World Intellectual Property Organization THE MADRID SYSTEM FOR THE INTERNATIONAL REGISTRATION OF MARKS: OBJECTIVES AND BASIC FEATURES Tel Aviv, July 4, 2007 José Graça-Aranha Director International Registrations Department (IRD) Sector of Trademarks, Industrial Designs and Geographical Indications

Madrid System The International Registrations Department – Madrid System Table of Contents 1.Introduction 2.Main features 3.Overview on the procedures 4.Geo profiles 5.Statistical data 6.Conclusions

Madrid System The International Registrations Department – Madrid System (1) Introduction

Madrid System The International Registrations Department – Madrid System 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 International Registrations Department – Madrid System (2) Main Features

Madrid System The International Registrations Department – Madrid System Objectives of the System International Registration of Trademarks Simplified access to foreign markets

Madrid System The International Registrations Department – Madrid System 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 The Protection Abroad: An Alternative to the National Route

Madrid System The International Registrations Department – Madrid System 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 International Registrations Department – Madrid System (3) Overview on the Procedures

Madrid System The International Registrations Department – Madrid System Registration and Administration Registration and Administration of Trademarks in up to 80 Contracting Parties –through a single procedure –with a single administration –in a single language

Madrid System The International Registrations Department – Madrid System Closed System Attachment necessary –establishment (real and effective) –domicile –nationality Office of Origin

Madrid System The International Registrations Department – Madrid System 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 International Registrations Department – Madrid System Bundle of National Rights National (designated) Offices determine: –substantive conditions of protection –applicable procedure if refusal –scope of protection

Madrid System The International Registrations Department – Madrid System Central Administration Subsequent Designations Assignments Changes in Names and Addresses Limitation, renunciation, cancellation Renewal

Madrid System The International Registrations Department – Madrid System Basis of the International Application National registration (A) National registration or application (P) Language –French (A) –French, English or Spanish (P)

Madrid System The International Registrations Department – Madrid System Refusal of Protection 12 months (A) 12 months or 18 months (P) –or more in the case of an opposition

Madrid System The International Registrations Department – Madrid System Fees Complementary fee per designation (CHF 73) (A) Option for individual tax per designation

Madrid System The International Registrations Department – Madrid System Contracting Parties States (A) States and certain Intergovernmental Organizations (P)

Madrid System The International Registrations Department – Madrid System The Agreement Vs. the Protocol Basis of the international application Language Refusal of protection Fees Regional Systems

Madrid System The International Registrations Department – Madrid System 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 International Registrations Department – Madrid System (4) Geo Profiles

Madrid System The International Registrations Department – Madrid System Madrid Union (80 Members) Agreement only: 7 Protocol only: 23 (Including EC) Agreement & Protocol: 50

Madrid System The International Registrations Department – Madrid System 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

Madrid System The International Registrations Department – Madrid System (5) Statistical Data

Madrid System The International Registrations Department – Madrid System 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 International Registrations Department – Madrid System International Trademarks in force Some registrations in force Over 5 million active designations More than 159,000 different trademark owners

Madrid System The International Registrations Department – Madrid System Registration by Category of Right-Holder by December 31, 2006

Madrid System The International Registrations Department – Madrid System 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 International Registrations Department – Madrid System International Registrations

Madrid System The International Registrations Department – Madrid System Renewals

Madrid System The International Registrations Department – Madrid System Number of Designations (2006)

Madrid System The International Registrations Department – Madrid System Fees per International Registration

Madrid System The International Registrations Department – Madrid System International Applications

Madrid System The International Registrations Department – Madrid System Top filer Members in 2006

Madrid System The International Registrations Department – Madrid System 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 International Registrations Department – Madrid System 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 International Registrations Department – Madrid System (6) Conclusions

Madrid System The International Registrations Department – Madrid System Advantages for the Users Administrative efficiency Flexibility Portfolio management Larger applicants Savings on costs

Madrid System The International Registrations Department – Madrid System Conclusions Simplified access to new markets The future

World Intellectual Property Organization Many thanks!