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The Madrid Protocol - Britain. Oscar Benito GlaxoSmithKline ITMA London International Meeting 3 April 2008. Issues covered. Recent milestones The Madrid Protocol in figures Options for UK companies in Madrid system Future challenges for WIPO/National Offices Conclusions.

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The madrid protocol britain

The Madrid Protocol - Britain

Oscar Benito

GlaxoSmithKline

ITMA London International Meeting

3 April 2008


Issues covered
Issues covered

  • Recent milestones

  • The Madrid Protocol in figures

  • Options for UK companies in Madrid system

  • Future challenges for WIPO/National Offices

  • Conclusions


Recent milestones
Recent Milestones

  • US (effective 2 November 2003) and EU Accession (effective 1 October 2004)

  • Spanish – new language (April 2004)

  • On-line renewals (April 2006)

  • E-mail communications from WIPO (August 2007)

  • Repeal of “safeguard clause” (effective from 1 Sep 2008)


Repeal of safeguard clause
Repeal of “safeguard clause”

  • Effective from 1 Sept 2008.

  • Spanish and English can be used for all applications (instead of only French)

  • Transformation is possible (when faced with Central Attack during the “dependency” period)

  • Possible to file on the basis of an application (instead of a registration)

  • Entitlement - free choice between basis on establishment, domicile or nationality (instead of the “cascade”)

  • Subsequent designations and requests for recordal of cancellations or renunciations directly to WIPO (instead of through the Office of origin)

  • States may charge an individual fee

  • Refusal period may be extended from 12 to 18 months, with an additional 7 months if refusal is based on an opposition


Notifications of refusals under the protocol general rule is 12 months

Extension to 18 months to notify refusals

Armenia, Belarus, Bulgaria, EU, Georgia, Iceland, Japan, Poland, Slovakia, Switzerland, Turkey, Turkmenistan

Possible notification of refusal after 18 months

Australia, China, Cyprus, Denmark, Estonia, Finland, Greece, Iran, Ireland, Italy, Kenya, Lithuania, Norway, South Korea, Singapore, Sweden, Ukraine, UK, USA

Notifications of refusals under the Protocol: general rule is 12 months



The madrid protocol in figures
The Madrid Protocol in figures

  • 39,945 international TM applications in 2007

  • 2.9% from companies in the UK (11.8% increase from 2006).

  • UK - 9th position in ranking of top filer countries (11th position in 2006)

  • UK – 16th position in ranking of most designated countries (13% less than in 2006)

  • 674 applications in 2003 from companies in the UK and 1178 applications in 2007 (almost double in 4 years)


Options for uk companies in madrid system
Options for UK companies in Madrid system

  • Madrid Agreement - No

  • UK/OHIM as country of origin

  • UK/OHIM as designated country


Options for uk companies in madrid system madrid agreement
Options for UK companies in Madrid systemMadrid Agreement

  • Bosnia and Herzegovina, Algeria, Tajikistan, Kazakhstan, Sudan, Egypt and Liberia.

  • Problems with Assignment of IRs (what happens if a UK company buys this IR?)


Options for uk companies in madrid system uk ohim as country of origin
Options for UK companies in Madrid systemUK/OHIM as country of origin

  • UK IPO

    • handling fees – £40

    • basic TM – UK TM

    • entitlement

  • OHM

    • handling fees - € 300

    • basic TM – CTM (not a national TM in the EU)

    • entitlement


Options for uk companies in madrid system uk as country of origin
Options for UK companies in Madrid systemUK as country of origin

  • on- line applications before UK IPO – not possible yet

  • Definition of “commercial and industrial establishment”:

    • No PO box address

    • No agent’s address


Options for uk companies in madrid system uk as country of origin1
Options for UK companies in Madrid systemUK as country of origin

  • “intent to use” requirement – prevents registrations of IRs (through the UK PTO) meant to be used only in international markets but not in the UK

  • If WIPO objects to spec, UK IPO will start dialogue with Applicant.

  • Direct filing before WIPO (instead of through an Office of origin)

    • now possible only for subsequent designations, changes of address, assignments…

    • not possible for new IRs


Options for uk companies in madrid system ohim as country of origin
Options for UK companies in Madrid systemOHIM as country of origin

  • on- line applications before OHIM – not possible yet.

  • If WIPO objects to spec, OHIM will accept it and wait and see whether Applicant wants to argue.

  • Definition of “commercial and industrial establishment” – no objections yet


Options for uk companies in madrid system uk as designated country
Options for UK companies in Madrid systemUK as designated country

  • Review of spec (but not detailed review):

    • “machines” in general (cl 7)

    • “electrical apparatus” (cl 9)

    • “personal services rendered by others” (cl 45)

    • “retail services” (cl 35)

  • Examination absolute grounds of refusal

    • Representative within the EU?


Options for uk companies uk as designated country
Options for UK companiesUK as designated country

  • Examination relative grounds of refusal

    • If formal objection – representative within the EU

    • Notifications of earlier rights (1 Oct 07)

      • for UK and IRs designating UK (possible to opt-out). Notifications sent (regular mail) to representative (not WIPO), or the applicant by default.

      • opt-in for CTMs and IRs designating OHIM (£50 per mark – 3 years).

      • If restriction or surrender is necessary to prevent notification, then communicate to WIPO (not UK IPO)


Options for uk companies ohim as designated country
Options for UK companiesOHIM as designated country

  • 3 languages only (as opposed to all EU official languages)

  • OHIM will not review spec at all.

  • Opposition period starts 6 months after 1st publication

  • Gibraltar status

  • Malta status


Future challenges for wipo
Future challenges for WIPO

  • Delays in allocation of number to new IRs and processing of territorial extensions (or subsequent designations)

    • Does not alter filing date

    • It delays registration (one of best features of the Madrid System)

    • Makes TM clearance difficult


Future challenges for WIPO (II)

Basic National Application/Registration

UK

International Application

Office of origin - UK Trade Marks Registry

2 months

Irregularities, examination of classification of goods

International Bureau - WIPO

Office origin - U.K. Trade Marks Registry:

Applicant

No irregularities

International Registration entered by

International Bureau

Publication in WIPO Gazette

Notification date

Designated Contracting Party

Sweden

Designated Contracting Party

Spain

Designated Contracting Party

Ireland

Notification date

Subsequent Designation

China

Subsequent Designation

Australia


Future challenges for wipo iii
Future challenges for WIPO (III)

  • Case study

    • IR (no 866541) for ALLIN in the name of Harald Ziegler. Filing date of 26 June.

    • On 21 March 2007 Harald Ziegler designated OHIM as a subsequent designation through the German PTO.

    • WIPO received this request on 3 April 2007, but did not forward it to OHIM till October 2007 (6 months later).


Future challenges for wipo national offices iv
Future challenges for WIPO/National Offices (IV)

  • Delays in communicating surrender of an IR after central attack

    • 17 January 2006 - on the same day GSK opposed Alcon’s AVANTRA in Switzerland (basic registration for the IR No. 865693 AVANTRA) Alcon withdrew the basic registration at the Swiss PTO.

    • But Swiss Office did not notify WIPO till 27 September 2006 (8 months delay)

    • WIPO notified designated countries on 7 November 2006.

    • WIPO published the cancellation of IR No. 865693 on 14 December 2006.

    • By mid 2007 many designated countries had not yet realised that IR No. 865693 had been cancelled.


Future challenges for wipo v
Future challenges for WIPO (V)

  • Problems with IRs in some African countries:

    • Some African countries have not implemented the Protocol or the Agreement, so IRs have no effect in those countries. However, there is no warning in WIPO’s web site and the IP calculator includes these countries.

    • No implementation of the Madrid system yet: Egypt (uncertain situation), Lesotho, Liberia, Namibia, Sierra Leone, Sudan, Swaziland and Zambia.

    • IRs designating Morocco, Algeria, Mozambique and Kenya are OK. However, IRs designating Kenya prior 22 August 2003 might not be valid.

      (in red: only Agreement countries)


Future challenges for wipo vi
Future challenges for WIPO (VI)

  • Formality examination

    • Examination of spec – why designated national offices can still raise objections on classification of goods/services when the office of origin and WIPO have already examined the spec?


Future challenges for wipo vii
Future challenges for WIPO (VII)

  • Lack of communication:

    • “No news is good news” approach – why not all countries can send final certifications of grant of protection?

    • Romarin and Madrid Express are not up to date

    • Rumours of notifications of partial refusal of protection going astray


Future challenges for wipo viii
Future challenges for WIPO (VIII)

  • Registration fees and mechanism of payment – eg Japan

  • Assignment of IRs:

    • Assignee must be entitled to file IRs (party with nationality/residence/business premises in a country that is a member of the Protocol)


Conclusions
Conclusions

  • 5.4 million active designations

  • Major players missing e.g. Canada, India, Russia, South America

  • In practice the Madrid Protocol has superseded the Madrid Agreement (from 1 September 2008)

  • Not perfect tool but a useful one for UK companies

  • Consider on a case by case basis


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