Overview of the Madrid System USPTO GIPA 23 October 2013 Alan Datri Senior Counsellor  Slide updated 10/25/13.

Madrid System for the International Registration of Marks Madrid Agreement (1891) Madrid Protocol (1989) –As amended on October 3, 2006, and on November 12, 2007 Common Regulations Administrative Instructions National Laws and Regulations

Contracting Parties 1 Agreement only 37 Protocol only (including EU) 54 Agreement and Protocol 92 Members

Centralization Centralized system for the acquisition, maintenance and management of trademark rights by filing a single international application for a single international registration in which one or more Contracting Parties are designated. Allows right holders to target national, regional or global markets with respect to particular goods and services. Cost-effective and efficient, thereby creating opportunities that would not otherwise exist for any enterprise with a limited legal budget, be it small, medium or large.

Applicant Territory A Territory B Territory C Applicant Territory A Territory B Territory C Office A Office B Office C Centralization National/Regional Route International Route

Centralization one Office for filing one language one currency one int. registration one renewal* one modification* foreign attorney or agent first needed if refused many Offices for filing many languages many currencies many registrations many renewals* many modifications* foreign attorney or agent first needed at filing National/Regional Route International Route * Maintenance (renewal) and management (requests for modification such as change of name and address; transfer of ownership; limitation, renunciation or cancellation of goods and services or designs; appointment of representative, etc.).

Acquisition Basic Mark International Application OFFICE OF DESIGNATED CONTRACTING PARTY OFFICE OF ORIGIN OFFICE OF DESIGNATED CONTRACTING PARTY SUBSTANTIVE EXAMINATION FORMALITIES EXAMINATION International Register Certificate of International Registration Publication Notification CERTIFICATION INTERNATIONAL BUREAU

Maintenance and Management Renewal (10-year) – MM11 Subsequent designation – MM4 Subsequent designation from conversion (EU) – MM16 Record change in ownership – MM5 Limit G&S in one or more designated Contracting Parties – MM6 Renounce all G&S in one or more designated Contracting Parties – MM7 Cancel G&S – MM8 Change of name and/or address of holder – MM9 Change of name and/or address of representative – MM10 Appointment of a domestic representative – MM12 Record license – MM13 Record restriction on right of ownership – MM19  Slide updated 10/25/13.

Additional Features Dependency; Ceasing of Effect; Independence Article 6; Rule 22 Transformation Article 9quinquies Replacement Article 4bis; Rule 21  Slide updated 10/25/13.

Keeping it in Perspective Simple in concept Accommodates business models that need to reduce costs not only in the initial filing, but also in the maintenance and management of a right Can be complex in implementation and use Not surprising in what it seeks to accomplish, namely, to provide centralized access to different national and regional design systems Practitioners, Practitioners, Practitioners Proper functioning system depends on the advice of a knowledgeable practitioner, whether legal or paralegal or in house or outside counsel  Slide updated 10/25/13.

Thank You Alan M. Datri Senior Counsellor Office of the Deputy Director General