1. THE MADRID SYSTEM FOR THE INTERNATIONAL REGISTRATION OF MARKS André Ntamack Tel Aviv, July 4-5, 2007

2. Preparing the International Application Entitlement to file an International Application Types of International Applications Choosing the Office of origin Representation before the International Bureau

3. Entitlement to File an International Application

4. Someone... Natural Person Legal Entity

5. ... who has a connection... Real and Effective Industrial or Commercial Establishment (“Establishment”) Domicile Nationality

6. ... with a member of the Madrid Union Contracting State Contracting Organization –Must have an establishment in, or be domiciled in, the territory of an intergovernmental organization that is party to the Madrid Protocol, or be a national of a Member State of that organization –Member State of organization does not have to be party to the Madrid Agreement or Madrid Protocol.

7. Establishment Taken from Article 3 of Paris Convention Excludes fraudulent or fictitious entities –Some industrial or commercial activity must take place (i.e., not a mere warehouse), but need not be the principle place of business. Question of national law: –What constitutes an establishment in each Contracting Party may differ (e.g., actual headquarters, law under which establishment was constituted, parent/subsidiary relationship, etc.).

8. Domicile Can have different meanings; can be defined broadly or narrowly –Question of national law Natural person –e.g., official authorization; more or less permanent situation of fact, such as actual residence; etc. Legal entity –e.g., actual headquarters; law under which it was constituted; etc.

9. Nationality Intended to have same meaning as Article 2 of Paris Convention –Question of national law: Natural person Legal entity –e.g., law under which it was constituted; whether or not it is a State enterprise; etc.

10. Types of International Applications

11. 2 Treaties 2 Possible Designations 3 Types of International Applications One System

12. Types of Applications Governed by Agreement and Protocol some designations governed by Agreement some designations governed by Protocol Governed exclusively by Protocol all designations governed by Protocol Rule 1(viii): Rule 1(ix): Rule 1(x): Governed exclusively by Agreement all designations governed by Agreement MM3 MM2 MM1

13. A A A A or France San Marino AP A Why is this type of international application governed exclusively by the Agreement? Egypt MM1

14. A A A or AP France Madrid Protocol, Article 9 sexies (“Safeguard Clause”) “... the provisions of this Protocol shall have no effect...” A Vietnam San Marino Why is this type of international application governed exclusively by the Agreement? MM1

15. MM1 - Requirements Office of origin: Filing basis: Form: Language: Cascade applies - Article 1(3) of the Agreement Basic Registration MM1 French Each Designation Supplemental + Complementary 12 months Fees: Refusal Period: International Application

16. P P P P or AP USA P Why is this type of international application governed exclusively by the Protocol? MM2 China Israel

17. P P P or P P Why is this type of international application governed exclusively by the Protocol? MM2 AP China UK Israel

18. 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:

19. AP France P A A A P AP Israel Switzerland APAP Why is this type of international application governed by the Agreement and Protocol? Madrid Protocol, Article 9 sexies (“Safeguard Clause”) “... the provisions of this Protocol shall have no effect...” MM3 Egypt

20. MM3 - Requirements Cascade applies - Article 1(3) of the Agreement Basic Registration MM3 French, English 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:

21. Examples

22. AP Hungary Treaty Governing IA: Application Form: Language of Application: IA can be based on a basic app: A P AP MM1 MM2 MM3 French English Spanish Yes No Questions Example 1 A AP Belarus Slovakia A A A A Egypt

23. Questions Example 2 Treaty Governing IA: Application Form: Language of Application: IA can be based on a basic app: A P AP MM1 MM2 MM3 French English Spanish Yes No AP P A A France Italy Japan APAP Germany P

24. Individual fee and 18+ months refusal do not apply in which DCP?: Questions Example 3 All 3 DCPs have opted for the 18+ months refusal period and individual fees. A P AP MM1 MM2 MM3 French English Spanish Yes No Treaty Governing IA: Application Form: Language of Application: IA can be based on a basic app: SE CN UK AP P P A Israel China UK APAP P P Benelux

25. P Questions Example 4 All 3 DCPs have opted for individual fees. Israel Treaty Governing IA: Application Form: Language of Application: IA can be based on a basic app: A P A/P MM1 MM2 MM3 French English Spanish Yes No Which DCPs will receive individual fees?:UK CH BX P AP P P P P Benelux UK Switzerland

26. Choosing the Office of Origin: When Does the “Cascade” Apply? Article 1(3) of the Madrid Agreement

27. The Hierarchy (3) Shall be considered the country of origin the country of the Special Union where the applicant has a real and effective industrial or commercial establishment; if he has no such establishment in a country of the Special Union, the country of the Special Union where he has his domicile; if he has no domicile within the Special Union but is a national of a country of the Special Union, the country of which he is a national. Article 1(3) of the Madrid Agreement

28. Representation Before the International Bureau (Rule 3)

29. WHO may be appointed Rule 3(1) to change from April, 2007 No limit on address of representative Need not be in a Contracting Party

30. HOW to make the appointment – in an official form international application subsequent designation request for recording of a change – in a separate communication (letter) or in the unofficial form (MM12) – no power of attorney is needed! Signed by person making the appointment

31. 1. Ex officio by the International Bureau –new appointment –change in ownership 2. By a communication sent to the International Bureau the applicant/holder by the representative Cancellation of the Appointment

32. International Application and Examination Content of the International Application Examination by the Office of Origin Examination by the International Bureau Irregularities

33. Content of the International Application – Rule 9 (MM2)MM2 four mandatory elements: – identity of applicant – designated Contracting Parties – reproduction of the mark – indications of goods and services

34. basic registration (A+P) Prerequisite OR basic application (P) International Application OFFICE OF ORIGIN checks the correspondence between the basic mark and the international mark INTERNATIONAL BUREAU examination on formalities recording in the international register: international registration notification of registration to the designated contracting parties OFFICE OF A DESIGNATED CONTRACTING PARTY substantive examination refusal of protection overview of the international procedure no refusal => protection granted

35. Examination by the ILPO as Office of Origin Rule 9(5)(d) Rule 11(4)

36. Certification by Office of Origin Rule 9(5)(d) / Item 13 Application Form Identity between, inter alia applicant mark goods and services Date of receipt of international application

37. Irregularities to Be Remedied by Office of Origin Rule 11(4) Official form not used Rule 15 Omissions (4) Applicant’s entitlement Certification Irregularities No basic application/registration

38. Procedure Office of Origin informed/notified Applicant informed/notified 3-month time limit for correction

39. Examination by the International Bureau

40. – Reproduction – Entitlement of the applicant – Designated Contracting Parties – Classification of goods/services – Fees paid Examination No Irregularities Correction w/in time limits Irregularities No correction w/in time limits Scanning Reception of the request REGISTERED REGISTERED or ABANDONED Finance processing Translation Registration Process within the IB

41. IRREGULARITIES Rule 12 Classification Rule 13 Indication Rule 11 Other irregularities of goods and services

42. Rule 12 : Classification of goods and services The IB considers that the G&S should be classified in a different class or have not been classified Correction by the OO The IB has the “last word”

43. IB Proposal No reply from OO IB modifies proposal IB withdraws proposal IB confirms proposal REGISTERED (as per IB proposal) Rule 12Rule 12 : Procedure 3 months to resolve ABANDONED 1 Fees not paid Fees paid reminder : 2 months 1 Refund: fees paid minus 1/2 basic fee for a b&w registration. OO gives opinion REGISTERED (as filed) REGISTERED (as per modification or IB proposal) Fees paid Fees paid

44. Rule 13 : Indication of G&S The IB considers that a term indicated is: - too vague for the purposes of classification; - linguistically incorrect; - incomprehensible. Correction by the OO The IB is the only « judge »

45. IB Suggestion 3 months to resolve IB rejects No reply from OO REGISTERED (as filed but with notation) IB accepts OO proposal Rule 13Rule 13 : Procedure REGISTERED (as per proposal) REGISTERED (term deleted if not classified ) If term classified

46. IB Proposal No Reply OO Reply 3 months to resolve Rule 11: Other Irregularities REGISTERED ABANDONED* Corrected Uncorrected * Refund: fees paid minus 1/2 basic fee for b&w registration.

47. International Registration Date of the International Registration Effects of the International Registration Refusals and Responding to Refusals

48. Date of the International Registration Article 3(4) of the Protocol –Reception of application by OO, if received by IB within 2 months Rule 15 (four mandatory elements)Rule 15 –identity of applicant –designated Contracting Parties –reproduction of the mark –indications of goods and services

49. Date of the International Registration(*)* Reception of the request by the OO Reception of the request by the IB * Reception of the request by the OO Reception of the request by the IB * Reception by the IB of the last missing mandatory element Reception of the request by the OO * 2 months

50. Effects of the International Registration (Article 4) The International ‘Registration’ = A National Application until the expiry of the time limit to issue a refusal A National Registration once the time limit to issue a refusal has expired (assuming no refusal or refusal withdrawn)

51. International Registration Refusals Article 5 Rules 16, 17 and 18

52. Are there any limitations on the right to refuse? Time Limit Grounds

53. Time Limits Notification of provisional refusal : –12 months Mandatory under Agreement Optional under Protocol –18 months Optional under Article 5(2)(b) of the Protocol –‘18 months +’ in case of opposition Article 5(2)(c) of the Protocol

54. Protocol CPs which have opted for 18 months Armenia, Australia, Belarus, Bulgaria, China, Cyprus, Denmark, Estonia, European Community, Finland, Georgia, Greece, Ireland, Iceland, Iran (I. R. of), Italy, Japan, Kenya, Lithuania, Norway, Poland, Rep. of Korea, Singapore, Slovakia, Sweden, Switzerland, Turkmenistan, Turkey, Ukraine, United Kingdom, United States, Uzbekistan. - all others: 12 months

55. Non-Valid Grounds for Refusal –formal grounds –classification of the goods/services (Rule 12 !) –multi-class registration (Art. 5(1)) –limited goods or services (Art. 5(1))

56. Acceptable Grounds for Refusal Refusals can be based on….. a substantive inherent objection (unlawful mark, non distinctive mark) a prior cited registration/application (opposition) an objection to the specification of the goods and services

57. Notification of Provisional Refusal 3 stages ( Rule 17 ) The initial notification (provisional refusal) - prescribed content ( identity of the office, IR, grounds, scope of the refusal, time limit for filing a request for review of or appeal against the PR or for filing a response to the opposition…) - recording and transmission by IB Confirmation or Withdrawal [final decision/Office] ? Further decision affecting protection

58. Statement of Grant of Protection ( Voluntary under Rule 17(6 )) If no notification of Refusal issued, a CP may send SGP after: - all procedures complete (protection granted) or - Ex officio exam complete + after expiry of opposition period (protection granted) WIPO will record the statement and transmit it to the Holder

59. SGPs are issued by the following Contracting Parties (April 2006) Armenia Australia Benelux Georgia Hungary Ireland Japan Norway United Kingdom Rep. Of Korea Singapore Sweden Syrian Arab Rep. Turkey European Community

60. Responding to Refusals Governed entirely by national law ( Procedures governed by national regimes : hearings, appeals,…) Appoint local representatives ( may not be mandatory, but advisable) Obtain informed and authoritative advice Decide early on strategy

61. Managing the International Registration I Subsequent Designation Change in Ownership Limitation, Cancellation, Renunciation Term of Protection and Renewal

62. Managing the International Registration Subsequent Designations Art. 3ter(2) (Rule 24)

63. Presentation Form MM4MM4 By the Holder By Office of the Contracting Party of the Holder if designation under Agreement

64. Subsequent Designation: Principle A Contracting Party may be designated subsequently if, at the time of this subsequent designation, it is bound by the same treaty as: the Contracting Party whose Office is the Office of origin (no change in ownership); the Contracting Party with which the new holder has a connection (in case of change in ownership).

65. Date of Subsequent Designation Presentation by Holder: date of receipt by IB Presentation by Office: date of receipt by Office if received by IB within 2 months Rule 24(6)(d) –effect after renewal –effect after recording of change Subsequent designation resulting from conversion (opting back)

66. Term of a Subsequent Designation The period of protection of a subsequent designation does not have an independent lifetime of 10 years, but expires on the same date as the international registration to which it relates.

67. ________________________________________________________ 1/01/1996 1/01/2016 PAYMENT VALID ONLY UNTIL 1/01/2006 SUBSEQUENT DESIGNATION MADE BEFORE 10 YEARS 1/01/2006

68. ________________________________________________________ 1/01/1996 1/01/2016 PAYMENT VALID UNTIL 1/01/2016 FOR THIS DESIGNATION AS FROM 1/01/2016 : MARK RENEWABLE EVERY 10 YEARS SUBSEQUENT DESIGNATION MADE AFTER 10 YEARS 1/01/2006

69. Managing the International Registration Change in Ownership

70. Recordal of Change in Ownership Article 9 Protocol Article 9bis and 9ter Agreement Rule 25 Form MM5MM5

71. Change in Ownership May result from, e.g.: - Contract/Assignment - Court decision - Operations of law (Inheritance, bankruptcy) May relate to some or all goods/services May relate to some or all Contracting Parties (CPs)

72. Entitlement to be the New Holder If new owner is entitled to file international applications Entitlement of the new owner is considered in respect of each designated Contracting Party Accumulation of entitlements possible –Rule 25(2)(a)(iv)

73. Presentation of Request Rule 25(1)(b) by the recorded holder: by the recorded holder: (the transferor) directly to the IB directly to the IB through an Office through an Office Office of holder’s CP Office of new owner’s CP Office of new owner’s CP by the new owner: by the new owner: (the transferee) through an Office through an Office Office of holder’s CP Office of new owner’s CP

74. Managing the International Registration Limitation, Cancellation, Renunciation Rules 25, 26 and 27

75. some designated Contracting Parties Limitationsome of the goods and services all designated Contracting Parties some of the goods and services Cancellationall designated all the goods and servicesContracting Parties Renunciationall the goods and servicessome designated Contracting Parties Limitation, Cancellation, Renunciation

76. EFFECTSCONSEQUENCES no protection forsubsequent designation is the goods/services possible LIMITATION goods/services remaingoods/services taken into kept in the International account for calculating Register renewal fees no protection for theno subsequent designation goods/servicesin respect of those goods/services PARTIAL CANCELLATION goods/services are goods/services are not taken removed from the into account for calculating International Register renewal fees RENUNCIATIONno protection in the subsequent designation Contracting Partyof the Contracting Party is possible

77. Term of Protection Renewal Articles 6(1) and 7(1) Rule 30(4)

78. Term of Protection and Renewal term of registration: 10 years renewal for further 10 years

79. Renewal Procedure Unofficial notice of expiry –6 months before expiry of 10 year period Payment –direct with the IB –fees plus indication of purpose, or –fees plus MM 11 Fees are due –at the date of expiry at the latest –6 months grace period (+ 50% basic fee)

80. E-Renewal As from April 3, 2006 the “E-Renewal” system is available for electronic renewal of international registrations of marks Payment by: –Credit Card –Current Account opened with WIPO –http://www.wipo.int/e-markshttp://www.wipo.int/e-marks

81. No Changes at Renewal ! IR is renewed as recorded No changes as part of the renewal: –name or address –goods or services –subsequent designations Exception –renewal for some designated CP only

82. Managing the International Registration II Dependence; Ceasing of Effect of Basic Mark; Transformation; Replacement (4bis); Licenses

83. Dependence The protection resulting from the IR registration remains dependent on the basic registration or application TIME: 5 YEARS from the date of the IR At the end of the 5-year dependency period, the IR becomes independent of the basic mark

84. Ceasing of Effect Agreement and Protocol Article 6(3) and (4); Rule 22

85. Definition “Ceasing of Effect” of Basic Mark can be due to: –Withdrawal, lapse or renunciation or final decision of rejection, revocation, cancellation or invalidation –An act or failure to act by owner of basic mark or an act by Office of origin or a third party Must occur: –Before expiry of 5-year dependency period, or –After expiry of 5-year dependency period if related to a proceeding initiated before expiry of 5-year period. Commonly called “Central Attack” –Resulting Cancellation of goods and services in the IR affects all designated Contracting Parties

86. Procedure Basic Mark International Registration (IR) Effect of IR as a national/regional registration 5-Year Dependency Always Dependent If a basic mark “ceases to have effect” in whole or in part within 5 years of date of IR, Office of Origin notifies IB, pursuant to Rule 22, and requests partial or total cancellation of IR. International Bureau cancels IR to the extent requested by Office of Origin. IB notifies all designated Contracting Parties of partial or total cancellation of IR. Records and publishes. No particular action required; some designated Contracting Parties may update their databases.

87. In order to soften the consequences of the “Central Attack”, the Protocol provides for the holder of an IR cancelled to TRANSFORM the mark with the Offices of all designated countries. Transformation

88. REQUIREMENTS: –TIME: The application has to be filed within 3 months from the date on which the IR was cancelled in the International Register. –FORMAL REQUIREMENTS Same mark The goods and services of the application are covered by the goods and services contained in the IR in respect of the Contracting Party concerned Such application complies with all the requirements of the applicable law, including the requirements concerning fees

89. Transformation The transformation is not available: 1.Where the IR has been cancelled at the request of the holder 1.With respect to a Contracting Party in the territory of which the IR has been subject of a total refusal, invalidation or renunciation 1.In a Contracting Party whose designation is not governed by the Protocol or in a Contracting State where the IR did not have effect

90. Transformation – example (1) France (AP) – basic registration DesignationsUS Egypt Germany UK

91. Transformation – example (2) Where is transformation possible? CountryTreatyTransform? UK US Egypt Germany (P) (A) (AP) P Y P Y A N A N

92. Replacement of a National or Regional Registration (NNR) Agreement and Protocol Article 4bis Rule 21

93. Why Replacement? Preexisting national or regional registrations (NNR) for same mark in a potential designated Contracting Party (DCP). Incorporate such preexisting NRRs into a single international registration (IR) –Take advantage of the centralized maintenance and management features of the Madrid System

94. Article 4bis(1) Conditions Same Mark Same Holder G&S in NRR covered in IR Extension of protection must be requested Extension of protection must take effect after date of NNR

95. Effect / Rights Automatic effect, i.e., when conditions for replacement are satisfied. Article 4bis(1): “…without prejudice to any [national/regional] rights acquired....” –Filing and Registration Dates –Priority claim –etc.

96. Coexistence IB Interpretation –NRR and IR MAY be maintained independently, but holder MUST satisfy legal requirements of each. Why Coexistence? –Possibility of provisional refusal –5-Year dependency of IR –Remaining term of protection for NRR

97. Article 4(bis)(2) Requests IF holder so requests, the Office with which the NRR is registered MUST “take note” of IR in its register. NRR Office MAY (i.e., not prohibited): –charge fee –require local practitioner to file request

98. Rule 21 Notifications IF the Office with which NRR is registered “takes note,” it MUST notify the IB. Contents of notification –IR: international registration number –NRR: filing date and (application) number / registration date and number / priority date / if only some g&s, then those g&s IB records and publishes; informs holder.

99. Role of IB Article 4bis request presented directly to DCP in which the NRR is registered--not to IB. Apart from recording and publishing notification received from DCP Offices, IB has no particular role in implementation or administration of Article 4bis.

100. Recording of Licenses Rules 20 and 20bis

101. Presentation of the Request Holder Office of the Contracting Party of Holder Office of the Contracting Party in respect of which license is granted

102. Formalities Form MM13 Signature –Holder –Presenting Office

103. Contents of Form (MM13) Compulsory: International registration number Holder’s name Licensee’s name and address Contracting Parties designated in license Goods/services covered by license

104. Contents of Form Optional: Nationality (natural person) Legal nature (legal entity) Territorial restriction Licensee’s representative Exclusive or sole Duration

105. Declaration - Rule 20bis(5) No Effect of Recording of Particular License Matter for individual CP 18 months from notification Requirements: –Reasons –Goods/Services affected, if not all –Relevant legal provisions –Whether subject to review/appeal

106. Declaration - Rule 20bis(6)(a)(b) Recording of Licenses without Effect in Contracting Party (a)Contracting Party not providing for recording of licenses (b)Contracting Party providing for recording, but not for recordings in IR Australia, Germany China, Georgia, Greece, Japan, Kyrgyzstan, Lithuania, R. of Korea, R. of Moldova, Russian F., Singapore

107. Automation and Information Products

108. Products Data Dissemination Service Databases and tools WIPO Gazette of International Marks

109. Gazette Paper version - official version - published weekly - by subscription DVD-ROM version - cumulative - published every four weeks - by subscription On-line version http://www.wipo.int/madrid/en/gazette/ - exact replica of the paper version in PDF format - published weekly - free

110. Databases and Tools ROMARIN http://www.wipo.int/romarin/ - all international marks currently in force - updated daily - full history - free (DVD by subscription) Madrid Express http://www.wipo.int/ipdl/en/ - all international marks currently in force + pending http://www.wipo.int/ipdl/en/ - updated daily - without history - free Fee Calculator http://www.wipo.int/madrid/en/fees/ http://www.wipo.int/madrid/en/fees/

111. Other Useful Links ¤WIPO Website: http://www.wipo.inthttp://www.wipo.int ¤For International Marks (then follow) ¤Trademarks ¤Madrid System ¤About Members ¤Forms ¤Information Notices ¤Fee Calculator ¤Online Services

112. The Madrid System Web site The Madrid SystemMadrid System Filing InformationFiling Madrid System Information NoticesInformation Notices Fees Calculator Guides and Information MaterialMaterial The WIPO Gazette of International MarksWIPO Gazette Annual Statistics Contacts

113. Useful Internet Links at WIPO WIPO Administered TreatiesTreaties WIPO Electronic BookshopBookshop E-Newsletters

114. Thank You André Ntamack Program Officer International Registration Operations Division andre.ntamack@wipo.int