Protecting a Valuable Asset – How to Protect Your Brand With Madrid Hanoi October 24, 2017 Denis Croze Director, WIPO Singapore Office

Common Forms of Trademarks Word/s (in a plain font or a ‘fancy’ font) phrase logo picture aspect of packaging or combination of the above... JUST DO IT

Source: Forbes – The World’s Most Valuable Brands 2017 Ranking Why Protect? Trademark is often the most valuable asset an SME owns Potential to constantly appreciate in value Acts as deterrent to infringers domestically and overseas Source: Forbes – The World’s Most Valuable Brands 2017 Ranking

Protection Options The national route - file trademark application/s with the IP Office of each country in which you want protection The regional route (where available) - apply through a regional trademark registration system with effect in all member states (e.g. EUIPO application gives protection in all current and future EU members) The international route - file through the Madrid System The trademark owner, or representative, must then make a choice regarding the best way to protect marks abroad. There are three main options: The National Route, which involves filing separate applications with the IP Office of each country in which protection is sought. OR The Regional Route, which involves applying for protection through a regional trademark registration system with legal effect in all member states. This includes applying for protection through the European Union Intellectual Property Office, and the African Intellectual Property Organization. OR The International Route, which involves filing through the Madrid System. The most appropriate option depends on a firm’s business strategy, including its financial resources, and the markets and the timeframes in which protection is sought.

The International Route The Madrid System may be preferred when you: Seek protection in multiple markets, particularly if these are in different regions Want flexibility to add new markets as your export plans develop Have limited budget and/or time to spend on registration and management of your trademarks

Independent Filings vs WIPO Registration Systems International Bureau of WIPO

The Madrid System is Convenient Access a centralized filing and management procedure File one application, in one language and pay one set of fees for protection in multiple markets Expand protection to new markets as your business strategy evolves

The Madrid System is Cost-effective File an international application, which is the equivalent of a bundle of national applications, effectively saving time and money Avoid paying for translations into multiple languages or working through the administrative procedures of multiple IP Offices Saving in currency exchange rate costs?

Costs Fees are payable to WIPO in Swiss francs Basic fee*, which includes 3 classes of goods/services 653 Swiss francs – b/w reproduction of mark 903 Swiss francs – color reproduction of mark Fees for designated Contracting Parties (dCP) Standard fees – complementary (100 Swiss francs per dCP) and supplementary (100 Swiss francs per class beyond 3) OR Individual fees where this is declared

How Much? Saving in currency exchange rate costs?

How Much? 2379 CHF = 2439 USD (for 10 years registration) Saving in currency exchange rate costs?

How Much for ASEAN Members? 1448 CHF = 1482 USD (for 10 years registration) Saving in currency exchange rate costs?

Members of the Madrid System 116 countries *All members are bound by the Protocol, the governing treaty, and 55 are also bound by the Agreement. These members represent more than 80% of world trade, with potential for expansion as membership grows. WIPO conducts a formal examination of the international application but Contracting Parties may have specific requirements and procedures regarding applications, registrations or designations through the Madrid System. Can subsequently designate other countries

The Madrid System is Global Currently: 116 countries covered by the 100 members Markets that represent more than 80% of world trade Recent accessions include: 2014: OAPI and Zimbabwe 2015: Algeria, Cambodia, The Gambia and Lao People’s Democratic Republic 2016: Brunei Darussalam 2017: Thailand, Indonesia ALGERIA: In July 31, 2015, the Government of the People’s Democratic Republic of Algeria deposited its instrument of accession to the Madrid Protocol. The Protocol entered into force with respect to Algeria on October 31, 2015. Signatory to the Madrid Agreement since July 5, 1972, the country was the last of the 95 members of the Madrid System which was not party the Protocol. This represented a milestone for the Madrid System and its users. In practical terms, the Madrid System now operate as a single treaty system, with the Protocol governing all transactions between or in respect of Contracting Parties and users. See http://www.wipo.int/madrid/en/news/2015/news_0020.html

The Madrid System is Used by all Business Sectors Madrid System users come from all corners of the globe and represent a broad cross-section of industries of different sizes

Madrid System Users: Business Size Individual entrepreneurs, small and large businesses find the Madrid System to be a convenient and cost-effective means to protect marks in key markets throughout the world

Right-Holders (2016) OPTIONAL SLIDE To be updated in April 2018 Source: Madrid Yearly Review 2017 - WIPO publication No. 940 Some 80% of Madrid users are small IP right holders with a portfolio of just one or two registered marks . Overall, about 90% of all holders of active registrations held up to four international registrations in their portfolios. The 5.68 million designations in active registrations in 2016 were owned by about 226,000 right holders   A majority (63.4%) of firms or individuals holding an active international registration possessed only a single such registration in their 2016 portfolios – a situation that has remained almost unchanged since 2012. Another 16.8% of holders owned only two active registrations. Overall, about 90% of all holders of active registrations held four or fewer international registrations in their portfolios, and about 95% owned no more than seven active registrations (standard figure C10).

How the Madrid System Works The International Trademark Registration Process At a high-level, the International Trademark Registration Process can be divided into three stages: Stage 1 - Application through a National or Regional IP Office (known as the Office of origin) Stage 2 - Formal Examination by WIPO Stage 3 – Substantive Examination by IP Offices (individually know as an Office of the designated Contracting Party)

Timeline The International Trademark Registration Process Basic application or registration Date of International Registration Substantive examination IRN Certificate Recorded at WIPO and communicated Office of Origin WIPO Designated Office Decision of designated Office: Grant or Refusal Time limit for provisional refusal 12 or 18 months 2 months 2 – 3 months 10 years The International Trademark Registration Process Blue/grey blue colors: WIPO (International Bureau) Burgundy/pink colors: Office of Contracting Parties (Office of Origin or designated Contracting Parties)

Thank You for Your Attention WIPO Website: http://www.wipo.int/ Madrid Website: www.wipo.int/madrid/en/ WIPO Singapore Office: http://www.wipo.int/singapore/ Email: singapore.office@wipo.int denis.croze@wipo.int