World Intellectual Property Organization Madrid System for the International Registration of Marks Basic Features and Recent Developments Mr. Yves Ngoubeyou Senior Information Officer Information and Promotion Division International Registrations Department Sector of Trademarks, Industrial Designs and Geographical Indications

Madrid System Objectives and Principles

Madrid System A Global Trademark Registration System Facilitating trademark protection in export markets through a simple, expeditious and cost-effective procedure for: the central filing of applications the central management of registrations

Madrid System Going Global Accelerated geographic expansion –more attractive as more trading partners join –increased flexibility in targeting markets with respect to particular goods and services Increased use –by existing as well as new Contracting Parties (developing as well as developed) –by small, medium and large enterprises (SMEs)

Madrid System Direct Filing Route / Madrid Route

Madrid System National (direct) route vs. Madrid (inter.) route Different procedures Only one procedure Different languagesOne language 1 of 3 (E/F/S) Different fees in localOne set of fees in CH currencies (exchange–rate implications) Management of IRs: Recording of changes One procedure in respect of all countries (in each separate country a different procedure) Representative required Representative required only in case of from outsetrefusal Advantages of the Madrid System

Madrid System Main Principles An additional route An optional route A closed system One registration - a bundle of rights

Madrid System Legal Framework and Geographical Scope

Madrid System Legal Framework Madrid Agreement (1891) latest revised in 1979 Madrid Protocol (1989) as in force from September 1, 2008 Common Regulations as in force from September 1, 2008 Administrative Instructions as in force from January 1, 2008 Law and Regulations of each Contracting Party- procedural System

Madrid System Madrid Union 84 members Agreement only 6 Protocol only 28 Agreement and Protocol 50 (Including EC)

Madrid System Madrid Union

Madrid System Madrid Union 78 PROTOCOL Albania, Antigua and Barbuda, Armenia, Australia, Austria, Azerbaijan, Bahrain, Belarus, Belgium, Bhutan, Bosnia and Herzegovina, Botswana, Bulgaria, China, Croatia, Cuba, Cyprus, Czech Republic, Democratic Peoples Republic of Korea, Denmark, Estonia, European Community, Finland, France, Georgia, Ghana, Germany, Greece, Hungary, Iceland, Iran, Ireland, Italy, Japan, Kenya, Kyrgyzstan, Latvia, Lesotho, Liechtenstein, Lithuania, Luxembourg, Madagascar, Moldova, Monaco, Mongolia, Montenegro, Morocco, Mozambique, Namibia, Netherlands, Norway, Oman, Poland, Portugal, Republic of Korea, Romania, Russian Federation, San Marino, Serbia, Sierra Leone, Singapore, Slovakia, Slovenia, Spain, Swaziland, Sweden, Switzerland, Syrian Arab Republic, the Former Yugoslav Republic of Macedonia, Turkey, Turkmenistan, Ukraine, United Kingdom, United States of America, Uzbekistan, Viet Nam, Zambia underlined = Agreement also 6 AGREEMENT ONLY Algeria, Egypt, Kazakhstan, Liberia, Sudan, Tajikistan Sept 2008

Madrid System Basic Principles

Madrid System Basic Principles A need for a basic application or basic registration (basic mark) in a CP of the Madrid System Attachment necessary between the owner and that CP: establishment, domicile, or nationality IA must designate one or more other CPs with common treaty Indirect filing through OO A time limit for refusal Possibility of subsequent designation (SD) IR is dependent on basic mark for 5 years 10-year term of protection Centralized management of IR

Madrid System Entitlement to File an International Application

Madrid System Someone … Natural Person Legal Entity

Madrid System … who has a connection … Real and Effective Industrial or Commercial Establishment (Establishment) Domicile Nationality

Madrid System … with a Member of the Madrid Union Contracting State –Establishment or domicile within territory of State –National of State Contracting Organization –Establishment or domicile within territory of Contracting Organization –National of a Member State of Contracting Organization –Individual Member States of Contracting Organization do not have to be party to the Agreement or Protocol

Madrid System Establishment Taken from Paris Convention, Article 3 –Excludes fraudulent or fictitious entities Some industrial or commercial activity must take place (i.e., not a mere warehouse) –Need not be principle place of business Question of National Law –Headquarters? –Law under which establishment was constituted? –Parent/subsidiary relationship? –Others?

Madrid System Domicile Taken from Paris Convention, Article 3 Question of National Law –Natural person Can be defined narrowly or broadly –Official authorization? –Actual residence? »More or less permanent situation of fact Generally believed intent was to be broad –Legal entity Law under which entity was constituted? Actual headquarters? Others?

Madrid System Nationality Taken from Paris Convention, Articles 2 and 3 Question of national law –Natural person As accorded or withdrawn by the State in question –Legal entity State Enterprise? Place of incorporation? Headquarters? Others?

Madrid System Comparison AgreementProtocol MembersStatesStates/Organizations Basic rightBasic registrationBasic registration/application EntitlementCascade No cascade FeesSupplementary andOr individual fee option complementary Refusal12 monthsOr 18 months or 18+ months (opposition) options Dependency5 years5 years with possible transformation SubsequentIndirect filing Indirect or direct filing designations

Madrid System Link with the CTM Obtaining CTM through IR but only under the Protocol Base an IA on a CTM-OHIM as Office of Origin New features in the Common Regulations: –indication of a second language (one of the 5 official EU languages), where EC is designated –claim of a seniority (MM17) –possibility of opting-back in case the designation of the EC drops before OHIM (conversion into Madrid designations)

Madrid System Types of International Applications

Madrid System Governed by Agreement and Protocol some designations made under Agreement some designations made under Protocol Governed exclusively by Protocol all designations made under Protocol Rule 1(viii): Rule 1(ix): Rule 1(x): Governed exclusively by Agreement all designations made under Agreement MM3 MM2 MM1 Types of Applications

Madrid System MM1 Why is this type of international application governed exclusively by the Agreement? A or Algeria Liberia A Sudan A

Madrid System MM1 Why is this type of international application governed exclusively by the Agreement? A or Sudan Liberia A France AP A A A

Madrid System MM1 - Requirements Office of Origin: Filing basis: Form: Language: Cascade applies - Article 1(3) of the Agreement Basic Registration MM1 English, French or Spanish Each Designation Supplemental + Complementary 12 months Fees: Refusal Period: International Application

Madrid System MM2 Why is this type of international application governed exclusively by the Protocol? AP or Vietnam AP France P Denmark P A APAP

Madrid System MM2 - Requirements Cascade does not apply Basic Registration or Basic Application MM2 French, English or Spanish Each Designation Supplemental + Complementary, or Individual 12 months, or 18 months or 18+ months Fees: Refusal Period: International Application Office of Origin: Filing basis: Form: Language: * Madrid Protocol, Article 9 sexies If AP AP: … a declaration made under Article 5(2)(b), Article 5(2)(c) or Article 8(7) of the Protocol... shall have no effect... * *

Madrid System MM3 Why is this type of international application governed by the Agreement and Protocol? AP France A AP Belarus Sudan Switzerland P A P APAP

Madrid System MM3 - Requirements Cascade applies - Article 1(3) of the Agreement Basic Registration MM3 English, French or Spanish Each Designation under the Agreement Supplemental + Complementary, or Individual 12 months, or 18 months, or 18+ months Supplemental + Complementary 12 months Fees: Refusal Period: Fees: Refusal Period: Each Designation under the Protocol International Application Office of Origin: Filing basis: Form: Language: * Madrid Protocol, Article 9 sexies If AP AP: … a declaration made under Article 5(2)(b), Article 5(2)(c) or Article 8(7) of the Protocol... shall have no effect... * *

Madrid System Repeal of the Safeguard Clause

Madrid System Article 9sexies(2) Extraordinary power to the Assembly to restrict or repeal the SC Review by Madrid Working Group Met 4 times Recommended a repeal of the SC Assembly adopted amendment Entry into force is September 1, 2008 Review of the SC

Madrid System MM1 Pre-September 1, 2008 Safeguard Clause – no application in this example: A A A or France Liberia AP A Sudan A i.e., an Agreement-only filing

Madrid System Pre-September 1, 2008 Application of the Safeguard Clause : A A AP A or Vietnam AP A France Madrid Protocol, Article 9 sexies (Safeguard Clause)... the provisions of this Protocol shall have no effect... Sudan i.e., still an Agreement-only filing

Madrid System MM3 AP France P A A A P AP Denmark APAP Egypt Switzerland Pre-September 1, 2008 Application of the Safeguard Clause A mixed (A+P) filing

Madrid System Agreement-only Filings and Mixed Filings Applicants must : Observe the cascade Have a basic registration in the Office of origin - Common Regulations Rule 9(5)

Madrid System New Article 9sexies September 1, 2008 (1)(a) « This Protocol alone shall be applicable as regards the mutual relations of States party to both this Protocol and the Madrid Agreement » - i.e., AP / AP situations Note: No change to Rule 9(5) of the Common Regulations !

Madrid System Remember: The basic principle remains unchanged – Application that is Agreement-only or Agreement + Protocol = Cascade + Basic Registration But: After repeal of Safeguard Clause, this priniciple will be hugely diluted, because of the consequences of the repeal.

Madrid System A P !! AP A or Vietnam AP A+PA+P France Liberia From September 1, 2008 This is no longer an Agreement-only filing; now a mixed (A+P) filing - So it is still subject to cascade + basic registration

Madrid System AP P France Italy Japan Germany From September 1, 2008 From Sept. 1, 2008, because of the repeal of the SC, a filing such as this will no longer be mixed, but will, instead be a Protocol-only filing P !! P P !!!

Madrid System 2008 : Agreement-only States - Algeria - Egypt - Kazakistan - Liberia - Sudan - Tajikistan

Madrid System Rule 6 French, English, Spanish in all new situations (after repeal of SC, only 0.3% of applications will be Agreement-only) –Exception : transitional situations (Rule 40(4)) Schedule of Fees –All Standard Fees From 73 to 100 CHF (1st increase since 1996) All amendments enter into force on September 1 Languages and Fees

Madrid System Statistics

Madrid System Share within Global Trademark Activity Over 200 different national/regional trademark jurisdictions worldwide Some 700,000 trademark applications filed by non- residents annually of which Some 350,000 are designations in international registrations (Madrid System)

Madrid System Major User Contracting Parties (Applications Filed) Germany 6, % 15.2%5004 France 3, % 9.8%3205 US 3, % 9.4%3172 EC 3, % 8.4%3079 Italy 2, % 6.7%2129 Switzerland 2, % 6.7%2360 Benelux 2, % 6.3%2037 China 1, % 3.6%1298 UK 1, % 2.9%1007 Japan % 2.6%1039 Morocco % 0.2% 72 Algeria % 0.05% 2 Egypt % 0.037% 28 Kenya % 0.01% 4 Mozambique Sudan No. Filings Growth ShareJan-Oct

Madrid System Most Designated CPs 2008

Madrid System International Registration Profiles

Madrid System International Registrations in Force International Register contained on June 30, 2008 Some 499,000 registrations in force, representing Some 5.5 million active designations, belonging to Approx. 164,000 different right holders (many of them SMEs) Average number of DCP in an IR CPs As from January 2008 until October, the International Bureau received 33,618 applications

Madrid System General Profile 2007

Madrid System Most popular classes of Gs&Ss recorded in 2007 Class 9 (computer hardware and software and other electronical apparatus of a scientific nature)-8.5% of the total, Class 35 (services, such as office functions, advertising and business management)-6.4%, Class 25 (clothing, footware and headware)- 5.3 %, Class 42(services provided by pharmaceuticals -4.7%.

Madrid System Recent Growth +23% | +7% +9% | +12% +14% | +42%+10% | +3%

Madrid System Trademarks in Force (June 2008)

Madrid System Some Top Users (2007) HolderCP HenkelDE Janssen Pharmaceutica BE NovartisCH LOrealFR UnileverNL Société des Produits Nestlé CH Sanofi-AventisFR Siemens Building Technologies Fire & Security Products DE BASFDE ITM Enterprises FR BayerDE BIOFARMAFR Richter Gedeon HU Lidl Stiftung DE

Madrid System Communication and Information

Madrid System Electronic Communication Constantly Expanding With Offices of Contracting Parties –6 offices (Australia, Benelux, Switzerland, EC, Republic of Korea, US) transmit IAs to IB electronically –4 offices (EC, Japan, Russia and US) transmit refusals electronically to the IB –4 offices (Australia, Benelux, EC and US) send modifications electronically to the IB –48 offices receive various notifications from IB electronically (of these 5 began in Bahrain, Botswana, Cyprus, Egypt and Monaco)

Madrid System Information Products and Services (1) Legal Texts and Guide paper publication on-line (free of charge) WIPO Gazette paper and CD subscription on-line (free of charge) Fee calculator on-line service (free of charge) Renewal on-line service Madrid Express on-line database (free access) Romarin on-line database (free access) DVD subscription (as from Oct 3, additional enlarged information available on Romarin database in relation to the status of a protection of a mark)

Madrid System Simulator –is designed to respond specifically to individual needs in using the Madrid SystemMadrid System –at the end of the simulation, it provides you with an estimated cost of registering your mark Information Products and Services (2)

Madrid System Information Concerning Procedures Before IP Offices The legal framework of Madrid system includes the national trademark legislations of all Madrid Member states In order to improve information concerning this issue, WIPO provides specific information in regard to procedures before IP Offices –74 country profiles to date

Madrid System Recent Developments in the Madrid System As of Sept. 1, 2009, a statement of grant of protection will be obligatory –improve accessibility of information regarding the fate of IRs in designated CPs Enlarging the language regime –study to be conducted by WIPO for introducing Arabic, Russian, Chinese and Portuguese as official filing languages

Madrid System Recent Accessions In the last 5 years 22 new Members joined MP – most recent –Azerbaijan (P): April 15, 2007 –San Marino (P): September 12, 2007 –Oman (P): October 16, 2007 –Madagascar (P): January 28, 2008 –Ghana (P): September 16, 2008 –Sao Tome and Principe (P) : December 8, 2008 –Bosnia and Herzegovina (P) : January 29, 2009

Madrid System Prospective Accessions Most promising –Mexico, Israel, Tajikistan(A), Kazakhstan (A), Bosnia and Herzegovina (A) Under consideration –Brazil, Canada, India, Indonesia, New Zealand, Thailand, Sudan (A), South Africa

Madrid System Promoting the Madrid System in LDCs In order to improve the ability of trademark owners from LDCs to benefit from the Madrid System, WIPO offers applicants, originating from LDCs, a 90% reduction in the basic fee, since January 1, 2006 –Bhutan, Lesotho, Liberia, Mozambique, Sierra Leone, Sudan, Zambia, Sao Tome and Principe

Madrid System Our Aim at WIPO Make the Madrid System ever more attractive flexible user friendly cost effective to meet the expectations of rights holders representatives Contracting Parties

Madrid System Thank you