World Intellectual Property Organization The Strategic Use for SME’s of the Madrid and Hague Systems Betty Berendson, Senior Information Officer Information and Promotion Division, Sector of Trademarks, Industrial Designs and Geographical Indications

World Intellectual Property Organization THE MADRID SYSTEM Objectives and Basic Features

Objectives of the System International Registration of Trademarks Simplified access to foreign markets

Characteristics Economical Fast Simple

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

Advantages for Users Simpler, faster and much more affordable Simplified registration in one country with the possibility of many designations Simplified management of a trademark portfolio Flexibility

Registration and Administration of Trademarks in up to 80 Contracting Parties –through a single procedure –with a single administration –in a single language

Closed System Attachment necessary –establishment (real and effective) –domicile –nationality Office of Origin

Procedure through the Madrid System Via national office Language Formal examination Registration Notification and publication Refusal (or not) by designated Contracting Parties

Bundle of National Rights National (designated) Offices determine: –substantive conditions of protection –applicable procedure if refusal –scope of protection

Central Administration Subsequent Designations Assignments Changes in Names and Addresses Limitation, renunciation, cancellation Renewal

Madrid Union (80 Members)

International trademarks in force some registrations in force over 5 million active designations more than 159,000 different trademark owners

Marks by right- holder > 500 Total 80.52% 16.8% 3.21% 0.18% 0.01% 100,00% 128,080 25,579 5, ,075 Number of right-holders Right- holders (159,075)  Registrations by Category of Right-Holder by end of December 2006

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%)

On-line Services Madrid Express database ROMARIN database WIPO Gazette of International Marks E-Renewal Fee Calculator

Top filer Members in 2006

# filings share Germany6, % France3, % United States3, % Italy3, % Benelux2, % European Community2, % Switzerland 2, % United Kingdom1, % China1, % Spain1, % Austria1, % Australia1, %

Some significant filing increases in 2006 (as compared to 2005)

European Community2, % Italy3, % Australia1, % Spain % United States % other than the top 203, % # applications growth

Most designated Contracting Parties in registrations + subsequent designations in 2006 (as compared to 2005 )

China15, % Russian Federation14, % Switzerland14, % United States of America13, % Japan11, % European Community10, % Australia 9, % Norway 9, % Ukraine 9, % Turkey 8, % Rep of Korea 8, % Germany 8, % Romania 8, % # designations growth

Conclusion Madrid System A useful economic tool to obtain and maintain protection of marks!

World Intellectual Property Organization THE HAGUE SYSTEM Objectives and Basic Features

Purpose of the Hague Agreement An international registration system for protection of industrial designs in several countries, by means of a single international application filed with the International Bureau of WIPO. A single international application replaces a whole series of national applications.

Legal Framework Hague System Concerning the International Registration of Industrial Designs Hague Agreement –London Act (1934) –Hague Act (1960) –Geneva Act (1999) Entered into force on 23 Dec 2003 Operational on 1 Apr 2004 Common Regulations (1996) –Last revised: 1 Apr 2004 Admin. Instructions (2002) –Last revised: 1 Apr 2004

Hague Union Members (46) Geneva Act (1999): 22 Albania, Botswana, Croatia, Egypt, Estonia, France, Georgia, Hungary, Iceland, Kyrgyzstan, Latvia, Liechtenstein, Moldova, Namibia, Romania, Singapore, Slovenia, Spain, Switzerland, The former Y.R. of Macedonia, Turkey, Ukraine Hague Act (1960): 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 (1934): 3 Indonesia, Tunisia Holy See (denounced as of August, 2007) (by most recent act) As of April 2007

Hague Union Members (46) (by most recent act) 20 Geneva Act (1999) 21 Hague Act (1960) 3 London Act (1934) By Most Recent Act As of April 2007

Advantages One vs. Many Relationships Provides for the centralized acquisition, maintenance and management of industrial design rights around the world by filing a single international application in which one or more Contracting Parties are designated. “Bundle of Rights” The resulting international registration has the effect of a grant of protection in each designated Contracting Party, although it is not itself, nor does it result in, an independent grant of protection in each designated Contracting Party (DCP).

... What It Is Not. Since the Hague System is primarily a procedural arrangement, it does not determine: –the conditions for protection; –the refusal procedure to be applied when deciding whether a design may be protected; or –the rights which result from protection. Such issues are governed by the law of each Contracting Party designated in an international registration.

Filing the International Application Closed System –Entitlement: Connection between applicant and a Contracting Party via establishment, domicile, habitual residence (Geneva Act) or nationality –Only designate Contracting Parties to Hague System Not required to have a prior national application or grant of protection –“Self-designation” is possible Application can be filed either directly with International Bureau (IB) or indirectly via the Contracting Party from which entitlement is derived

Formal Examination by IB IB examines for formalities only –Substantive grounds, such as novelty, not considered by IB Recorded in an International Register –Registration certificate sent to holder Publication in WIPO International Designs Bulletin –Immediate publication at applicant’s request –Differed publication and payment of related fees at applicant’s request

Substantive Examination by DCP Substantive examination, if any, undertaken by each DCP as provided by its national law Refusal by DCP must be sent to IB within set time limits from the date of publication of international registration –Holder has same remedies as would have been available if filed under national law If not refused, or if refusal withdrawn, the IR produces the same effect as a grant of protection under national law

General Procedure Indirect Filing Direct Filing self-designation OFFICE OF DESIGNATED CONTRACTING PARTY OFFICE OF CONTRACTING PARTY OF ENTITLEMENT International Application INTERNATIONAL BUREAU

Duration of Protection International registration initially valid for 5 years from date of international registration –Renewable for five-year periods Minimum duration of protection set by governing treaty –May be renewed, with respect to a given DCP, for the full grant of protection allowed under the national law of that DCP Maximum duration of protection set by each DCP

Effects of International Registration As an application –As of the date of the International Registration As a grant of protection –Hague (1960) By default, as of the date of the international registration, but can be later (if office examines for novelty) –Geneva (1999) By default, as of the date of the expiry, at the latest, of the applicable refusal period, but can be later (if office examines for novelty)

Central Management Appointment [DM/7] or cancellation [DM/9] of representative before IB Change of name and address of holder [DM/6] or representative [DM/8] Record change of ownership [DM/2] Limit designs in one or more DCP(s) [DM/3 ] Renounce all designs in one or more DCP(s) [DM/5] Renewal in 5-year terms [DM/4] /

General Advantages National or Regional International Route Route (Hague System) many Offices for filingone Office for filing many languagesone language many currenciesone currency many registrationsone int. registration many renewalsone renewal many modifications one modification foreign attorney or agentforeign attorney or agent first needed at filing first needed if refused

International Registrations in force as of December 31, ,927 international registrations 292,389 designations 1,260,164 designs

International Registrations 2006

Thank you!