International Registration Renewal Change in Ownership Change of Name or Address Renunciation, Limitation and Cancellation … centralised and streamlined procedures

Advantages of the Hague System For Industrial Design Owners For Industrial Design Owners Simple, efficient and cost-effective procedure for obtaining protection for industrial designs in the (41) countries bound by the Hague Agreement. Simple, efficient and cost-effective procedure for obtaining protection for industrial designs in the (41) countries bound by the Hague Agreement. Effective and economical means of maintaining protection and subsequently managing the registration

For Offices Simplification of procedures - - examination as to form, classification of the industrial designs and publication is handled by the International Bureau.

THANKS!