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The Madrid System Basic features and recent developments. Debbie Ronning Director, Legal and Promotion Division [email protected] July 13-15, 2010 Israel. The Madrid System for the International Registration of Marks. Simple, Flexible, Time and Cost-Effective Option

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The madrid system basic features and recent developments l.jpg

The Madrid System

Basic features and recent developments

Debbie Ronning

Director, Legal and Promotion Division

[email protected]

July 13-15, 2010

Israel


The madrid system for the international registration of marks l.jpg
The Madrid System for the International Registration of Marks

  • Simple, Flexible, Time and Cost-Effective Option

  • http://www.wipo.int/trademarks/en/ (video)


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Objectives Marks

  • 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


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Legal Framework I Marks

  • Madrid Agreement (1891) latest revised in 1979

  • Madrid Protocol (1989)latest revised in 2007

  • Common Regulations as in force from

  • September 1, 2009

  • Administrative Instructions as in force from January 1, 2008

  • Law and Regulations of each Contracting Party

  • See at http://www.wipo.int/madrid/en/legal_texts/

  • http://www.wipo.int/madrid/en/members/ipoffices_info.html


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Legal Framework II Marks

Under the Madrid system

  • Treaties and Regulations

    • providing the basic principles and mechanism of the system; governing the formal conditions for an international registration

  • Domestic Law and Regulations of a Contracting Party

    • governing the substantive conditions for granting the protection in each relevant territory


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3 Agreement only Marks29 Protocol only (including EU)53 Agreement and Protocol

85 Members

Madrid Union


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Geographical Scope II Marks

82 MEMBERS PARTY TO THE PROTOCOL

Albania, Antigua and Barbuda, Armenia, Australia, Austria, Azerbaijan, Bahrain, Belarus, Belgium, Bhutan, Bosnia & Herzegovina, Botswana, Bulgaria, China, Croatia, Cuba, Cyprus, Czech Republic, Democratic People’s Republic of Korea, Denmark, Estonia, Egypt, European Union, Finland, France, Georgia, Ghana, Germany, Greece, Hungary, Iceland, Iran, Ireland, Israel, Italy, Japan, Kenya, Kyrgyzstan, Latvia, Lesotho, Liberia, Liechtenstein, Lithuania, Luxembourg, Madagascar, Moldova, Monaco, Mongolia, Montenegro,Morocco, Mozambique, Namibia, Netherlands (+Netherlands Antilles), Norway, Oman, Poland, Portugal, Republic of Korea, Romania, Russian Federation, San Marino, San Tome and Principe, Serbia,Sierra Leone, Singapore, Slovakia, Slovenia, Spain, Sudan, Swaziland, Sweden, Switzerland, Syrian Arab Republic, the former Yugoslav Republic of Macedonia, Turkey, Turkmenistan, Ukraine, United Kingdom, United States of America, Uzbekistan, Viet Nam, Zambia underlined = Agreement also

3 MEMBERS PARTY TO THE AGREEMENT ONLY

Algeria, Kazakhstan and Tajikistan

www.wipo.int/madrid/en/members/ipoffices_info.html


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National MarksRegistration

NationalRegistration

NationalRegistration

National

Protection

National

Protection

NationalApplication

National

Protection

InternationalApplication

InternationalRegistration

NationalApplication

NationalRegistration

Concept I: Many Routes or One Route

Madrid Route

=

Bundle of National Applications /Registrations


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Many Offices for filing Marks

Many application forms

Many languages

Many currencies

Many registrations

Many renewals

Many modifications

Foreign attorney needed from filing

One Office for filing

One single application form

One language (E/F/S)

One currency (CHF)

One international registration

One renewal

One modification

Foreign attorney first needed in case of refusal

Concept II: Go National or International ?


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Basic features Marks

  • An international application may be based on one or more applications or registrations

  • The Contracting Party may elect for 12/18 months refusal period

  • The Office of a Contracting Party may receive individual fees for designations

  • Central attack

  • In case an international registration is cancelled because the basic has been cancelled, the holder may transform his right into a national/regional applications

  • Fees for designation is transferred from WIPO to the Office


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Advantages Marks

  • One international application based on one or several basic applications/registrations

  • One language – English, French or Spanish

  • One set of fees (CHF) to one Office

  • One registration number and one renewal date

  • The registration can be further extended geographically

  • All subsequent changes to the international registration may be recorded and have affect by one single procedure

  • Offices do not need to examine for formal requirements


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Protection Marks= effect ofa local registration

International Filing and Registration Flow

Certify and forward the application to the IB

OFFICE OF ORIGIN

APPLICANT

Formal examination;

registration; publication (Gazette); Certificate;

Notification to all designated CPs

Entitlement

Basic mark

Form

EN

INTERNATIONALBUREAU

Substantive examination under domestic law, within 12/18 months

OFFICE

OFFICE

OFFICE

Refusal


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Effects of the International Registration Marks

  • Can be compared to a domestic application with protection as from the date of the international registration

  • Can be compared to a domestic registration in the absence of refusal


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Benefits for Trademark Owners Marks

  • Simple

    • A single set of simple formalities

  • A single filing Office

    • Low registration fees

    • no need to pay foreign agents for filings

    • no need to pay translation of the paperwork into several languages

  • Effective

    • A single international application produces the same legal effect in many countries

    • A fixed dead line for confirmation or refusal the legal effect in each country concerned


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Benefits for the IP Offices Marks

  • No need to carry out formalities examination, and other services provided by the International Bureau (Gazette, Database ROMARIN etc.)

  • Income relevant to number of designations to the country


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Benefits for the Government Marks

  • Positive Effect on Economic Growth

    • Empowers SMEs

    • Promotes economic growth, by contributing to the opening of new markets and assisting in the development of exports

    • Creates a more favorable climate for foreign investment in the internal market

  • Advantages for the Government’s Finance

    • Generates revenue


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The Madrid System in Trademarks World Marks

  • Some 965,000 trademark applications were filed worldwide by non-residents in 2007 of which

  • Some 370,000 are through the designation under the Madrid system (38%)


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International Registrations in Force Marksas of December 31, 2009

  • 515,562 the total number of registrations in force, equivalent to

  • over 5.6 million active national/regional registrations

  • 169,939 trademark holders






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Information Products & Services -1996 - 2009

  • Various legal texts, guide and notices

  • WIPO Gazette of International Marks

  • Fee Calculator: on-line costing service

  • Madrid Simulator: on-line filing guide tool

  • ROMARIN: on-line search database

    free access at http://www.wipo.int/madrid/en/


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Comparison Agreement vs Protocol -1996 - 2009

Madrid Agreement

Madrid Protocol

Basic application/registration

French/English/Spanish

Entitlement – more flexible

12/18 months refusal limit +

Individual fee

Office of origin

Transformation

  • Basic registration

  • French

  • Entitlement – strict

  • 12 months refusal limit

  • Complementary fee

  • Country of origin

  • No transformation


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Today and tomorrow -1996 - 2009

  • There is a strong focus on promoting better use of the Madrid System

  • Customer-service policy

  • Further automation of the procedures under the Madrid System

    • Madrid Filing Assistant

    • Madrid Portfolio Manager

    • Madrid Electronic Alert System

  • Monthly newsletter regarding the Madrid System


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Future Development of the Protocol -1996 - 2009

  • Working Group on the Legal Development of the Madrid System for the International Registration of Marks

  • Mandatory Statements of Grant of Protection from 01/2011

  • Ongoing discussion on how the Madrid Protocol would look like in the future to be able to accommodate the needs of the users

  • Proposal on the deletion of the basic mark requirement

  • Focus on simplifications for the benefits of applicants, holders, Offices and the International Bureau


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Future accessions -1996 - 2009

  • Closing of the Madrid Agreement?

    • Algeria, Kazakhstan, Tajikistan – 3 remaining members

  • South-America

    • Colombia

  • African countries

    • Tunisia

    • South-Africa

  • ASEAN-countries members by 2015

  • Other

    • India


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Thank -1996 - 2009you for yourattention!


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Date of the international registration -1996 - 2009

  • The international registration will bear the date on which the international application was received by the Office of origin

  • The international application may use priority from basic application with the Office of origin

  • If received by the IB after the period of two months, then the date of registration will be the date of receipt in the IB

  • If late receipt resulted from an irregularity in a postal or delivery service, then the date of registration may still bear the date on which the international application was received or deemed to have been received by the Office of origin


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Irregularities – date in special cases -1996 - 2009

  • The date of international registration may be affected if any of the following important elements is missing from the international application:

  • - indications allowing the identity of the applicant to be established and sufficent to contact him or his representative

  • - designation of the Contracting Parties where protection is sought

  • - a reproduction of the mark

  • - the indication of the goods and services for which registration of the mark is sought


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Irregularities… cont. -1996 - 2009

  • If the date on which the last missing element reached the IB is still within the two-months period, the international registration will bear the date on which the defective international application was originally received by the Office or origin

  • Where any of these elements does not reach the IB until after the expiry of this two-month period, the international registration will bear the date on which that element has reached the IB

  • If irregularity is not remedied within a three-months time limit, the applicaton will be considered abandoned


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Example -1996 - 2009

  • An international application is filed with the Office of origin on May 1, and is received by the IB on June 1

  • The IB notices that no Contracting Party is designated

  • On June 5, the IB notifies the Office of origin of the irregularity and invites it to reply within September 5

  • If the Office remedies the deficiency on or before July 1, the date of the international application will be May 1


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Example … cont. -1996 - 2009

  • If the Office remedies the deficiency after July 1, but on or before September 5, the date of the international registration will be the date on which the missing information was received by the IB

  • If the Office does not remedy the irregularity on or before September 5, the international application will be considered abandoned

  • The date of an international registration is not affected by any deficiencies other than those I have referred to


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Effects of the International Registration -1996 - 2009

  • The effects of the international registration extend to the Contracting Parties expressly designated by the applicant in the international application

  • An international registration can be compared to a domestic application with protection as from the date of the international registration

  • An international registration can be compared to a domestic registration in the absence of refusal


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Statement of grant of protection -1996 - 2009

  • When all the procedures before the Office have been completed before the expiry of the refusal period, the Office can either send to the IB a notification of provisional refusal or a statement of grant of protection

  • Rule 18ter entered into force on September 1, 2009

  • Mandatory statement of grant of protection from January 1, 2011

  • A statement of grant of protection may concern several international registrations and may take form of a list


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Statement of grant… cont. (2) -1996 - 2009

  • The IB will convert such a list into individual communications that it transmits to the holders of the international registrations concerned

  • No legal consequence if a statement of grant of protection has not been sent by an Office

  • In the absence of the communication of a notification of provisional refusal within the time limit the Office has chosen (12/18 months), the mark is automatically protected in the Contracting Party concerned, for all the goods and services in question


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Statement of grant… cont. (3) -1996 - 2009

  • If the Office earlier has sent a provisional refusal, the Office has then two options:

  • 1) An Office which has sent a notification of provisional refusal shall, once all procedures have been completed, send either

  • - a statement to the effect that the provisional refusal is withdrawn and that protection of the mark is granted for all goods and services requested, or

  • - a statement indicating the goods and services for which protection is granted


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Statement of grant… cont. (4) -1996 - 2009

  • 2) the Office may send a statement to the IB confirming total refusal of the protection of the mark

  • Where the Office has sent a statement to the IB either granting protection after provisional refusal or confirming total refusal, and where a further decision affects the protection of the mark, the Office shall, to the extent that it is aware of that decision, send to the IB a further statement indicating the goods and services for which the mark is protected


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