Madrid System for the International Registration of Marks Lilian Liu TM Dept. Lehman, Lee & Xu July 31,

Basic Ways of Overseas Trademark Registration 1. International organizations registration Madrid System European Community Trademark System African Intellectual Property Organization African Regional Intellectual Property Organization 2. National registration Filed separate trademark applications based on the regional characteristics of trademark protection in each country

Outline 1. Brief Introduction 2. Why we apply for International Registration of Mark under Madrid System 3. How to register an International Registration of mark under Madrid System

What is Madrid System? The Madrid system for the international registration of marks (the Madrid system) established in 1891 functions under the Madrid Agreement (1891), and the Madrid Protocol (1989). It is administered by the International Bureau of WIPO located in Geneva, Switzerland.

Madrid System International registration system Madrid Union –Madrid Agreement (1891) –Madrid Protocol (1989) (1996) –Common Regulations System administered by WIPO Only for States Party to the Madrid Union

Parties to the Madrid Union Agreement only 8 Protocol only 23 Agreement and Protocol 49

Members of the Madrid Union Albania (A&P) Algeria (A) Antigua and Barbuda (P) Armenia (A&P) Australia (P) Austria (A&P) Azerbaijan (A&P) Bahrain (P) Belarus (A&P) Belgium* (A&P) Bhutan (A&P) Bosnia and Herzegovina (A) Botswana (P) Bulgaria (A&P) China (A&P) Croatia (A&P) Cuba (A&P) Cyprus (A&P) Czech Republic (A&P) Democratic Peoples Republic of Korea (A&P) Denmark (P) Egypt (A) Estonia (P) European Community (P) Finland (P) France (A&P) Georgia (P) Germany (A&P) Greece (P) Hungary (A&P) Iceland (P) Iran (Islamic Republic of) (A&P) Ireland (P) Italy (A&P) Japan (P) Kazakhstan (A) Kenya (A&P) Kyrgyzstan (A&P) Latvia (A&P) Lesotho (A&P) Liberia (A) Liechtenstein (A&P) (A): only the Agreement applies (8) (P): only the Protocol applies (23) (A&P): both the Agreement and Protocol apply (49)

Members of the Madrid Union Lithuania (P) Luxembourg* (A&P) Moldova (A&P) Monaco (A&P) Mongolia (A&P) Montenegro (A&P) Morocco (A&P) Mozambique (A&P) Namibia (A&P) Netherlands: – Territory in Europe* (A&P) – Antilles** (P) Norway (P) Poland (A&P) Portugal (A&P) Republic of Korea (P) Romania (A&P) Russian Federation (A&P) San Marino (A) Serbia (A&P) Sierra Leone (A&P) Singapore (P) Slovakia (A&P) Slovenia (A&P) Spain (A&P) Sudan (A) Swaziland (A&P) Sweden (P) Switzerland (A&P) Syrian Arab Republic (A&P) Tajikistan (A) The former Yugoslav Republic of Macedonia (A&P) Turkey (P) Turkmenistan (P) Ukraine (A&P) United Kingdom (P) United States of America (P) Uzbekistan (A&P) Viet Nam (A&P) Zambia (P) (A): only the Agreement applies (8) (P): only the Protocol applies (23) (A&P): both the Agreement and Protocol apply (49)

Recent developments The accession of the United States to the Madrid Protocol on 2 November 2003United States The accession of European Union to the Madrid Protocol on 1 October 2004European Union

Some terms of Madrid System Contracting Parties - States party to the Agreement and/or the Protocol and organizations party to the Protocol are referred to collectively as Contracting Parties Office of origin - Trademark Office of the Contracting Party with which the applicant has the necessary connection through establishment, domicile or nationality. WIPO - World Intellectual Property Organization

Some terms of Madrid System Basic Registration or Basic Application - an existing trademark application or registration owned by the Applicant in the Office of Origin Extension of Designation (extension of designation and Subsequent extension of designation) - An international application must designate the Contracting Parties in which the mark is to be protected

Madrid Agreement and Madrid Protocol Madrid Agreement Adopted in 1891, entered into force in 1892 Any State which is a party to the Paris Convention for the Protection of Industrial Property Basic registration French Basic fee + supplementary fee 12 months Can not be transformed into a series of applications in each designated jurisdictions Madrid Protocol Adopted in 1989, came into operation on April 1, 1996 Any State which is a party to the Paris Convention for the Protection of Industrial Property + intergovernmental organization Basic registration or application French, English or Spanish Basic fee + supplementary fee + individual fee 12 or 18 months Can be transformed into a series of applications in each designated jurisdictions

Who may use the Madrid System a natural person or a legal entity which has a real and effective industrial or commercial establishment in, or is domiciled in, or is a national of, a country which is party to the Madrid Agreement or the Madrid Protocol, or who has such an establishment in, or is domiciled in, the territory of an intergovernmental organization which is a party to the Protocol, or is a national of a Member State of such an organization.

Three Kinds of International Application an international application governed exclusively by the Agreement; an international application governed exclusively by the Protocol; an international application governed by both the Agreement and the Protocol.

Effects of the International Registrations An international registration is equivalent to a bundle of national registrations Effective from the date of the international registration or the date of subsequent designation

Duration of Registration/Renewal effective for 10 years may be renewed in respect of all the designated Contracting Parties or in respect of only some of them

Why we apply for International Registration of Marks under Madrid System 1. it facilitates the obtaining of protection for marks 2. it is flexible enough to accommodate the changes subsequent to registration

Advantages NATIONAL ROUTE Different procedures Different languages Fees in local currency Through a local agent Recording changes: several operations MADRID ROUTE One procedure One language (English/French/Spanish) Fees in Swiss francs Local agency only if there is a refusal Recording changes: one operation

disadvatanges Limitation of protected country On the premise of basic registration or basic application InstabilityCentral Attack"

Central Attack Attacking the basic application or basic registration would lead to the same effect of the International Registration

Procedure Precondition basic registration or basic application International application Office of Origin Checks correspondence with basic application/registration checks formalities records in International Register publishes International Gazette notifies the designated CP´s Office of Designated CP Substantive exam Refusal no refusal (national reg) International Bureau

Madrid Trademark Search earch-struct.jsp

The End. Thank You! Lilian Liu TM Dept.