1. Protecting a Valuable Asset – How to Protect Your Brand With Madrid
Hanoi October 24, 2017
Denis Croze Director, WIPO Singapore Office

2. Common Forms of Trademarks
Word/s (in a plain font or a ‘fancy’ font)
phrase
logo
picture
aspect of packaging
or combination of the above...
JUST DO IT

3. Source: Forbes – The World’s Most Valuable Brands 2017 Ranking
Why Protect?
Trademark is often the most valuable asset an SME owns
Potential to constantly appreciate in value
Acts as deterrent to infringers domestically and overseas
Source: Forbes – The World’s Most Valuable Brands 2017 Ranking

4. Protection Options
The national route - file trademark application/s with the IP Office of each country in which you want protection
The regional route (where available) - apply through a regional trademark registration system with effect in all member states (e.g. EUIPO application gives protection in all current and future EU members)
The international route - file through the Madrid System
The trademark owner, or representative, must then make a choice regarding the best way to protect marks abroad.
There are three main options:
The National Route, which involves filing separate applications with the IP Office of each country in which protection is sought. OR
The Regional Route, which involves applying for protection through a regional trademark registration system with legal effect in all member states. This includes applying for protection through the European Union Intellectual Property Office, and the African Intellectual Property Organization. OR
The International Route, which involves filing through the Madrid System.
The most appropriate option depends on a firm’s business strategy, including its financial resources, and the markets and the timeframes in which protection is sought.

5. The International Route
The Madrid System may be preferred when you:
Seek protection in multiple markets, particularly if these are in different regions
Want flexibility to add new markets as your export plans develop
Have limited budget and/or time to spend on registration and management of your trademarks

6. Independent Filings vs WIPO Registration Systems
International Bureau of WIPO

7. The Madrid System is Convenient
Access a centralized filing and management procedure
File one application, in one language and pay one set of fees for protection in multiple markets
Expand protection to new markets as your business strategy evolves

8. The Madrid System is Cost-effective
File an international application, which is the equivalent of a bundle of national applications, effectively saving time and money
Avoid paying for translations into multiple languages or working through the administrative procedures of multiple IP Offices
Saving in currency exchange rate costs?

9. Costs Fees are payable to WIPO in Swiss francs
Basic fee*, which includes 3 classes of goods/services
653 Swiss francs – b/w reproduction of mark
903 Swiss francs – color reproduction of mark
Fees for designated Contracting Parties (dCP)
Standard fees – complementary (100 Swiss francs per dCP) and supplementary (100 Swiss francs per class beyond 3) OR
Individual fees where this is declared

10. How Much?
Saving in currency exchange rate costs?

11. How Much? 2379 CHF = 2439 USD (for 10 years registration)
Saving in currency exchange rate costs?

12. How Much for ASEAN Members?
1448 CHF = 1482 USD
(for 10 years registration)
Saving in currency exchange rate costs?

13. Members of the Madrid System
116 countries
*All members are bound by the Protocol, the governing treaty, and 55 are also bound by the Agreement.
These members represent more than 80% of world trade, with potential for expansion as membership grows.
WIPO conducts a formal examination of the international application but Contracting Parties may have specific requirements and procedures regarding applications, registrations or designations through the Madrid System.
Can subsequently designate other countries

14. The Madrid System is Global
Currently: 116 countries covered by the 100 members
Markets that represent more than 80% of world trade
Recent accessions include:
2014: OAPI and Zimbabwe
2015: Algeria, Cambodia, The Gambia and
Lao People’s Democratic Republic
2016: Brunei Darussalam
2017: Thailand, Indonesia
ALGERIA: In July 31, 2015, the Government of the People’s Democratic Republic of Algeria deposited its instrument of accession to the Madrid Protocol. The Protocol entered into force with respect to Algeria on October 31, Signatory to the Madrid Agreement since July 5, 1972, the country was the last of the 95 members of the Madrid System which was not party the Protocol.
This represented a milestone for the Madrid System and its users. In practical terms, the Madrid System now operate as a single treaty system, with the Protocol governing all transactions between or in respect of Contracting Parties and users. See

15. The Madrid System is Used by all Business Sectors
Madrid System users come from all corners of the globe and represent a broad cross-section of industries of different sizes

16. Madrid System Users: Business Size
Individual entrepreneurs, small and large businesses find the Madrid System to be a convenient and cost-effective means to protect marks in key markets throughout the world

17. Right-Holders (2016) OPTIONAL SLIDE To be updated in April 2018
Source: Madrid Yearly Review WIPO publication No. 940
Some 80% of Madrid users are small IP right holders with a portfolio of just one or two registered marks .
Overall, about 90% of all holders of active registrations held up to four international registrations in their portfolios.
The 5.68 million designations in active registrations in 2016 were owned by about 226,000 right holders
A majority (63.4%) of firms or individuals holding an active international registration possessed only a single such registration in their 2016 portfolios – a situation that has remained almost unchanged since Another 16.8% of holders owned only two active registrations. Overall, about 90% of all holders of active registrations held four or fewer international registrations in their portfolios, and about 95% owned no more than seven active registrations (standard figure C10).

18. How the Madrid System Works
The International Trademark Registration Process
At a high-level, the International Trademark Registration Process can be divided into three stages:
Stage 1 - Application through a National or Regional IP Office (known as the Office of origin)
Stage 2 - Formal Examination by WIPO
Stage 3 – Substantive Examination by IP Offices (individually know as an Office of the designated Contracting Party)

19. Timeline The International Trademark Registration Process
Basic application or registration
Date of International Registration
Substantive examination
IRN Certificate
Recorded at WIPO and communicated
Office of Origin
WIPO
Designated Office
Decision of designated Office: Grant or Refusal
Time limit for provisional refusal
12 or 18 months
2 months
2 – 3 months
10 years
The International Trademark Registration Process
Blue/grey blue colors: WIPO (International Bureau)
Burgundy/pink colors: Office of Contracting Parties (Office of Origin or designated Contracting Parties)

20. Thank You for Your Attention
WIPO Website:
Madrid Website:
WIPO Singapore Office: