Registration of Trademarks under the Madrid System LLM University of Turin – Study Visit Geneva October 3, 2013 Tetyana Demchenko Senior Legal Officer

Registration of Trademarks Principle of territoriality Trademark rights are confined to the territory in which the mark was applied for and registered Registration in Switzerland… Italy… France… Russia… etc. Protection only in Switzerland… Italy… France... Russia… etc.

National Route filing applications with the Trademark Office of each country in which protection of the mark is sought Registration of Trademarks Abroad (1)

Regional Route applying for protection in countries which are members of a regional trademarks registration system with effect in the territories of all Member States Benelux Trademark Office Office for Harmonization in the Internal Market (OHIM) African Regional Industrial Property Organization (ARIPO) African Intellectual Property Organization (OAPI) Registration of Trademarks Abroad (2)

International Route Madrid System for the International Registration of Marks Registration of Trademarks Abroad (3) National IP Office

Madrid System Objectives and Fundamentals Legal Framework and Geographical Scope Basic Features Facts and Figures Recent Developments Online Information Services Useful Links and Contacts

Objectives of the Madrid System A simple, low-cost and effective system to facilitate trademark protection in export markets through: one central filing and registration procedure producing effects in one or more territories bound by the system one central procedure to maintain and manage an international registration with effects in all territories concerned

Madrid System Fundamentals (1) From Application to Protection 21 – 23 FEBRUARY 2011, CANBERRA, AUSTRALIA Applicant: Filing in Home Country (O/O) O/O: Certifying an IA Forwarding IA to WIPO Substantive Examination Formal Examination Provisional Refusal Grant of Protection Registration Publication Certificate 12/18/18+ months Notification of designated CPs Recording in the International Register, publication, notification of a holder

Madrid System Fundamentals (2) Effects of the International Registration The International "Registration" = a National Application until the expiry of the time limit to issue a refusal a National Registration once the time limit to issue a refusal has expired (assuming no refusal or refusal withdrawn)

21 – 23 FEBRUARY 2011, CANBERRA, AUSTRALIA Holder National IP Office Designated CPs Registration Publication Notification Notification of designated CPs Madrid System Fundamentals (3) Management of International Registrations Request for Recording of Changes in the International Register Formal Examination Recording in the International Register, publication, notification of a holder

Holder Publication Notification of designated CPs Madrid System Fundamentals (4) Maintenance of International Registrations Payment for the Renewal of IR Renewal of IR Registration Certificate

Go National or International Route ? National Route Many Offices for filing Many application forms Many languages Many currencies Many registrations Many renewals Many modifications Many foreign attorneys needed from filing stage Madrid Route One Office for filing One single application form One language (E/F/S) One currency (Swiss francs) One international registration One renewal One modification Foreign attorney first needed in case of refusal

Legal Framework (1) Madrid Agreement (1891) latest revised in 1979 Madrid Protocol (1989) latest revised in 2007 Common Regulations as in force from January 1, 2013 Administrative Instructions as in force from January 1, 2008 Law and Regulations of each Contracting Party See at

Legal Framework (2) Agreement – v – Protocol Agreement Open to States Basic registration French (initially) Standard fees Refusal time limit of 12 months 5 year dependency Protocol …and Intergovernmental Organizations … or Basic application … and English and Spanish … or Individual Fees Possibility of time limit of 18 months or Longer … with Possibility of transformation

Madrid Treaties and Regulations providing the basic principles and mechanism of the system; governing the formal conditions for an international registration Domestic Law and Regulations of a Contracting Party governing the substantive conditions for granting protection in each relevant territory Legal Framework (3)

1 Agreement only 37 Protocol only (including EU) 54 Agreement and Protocol 92 Members Geographical Scope Madrid Union as of October 2013

91 MEMBERS PARTY TO THE MADRID PROTOCOL Albania, Antigua and Barbuda, Armenia, Australia, Austria, Azerbaijan, Bahrain, Belarus, Belgium, Bhutan, Bosnia & Herzegovina, Botswana, Bulgaria, China, Colombia, Croatia, Cuba, Cyprus, Czech Republic, Democratic People’s Republic of Korea, Denmark, Estonia, Egypt, European Union, Finland, France, Georgia, Ghana, Germany, Greece, Hungary, Iceland, India, Iran, Ireland, Israel, Italy, Japan, Kazakhstan, Kenya, Kyrgyzstan, Latvia, Lesotho, Liberia, Liechtenstein, Lithuania, Luxembourg, Madagascar, Mexico, Moldova, Monaco, Mongolia, Montenegro, Morocco, Mozambique, Namibia, Netherlands (+ Curaçao, Saint Martin, the BES Islands), New Zealand, Norway, Oman, Philippines, Poland, Portugal, Republic of Korea, Rwanda, Romania, Russian Federation, Rwanda, San Marino, San Tome and Principe, Serbia, Sierra Leone, Singapore, Slovakia, Slovenia, Spain, Sudan, Swaziland, Sweden, Switzerland, Syrian Arab Republic, the former Yugoslav Republic of Macedonia, Tajikistan, Tunisia, Turkey, Turkmenistan, Ukraine, United Kingdom, United States of America, Uzbekistan, Viet Nam, Zambia underlined = Agreement also 1 MEMBER PARTY TO THE AGREEMENT ONLY Algeria Madrid Union Members – October 2013

2012 & 2013 Philippines (with effect from July 25, 2012) Colombia (with effect from August 29, 2012) New Zealand (with effect from December 10, 2012) Mexico (with effect from February 19, 2013) India (with effect from July 8, 2013) Rwanda (with effect from August 17, 2013) Tunisia (with effect from October 16, 2013) Possible future accessions to the Madrid Protocol ASEAN-countries (by 2015) Barbados, Jamaica, Trinidad and Tobago (by 2014) Costa Rica and Dominican Republic South-Africa Geographical Scope – Updates

The Madrid System can only be used by an applicant from a member of the Madrid System for designating other members of the Madrid System bound by the same treaty, the Madrid Agreement or the Madrid Protocol Basic Features (1)

Basic mark (application or registration) in a Contracting Party of the Madrid System and Connection between an applicant or holder of the basic mark and that Contacting Party (establishment, domicile, or nationality) are needed Filing through an Office of origin Designation of one or more other Contracting Parties bound by the same treaty (a home designation is not possible) Basic Features (2)

Fixed time limits for granting or refusing protection by designated Contracting Parties 10 year term of protection with the possibility of renewal Possibility to add other CPs to IR (subsequent designation) Centralized management of international registrations Basic Features (3)

Dependence on the basic mark for the first 5 years Ceasing of effect of the basic mark and cancellation of IR Possibility of transformation of IR into national or regional applications under the Madrid Protocol Basic Features (4)

Facts and Figures International registrations in force as of December 31, ,826 international registrations in force 5.57 million designations in force 185,503 trademark holders

Madrid Registry Activity 2012

International Applications Filed in

Top 10 Filing Contracting Parties (2008 – 2012) Contracting Party of Origin European Union 3,600 3,710 4,707 5,859 6,333 United States of America 3,684 3,201 4,147 4,791 5,402 Germany 6,214 4,793 5,006 5,000 4,408 France 4,218 3,523 3,565 3,804 3,735 Switzerland 2,888 2,671 2,893 2,933 2,778 Italy 2,763 1,877 2,596 2,306 2,354 China 1,584 1,358 1,928 2,149 2,100 Japan 1,278 1,312 1,577 1,538 2,054 Benelux 2,668 1,968 1,922 1,920 1,755 Russian Federation 1,190 1,068 1,218 1,652 1,591 Others 11,987 9,713 10,128 10,318 11,508 Total42,07435,19539,68742,27044,018

Top 10 Designated Contracting Parties (2008 – 2012) Designated contracting party China 17,829 14,766 16,143 18,724 20,120 European Union 14,502 12,564 14,604 16,344 16,889 Russian Federation 16,768 14,150 14,250 15,691 16,634 United States of America 15,715 13,406 14,252 15,890 16,411 Switzerland 14,907 13,161 12,469 13,695 13,464 Japan 12,748 10,386 11,124 12,211 12,493 Australia 10,529 8,575 9,222 10,453 10,753 Republic of Korea 9,539 7,755 8,336 9,821 10,090 Turkey 9,844 7,942 8,210 9,277 9,656 Ukraine 10,635 8,539 8,288 8,903 9,282 Others 245, , , , ,227 Total378,894303,344299,476323, ,019

Top 10 Applicants in 2012 RankCountryNumber of IACompany 1CH176 NOVARTIS 2DE160BOEHRINGER INGELHEIM 3FR138 L'OREAL 4UK127GLAXO GROUP 5CH105NESTLÉ 6HU91RICHTER GEDEON NYRT 7DE90BSH BOSCH AND SIEMENS 8CH88PHILIP MORRIS BRANDS 9NE83KONINKLIJKE PHILIPS ELECTRONICS N.V. 10HU73EGIS GYOGYSZERGYAR

Top 5 Most Used Class Goods & Services (2011 – 2012) ClassesGoods and Services Covers e-g- computer hardware and software and other electrical or electronic apparatus of a scientific nature 9,2869, Covers services such as office functions, advertising and business management 7,5967, Covers services provided by e.g. scientific, industrial or technological engineers and computer specialists 5,5055,966 25Covers clothing, footwear, and headgear5,4115,617 5 Includes mainly pharmaceuticals and other preparations for medical purposes4,6874,936

Madrid System: Right-Holders

Legal Framework Discussions of the Working Group on the Legal Development of the Madrid System Customer-Service Policy Further Automation Madrid Goods and Services Manager Madrid Portfolio Manager Madrid Real-Time Status Madrid Electronic Alert Latest Developments

International Trademark Information Database ROMARIN To search for: the international marks recorded under the Madrid System, that are currently in force in the International Register or have expired within the past six months; data relating to international applications, subsequent designations and limitations that are still under the examination process within the International Bureau Online Information Services (1)

Goods and Services Manager On-line tool designated to assist trademark applicants in compiling the list of goods and services for the purpose of filing an international application Includes the terms from the Nice Classification (10 th edition as of January 1, 2012), frequent terms extracted from the Madrid International Register and terms from other databases (such as Trilateral list (US, EM, JP) and USPTO) accepted by the International Bureau as correctly classified Allows to reduce irregularity notices issued by the IB regarding the classification of goods and services Lists can currently be compiled in one of fifteen languages including English, French, Spanish, Arabic, Dutch, German, Hebrew, Italian, Portuguese, Russian, Chinese simplified and traditional, Japanese, Norwegian and Turkish, and translated into three Madrid working languages (English, French or Spanish) Online Information Services (2)

Madrid Real-time Status (MRS) provides the status in real time of trademark documents being processed by the International Bureau of WIPO Madrid Electronic Alert (MEA) allows users to create a list of international registration numbers of particular interest and to be informed by each time an inscription concerning one of them is recorded in the International Register Madrid Portfolio Manager (MPM) allows holders of international registrations and their representatives to access their international trademark portfolios in order to view and modify the international registrations concerned Online Information Services (3)

Useful Links Legal Texts and Guide E-WIPO Gazette of International Marks Fee Calculator International Application Simulator E-Renewal E-Payment ROMARIN (database of international marks) Global Brand Database Country Profiles Goods & Services Manager

Contact Us General queries on the Madrid System Madrid Customer Service: Specific queries on IA or IR For the electronic communication with IB

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