1. WIPO’s Activities in the ASEAN : Focus on the Madrid Protocol AIPA Annual Conference March 28, 2015 Denis CROZE Director, WIPO Office in Singapore

2. WIPO Office in Singapore Opened in 2005 Service Center in the region, promoting WIPO’s Global IP services as well as the WIPO Arbitration and Mediation Center Focus on the ASEAN by assisting the implementation of the ASEAN IP Action Plan (2011- 2015) with its various Initiatives, requested by the ASEAN Working Group on Intellectual Property Cooperation (AWGIPC) Enhances capacity and knowledge of policy makers, government officials, IP professionals and practitioners, IP owners and the user community WIPO Website: http://www.wipo.int/portal/index.html.en http://www.wipo.int/portal/index.html.en WIPO Singapore Office (WSO): http://www.wipo.int/singapore/ http://www.wipo.int/singapore/

3. Basics about the Madrid System

4. How to protect your trademark abroad? The national route: application with the Trademark Office of each country in which protection of the mark is sought The regional route: Application with the regional Office with effect in all the Member States which are members of a regional trademark registration system The international route (Madrid Protocol): one central procedure to apply, maintain and manage an international registration with effects in all territories designated

5. Go National or International/Madrid Route ? National Route Many Offices for filing Many application forms Many languages Many currencies Many registrations Many renewals Many modifications Many foreign attorneys needed from filing stage Madrid Route One Office for filing One single application form One language (E/F/S) One currency (Swiss francs) One international registration One renewal One modification Foreign attorney first needed in case of refusal

6. Objectives of the Madrid System A simple, low-cost and effective system to facilitate trademark protection in export markets through: one central filing and registration procedure producing effects in one or more territories bound by the system one central procedure to maintain and manage an international registration with effects in all territories concerned

7. Advantages of the Madrid System Its coverage (95 Contracting Parties) Fixed time limit for granting or refusing protection (12 or 18 months) Formal examination by WIPO, substantive examination by the Offices of the designated Contracting Parties Flexibility of the system (Tailoring the list of goods and services for the different markets) Centralized management of portfolio (renewals, changes concerning the mark, etc.) Subsequent designation of other contracting parties is possible

8. Madrid Union 1 Agreement only 40 Protocol only (including EU and OAPI) 54 Agreement and Protocol 95 Members

9. Accessions 2012: Colombia, Mexico, New Zealand and Philippines 2013: India, Rwanda and Tunisia 2014: OAPI and Zimbabwe 2015: Cambodia (enter into force on June 5, 2015) Future accessions: ASEAN countries by 2015 Canada Caribbean countries African countries Latin American countries?

10. Benefits for Trademark Owners Simplicity A single set of simple formalities A single filing Office Cost Savings Low registration fees No need to pay foreign agents for filings No need to pay translation of the paperwork into several languages Effectiveness A single international application produces simultaneously the same legal effect in many designates CPs A fixed deadline for confirmation or refusal of the legal effect in each designated CP concerned All subsequent changes to the international registration may be recorded and have effect through one single procedure

11. Benefits for Trademark Owners Flexibility Choice among the CPs in which protection is sought Possibility of limitation of the scope of protection, renunciation or cancellation of the IR User-Friendliness Strong focus on a customer-oriented policy Availability of different free of charge online tools and services supporting trademark holders in registering and managing their IRs Continuous automation of the procedures under the Madrid System

12. Benefits for local agents The Madrid Protocol is optional and it does not replace the direct filing route Applicants would need the services of local agents at filing stage or at post-registration stage Increased designations will create more business opportunities (substantive work), like searches, refusals, oppositions, request for cancellations, dispute settlements, license and assignments contracts, and enforcement Post-registration activity may compensate for any reduction in local filing activity Expanding of services: Management of TM portfolios

13. Trademarks in force – 2014

14. Available online tools http://www.wipo.int/madrid/en/services/ http://www.wipo.int/madrid/en/services/ Madrid Goods and Services Manager (MGS): To use correct specifications of goods and services Madrid Real-Time Status (MRS): To inform of the status of an international application/registration Madrid Portfolio Manager (MPM): To allow the holders and representatives to view and modify their portfolio Madrid Electronic Alerts (MEA): To allow users to submit a list of IRs for the IB to monitor and inform of changes Image-based search tool http://www.wipo.int/branddb/en/http://www.wipo.int/branddb/en/ Fee Calculator: http://www.wipo.int/madrid/en/fees/calculator.jsp http://www.wipo.int/madrid/en/fees/calculator.jsp E-subsequent designation is now available

15. The Madrid Protocol in the ASEAN

16. 16 ASEAN IP Action Plan 2011 – 2015 28 Initiatives INITIATIVE: 1. Reduction of average turnaround time (from filing to registration) for the registration of trademarks without objections/opposition to 6 months by 2015 INITIATIVE: 5. Capacity building for trademark and industrial design attorneys/professionals INITIATIVE: 14. Accession to Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks by AMSs by 2015 INITIATIVE: 15. Accession to the Hague Agreement Concerning the International Registration of Industrial Designs by at least 7 AMSs by 2015 NITIATIVE: 17. Establishment of a regional network of patent libraries within schools and universities in AMSs to increase access to global scientific and technology information for research and development INITIATIVE: 27. Capacity building for industrial design and trademark examiners INITIATIVE: 28. Infrastructure Modernization of ASEAN IP Office

17. WIPO Assistance in the ASEAN on Madrid Protocol Extensive technical assistance (Legislative advice, drafting of an accession roadmap, seminars, training of examiners, etc.) Joint activities in cooperation with other IP donors (AANZFTA, OHIM/ECAP III, USPTO, etc.) Most of the acceding legislations are ready and waiting for the national Parliaments to pass it – Most of the countries say they will accede before the end of the year Myanmar is requiring more time to accede.

18. Madrid Protocol in the ASEAN Singapore - 2000 Vietnam - 1949 (A) – 2006 (P) Philippines – 2012 Cambodia (June 2015) Acceding Countries (expected in 2015): Brunei, Indonesia, Lao, Malaysia, Thailand Other Members in the Region China (1995), Japan (2000), Australia (2001), Republic of Korea (2003), New Zealand (2012), India (2013)

19. Madrid Statistics in ASEAN (2013) Number of international registrations by holders domiciled in Singapore: 221 Vietnam: 76 Philippines: 43 Number of designations from holders domiciled in Singapore: 1259 Vietnam: 566 Philippines: 290 Number of designations from holders domiciled in other Madrid CP Singapore: 7354 Vietnam: 4853 Philippines: 3121

20. Fee Calculator (in Swiss francs) PhilippinesSingaporeVietnam Basic fee (no color)653 Individual fee95272101 Total748925754

21. Thank you! Denis.croze@wipo.int