Overview of the Madrid System for the International Registration of Marks Roving Seminar on WIPO Services and Initiatives Kui Wou KWUN Director-Advisor WIPO Academy World Intellectual Property Organization Seoul, Daejeon July 16-17, 2019 1

Options for protecting a trademark The national route The regional route The international route: The Madrid Protocol Which option to choose, depends on a number of factors and in particular, the export markets of interest

The International route: The Madrid System The Madrid System may be the preferred option when you: Seek protection in multiple markets Want to add new markets as your export plans develop Have limited budget and/or time to manage your trademarks

What is the Madrid System? One-stop shop for trademark holders to obtain and maintain protection in export markets (a centralized filing and management system) One application, one language, one set of fees for protection in multiple markets = bundle of national rights Expand protection to new markets as your business strategy evolves

The Madrid System is Global Currently: 121 countries covered by 105 members Markets cover more than 70% of the world population Recent accessions include: 2017: Thailand and Indonesia 2018: Afghanistan, Malawi and Samoa 2019: Canada, Brazil

The Madrid System is Global Currently: 121 countries covered by the 104 members Markets cover more than 70% of the world population Recent accessions include: 2017: Thailand and Indonesia 2018: Afghanistan, Malawi and Samoa 2019: Canada, Brazil

Africa: South Africa Arab region: Jordan, Qatar and the United Arab Emirates Asia: Bangladesh, Malaysia, Pakistan, Papua New Guinea and Sri Lanka Europe: Malta Latin America and the Caribbean: Chile and Trinidad and Tobago

Key Features The Madrid System is a closed system Entitlement (real and effective industrial or commercial establishment/domicile/national) Registration or application (basic mark) in your Office of origin The international application must be filed through the Office of origin Formalities examination by WIPO Designated members decide the scope of protection Fixed time limit for refusal – 12 or 18 months/18 months+

Key Features… cont. Possible to expand the geographical protection to new export markets (subsequent designation) Possible to tailor the list of goods and services (G&S) Centralized management directly with WIPO Renewal and recording of changes to IR Replacement Dependency – Ceasing of effect – Transformation National/regional mark and IR must be in the name of same holder Protection of the IR must extend to said dCP The goods and services in the national/regional mark must be listed in the IR (partial replacement is possible) The IR must take effect after the date of the national/regional registration Holder’s responsibility to satisfy all conditions Replacement will take place automatically Holder may request the national/regional Office (dCP)to take note of the IR The Office will notify WIPO where it has taken note WIPO will record the fact in the International Register The national/regional registration remains unaffected on the Register (unless it is not renewed) Advisable to renew national/regional mark within the dependency period of IR

The International Trademark Registration Process

The costs Handling fee to the Office of origin, if required Fees are payable to WIPO in Swiss francs Basic fee (653 CHF/903 CHF) Fees for designated Contracting Parties (dCP): Standard fees OR Individual fees, where this is declared * Applicants from Least Developed Countries benefit from a 90% reduction in the basic fee

Being a Member of the Madrid System Being a member of the Madrid System may have an impact on the Local businesses and industries (the trademark owner) The Office and the government The local attorneys and agents

Benefits for local businesses/trademark owner Various options for trademark protection The Madrid System facilitates easy access to potential export markets One application, one language, one currency Possible to designate all possible members One Madrid application = bundle of national rights

Benefits for local businesses/trademark owner.. .cont. No translation costs due to multiple languages or working through the administrative procedures of multiple IP Offices One international registration with one renewal date There is no requirement for supporting documents Centralized management of portfolio Its possible to add countries when business expands (allowing costs to be staggered)

The Office and government Where it is the Office of origin: It empowers local industry, in particular the SMEs Provides easier access to export markets Promotes international trade and further development of export Where the Contracting Party is designated: Simplified examination in the Office Provides more favorable climate for foreign investment More filings means economic growth 15 15

Role of the local attorneys and agents Develop trademark strategies for local clients/businesses Assist with national applications Advise and assist on options for protection abroad Assist foreign clients with enforcing rights in the country Act on their behalf towards the Office Respond to refusals and file oppositions (increased substantive work) Initiate cancellation actions

Statistics 2018

International Applications Figure A.1.1 Trend in international applications (2004-2018) March 19, 2019updated Source: WIPO IP Statistics Section

Top 20 Filing Origins (2018)

Top 20 Designated Contracting Parties

Republic of Korea Member of Madrid System since April 10, 2003 Republic of Korea ranks 14th (1,305 filings) in 2018 First (still active) mark filed on April 10, 2003 based on a basic mark dated 2001. SAMSUNG ELECTRONICS CO., LTD.  416, Maetan-dong, Paldal-gu  Suwon city, Kyungki-do  (KR)

Top 10 Applicants – Republic of Korea (2018) SAMSUNG ELECTRONICS CO., LTD (73) LOTTE CORPORATION (42) LG HOUSEHOLD & HEALTHCARE LTD (30) AMOREPACIFIC COPORATION (28) COUPANG CORP (28) TEMTREE CO., LTD (27) HYUNDAI MOTOR COMPANY (14) BODY FRIEND CO., LTD. (13) PUBG CORPORATION (10) SEOUL SEMICONDUCTOR CO., LTD. (9)

Top 10 Contracting Parties designated by Korean holders United States of America 759 Japan 737 China 674 Viet Nam 595 EUIPO 558 Thailand 473 Singapore 466 Indonesia 417 Russian Federation 403 Philippines 389

Top 10 Contracting Parties designating the Republic of Korean (2018) United States of America 2936 China 1914 Germany 1853 Japan 1587 France 1083 Italy 831 Switzerland 763 United Kingdom 746 Australia 405 Spain 286 Who is designating Korea

Online Resources and E-Services

Online Resources and E-Services Global Brand Database search existing marks from national & international sources trademarks, appellations of origin and official emblems Madrid Goods & Services Manager compile a list of approved goods & services terms in 18 languages Member Profiles Database Fee Calculator Madrid Monitor track real-time status of registration watch competitors’ marks e-alerts consult the WIPO Gazette Madrid Portfolio Manager access documents request changes modify, designate & renew pay fees obtain extracts

Madrid Goods & Services Manager Compile and verify the list of goods and services required for an international application Nice Classification class headings, terms and explanatory notes Over 100,000 indications in English Compile and translate your list in 20 languages Check acceptance of terms by WIPO and 35 participating Offices ASIAN similar group codes used by Japan and the Republic of Korea

Recent and Upcoming Developments

Recent Developments Division and/or Merger of an International Registration possible since February 2019 Useful where some of the goods/services have been refused and the holder wishes to avoid delay in progressing the registration in respect of the acceptable goods/services. Contracting Parties can opt-out if their domestic legislation does not provide for division or merger, or the new rules are not compatible with their applicable domestic laws (Republic of Korea has opted out). As of February 1, 2019: Introduction of division and merger of IRs Division: Possible to divide an IR before a CP only New Rule 27bis and new mandatory form MM22 Fees to WIPO (177 CHF) and possibly to the Office concerned Will result in new international registration – using same number + add a letter (A, B, etc.) + 30 Offices will not present requests for division More information in Information Notice 2018/21 Merger of IRs resulting from partial change in ownership New Rule 27ter(1) and new mandatory form MM23 Merger of IRs resulting from division New Rule 27ter(2) and new mandatory form MM24 No fee to WIPO but some Offices may require a fee Will be merged with the IR it was divided from + 45 Offices will not present requests for merger

Future Developments February 1, 2020: The Common Regulations will change name to the Regulations under the Protocol Possible introduction of more languages (currently English, French, Spanish) Introduction of more E-forms (currently e-renewal and e-subsequent designation

Keep updated on the Madrid System Visit the Madrid Website www.wipo.int/madrid/en Register to free Madrid Webinars Subscribe to Madrid Notices, our legal and news updates Sign up for Madrid Highlights

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