World Intellectual Property Organization THE INTERNATIONAL REGISTRATION SYSTEMS National Seminar for Patent Attorneys Minsk, October 24 and 25, 2007 Federico Guicciardini Corsi Salviati Officer-in-charge Information and Promotion Division (IPD) Sector of Trademarks, Industrial Designs and Geographical Indications

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Table of Contents 1.Introduction 2.The Madrid System 3.The Hague System 4.Conclusions

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications (1) Introduction

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications International Systems Trademarks are distinctive signs, used to differentiate between identical or similar goods and services offered by different producers or services providersTrademarks Industrial designs, also referred to simply as designs, concern the ornamental or aesthetic aspects of productsIndustrial designs Both are a type of industrial property, protected by intellectual property rightsindustrial property

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications International Systems The WIPO-administered Madrid System for the International Registration of Marks offers a route to trademark protection in multiple countries by filing a single applicationMadrid System application Similarly, the WIPO-administered Hague System for the International Registration of Industrial Designs facilitates industrial designs protection in multiple countries by filing a single applicationHague System

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications (2) The Madrid System

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications One System – Two Treaties Madrid Agreement (adopted in 1891 and in force since 1893) Madrid Protocol (adopted in 1989 and in force since 1996) Common Regulations (adopted in 1996)

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Objectives of the System International Registration of Trademarks Simplified access to foreign markets

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications National Route (with national Offices) different procedures different languages fees paid in local currency recording of changes: several operations (usually) through a local agent VSInternational Route (with Office of origin  WIPO)  one procedure  one language  fees paid in Swiss francs only  recording of changes: one operation local agent not compulsory Usually when there is a refusal Alternative to the National Route

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Effects Simpler, faster and very much affordable Simplified registration in one country with the possibility of many designations Simplified management of a trademark portfolio

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Registration and Administration Registration and Administration of Trademarks in 81 Contracting Parties –through a single procedure –with a single administration –in a single language

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Closed System Attachment necessary –establishment (real and effective) –domicile –nationality Office of Origin

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications The Madrid System Procedure Role of the National Office Language Formal examination Registration Notification and publication Refusal (or not) by designated Contracting Parties

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Bundle of National Rights National (designated) Offices determine: –substantive conditions of protection –applicable procedure if refusal –scope of protection

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Central Administration Subsequent Designations Assignments Changes in Names and Addresses Limitation, renunciation, cancellation Renewal

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Basis of the International Application National registration (A) National registration or application (P) Language: French (A) - French, English or Spanish (P)

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Refusal of Protection 12 months (A) 12 months or 18 months (P) - or more in the case of an opposition

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Fees A Fee Calculator is available at WIPO WebsiteFee Calculator In 2006, applicants paid on average of 3,433 CHF for an international registration 55% or international registrations are less than 3,000 CHF 80% of registrations were less than 5,000 CHF Average of 11.5 designations per each registration

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Contracting Parties States (A) States and certain Intergovernmental Organizations (P)

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications To Sum Up AGREEMENTPROTOCOLE AccessionStatesStates plus Int. Organizations PreconditionBasic registrationBasic application or registration LanguagesFrenchEnglish, French and Spanish FeesSupplementary and complementary Possibility of individual fees Refusal time12 months18 months or + Dependency5 years5 years + transformation

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Madrid Union (81 Members) Agreement only: 7 Protocol only: 24 Agreement & Protocol: 50

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Recent Accessions: An Overview Viet Nam (to the Protocol): July 11, 2006 Botswana (to the Protocol): December 5, 2006 Uzbekistan (to the Protocol): December 27, 2006 Azerbaijan (to the Protocol): April 15, 2007 San Marino (to the Protocol): September 12, 2007 Oman (to the Protocol): October 16, 2007

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Trademarks Worldwide Over 2,000,000 trademark applications are filed worldwide annually Approximately 700,000 are international trademarks filings, from which: Over 300,000 are filed through the Madrid System (43%)

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications International Trademarks in force Some registrations in force Over 5 million active designations More than 159,000 different trademark owners

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Registration by Category of Right-Holder by December 31, 2006

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Top Filer Members in 2006 Major filer countries in 2006 (shares within total filings in 2006 and growth rates as compared to 2005)filer countries Country# FilingShare Germany6,55218 % France3, % USA3, % Italy3, % Benelux2, % Switzerland2,4686.6% UK1, % China1, % Spain1, % Austria1, % Australia1, %

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications International Registrations

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Renewals

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Number of Designations (2006)

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Fees per International Registration

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications International Applications

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Top filer Members in 2006

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Some significant filing increases in 2006 (as compared to 2005) # ApplicationsGrowth EU2, % Italy3, % Australia1, % Spain % USA % Other than the top 20 3, %

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Most Designated Contracting Parties in registrations + Subsequent Designations in 2006 Vs 2005 Country# DesignationsGrowth China15, % Russia14, % Switzerland14,2608.1% USA13, % Japan11, % EU10, % Australia9, % Norway9,1027.8% Ukraine9,0579.5% Turkey8,9584.2% Rep of Korea8, % Germany8, % Romania8,1034.4% France7, %

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Belarus and the Madrid System Agreement: December 25, 1991 Protocol: January 18, 2002 International registrations in 2007: 34 Subsequent designations in 2007: 7 Individual designations in 2007: 3736 Individual renewals in 2007: 2072 Subsequent designations in 2007: 631 September 2007

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications International Registrations from Belarus September 2007

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Subsequent Designations from Belarus September 2007

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Designations of Belarus September 2007

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Designations of Belarus in Renewals September 2007

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Belarus in Subsequent Designations September 2007

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications The Madrid System Website The Madrid SystemMadrid System Filing InformationFiling Madrid System Information NoticesInformation Notices Fees Calculator Guides and Information MaterialMaterial The WIPO Gazette of International MarksWIPO Gazette Annual Statistics Contacts

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications (3) The Hague System

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications The Hague Agreement The Hague Agreement is a procedural filing system for the international registration and protection of industrial designs, administered by the International Bureau of WIPO in Geneva (Switzerland)

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Registration and management of Industrial Designs in up to 47 Contracting Parties by: A single procedure With a single administration process (WIPO) In one language (English or French) On payment of a fee in a single currency (CHF) Objectives

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications The Hague System works on a purely procedural way. It does not determine: The conditions for protecting a design The procedure to be applied in order to decide whether a design may be protected The rights which result from protection These issues are governed by the national law of the designated countries Protection by Domestic Law

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications The Hague Agreement was adopted in 1925 and entered into force in June It was by then revised by 3 Acts, namely: The 1934 Act (London Act) in force in 1939 The 1960 Act (Hague Act) in force in 1987 The 1999 Act (Geneva Act) in force in 2004 Common Regulations (latest revision September 2007) and the Administrative Instructions Components

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications The Hague Union Members (47) 24 Geneva Act (1999) 21 Hague Act (1960) 2 London Act (1934)

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Geneva Act: (24) Albania, Armenia, Botswana, Croatia, Egypt, Estonia, European Community, France, Georgia, Hungary, Iceland, Kyrgyzstan, Latvia, Liechtenstein, Namibia, Republic of Moldova, Romania, Singapore, Slovenia, Spain, Switzerland, The FYR of Macedonia, Turkey, Ukraine Hague Act (21) Belgium, Belize, Benin, Bulgaria, Côte d’Ivoire, D.P.R. of Korea, Gabon, Germany, Greece, Italy, Luxembourg, Mali, Monaco, Mongolia, Montenegro, Morocco, Netherlands, Niger, Senegal, Serbia, Suriname London Act (2) Indonesia, Tunisia The Hague Union Members (47)

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications This is a closed system Connection required between applicant and a CP via establishment, domicile, habitual residence or nationality Filing either directly with WIPO or indirectly via the CP from which entitlement is derived Without the required entitlement in a CP it is not possible to file an international application under the Hague Agreement Who May Use the Hague System

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications No prior national application or registration is required to fill an international application Filing directly with WIPO in either English or French It must contain a reproduction of the industrial designs concerned, along with the designation of the CPs It may include up to 100 designs (same class of Locarno)Locarno The International Application

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications The International Application is normally sent directly to WIPO by the applicant WIPO checks the formal requirements WIPO does not appraise in any way the novelty of the designs and therefore it is not entitled to reject an international application on this ground An application complying with the prescribed formal requirements is registered and published by the International Bureau in the International Designs BulletinInternational Designs Bulletin The holder is notified a certificate of international registration Formal Examination by WIPO

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Each Office must identify in the Bulletin the registrations in which it is designated in order to proceed with the substantive examination provided by its domestic legislation An Office may refuse protection, in its territory, to an industrial design subject to international registration if it does not fulfil the conditions of protection at the national level 6 or 12 months refusal period ( ) Examination by Designated Office

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Same effect as a national application until the expiry of the refusal period of pending the outcome of the refusal procedure If no refusal, effect as a national registration from the date of its filing Effects of the International Registration

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications 5 years initial term from the date of the international registration Renewal up to 10 years (5+5) under the 1960 Act and up to 15 years (5+5+5) under the 1999 Act If the law of a designated CP provides for a longer duration (for instance 25 years), the IR can be renewed up to the same maximum duration International Registration Management

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications To Sum Up 1960 Act1999 Act AccessionStatesStates plus Int. Organizations LanguagesFrenchEnglish, French Refusal time6 months12 months option Additional Requirement Not possibleIdentity of creator, brief description, claim Min. duration10 years15 years

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Registrations by Country in 2006

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Most Designated Countries in 2006

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Registrations as of December, ,955 international registrations (from 9,349 different holders) 292,389 designations 1,260,164 designs During the year 2006 International registrations: 1,143 Average number of designs: 5 Renewals: 3,889 Average fee: 1,761 CHF All fees: 96% are below 5,000 CHF

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Classes of Goods 2006

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Some Top Users Swatch (CH); DaimlerChrysler (DE); Interior's (FR); Sony Overseas (CH); Unilever (NL); BMW (DE); Hermes Sellier (FR); SEB (FR); Sara Lee (NL); Phillips Electronics (NL); Porsche (DE); Braun (DE); Nokia (DE); Hansgrohe (DE); Tefal (FR); Société Elmar Wolf (FR); WTG Westfälische Textil-Ges. Klingenthal & Co. (DE); Seb (FR); Volkswagen (DE); Siemens (DE); Swarovski (LI); Interior’s (FR); Fiat (IT); Calor (FR); Leifheit (DE); Koziol Geschenkartikel (DE); Richmont (CH); Fonkel Meublemarketing (NL); Mainetti (DE); Guy Degrenne (FR); Cartier (FR); Salomon (FR); Grohe Water Technology (DE); Societe Des Verres des Verres de Securite (FR); Vitra Patente (CH); Grosfillex Sarl Arbent Oyonnax (FR); ITM Enterprises (FR); Chaumet International (FR); Henkel Kommanditgesellschaft auf Aktien Henkelstrasse (DE); Chopard International (CH); Goodyear Tire & Rubber Company (DE); WMF (DE); Groupe Bercher (FR).

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Why Protecting Designs in the EC 70%Prevent copying 23.4%Company policy 20.3%Get ahead competition 10.1%Prestige 6.5%Prevent people think “I copy” 5.8%Other

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Legal Texts and Guide

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications The Hague System Website The Hague SystemHague System Filing InformationFiling Fees Calculator Guides and Information MaterialMaterial The International Designs BulletinInternational Designs Bulletin The Hague Express DatabaseHague Express Annual Statistics Contacts

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications (4) Conclusions

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Conclusions for both Systems Administrative efficiency and flexibility Portfolio management (savings on costs) Business asset increasing commercial value of a company and its products Registered design may be licensed (or sold) Encourages fair competition and honest trade practices

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Conclusions for both Systems International protection with a minimum of formalities and expense The right to prevent unauthorized copying or imitation by third parties Exclude all others making, offering, importing, exporting or selling product with the design Overall management by WIPO Simplified access to new markets Saving on costs

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Making a Mark (Trademarks) Looking Good (Designs) Inventing the Future (Patents) Creative Expression (Copyright) IP for Business Series by the SMEs Division of WIPO

Madrid System The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications Useful Internet Links at WIPO WIPO Administered TreatiesTreaties The SMEs Division of WIPODivision Resources for BusinessBusiness Calendar of MeetingsMeetings WIPO Electronic BookshopBookshop E-Newsletters

World Intellectual Property Organization Many thanks!