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The Madrid System for the International Registration of Marks Silvia Vincenti, WIPO Ankara, April 2008

The Madrid System for the International Registration of Marks Silvia Vincenti, WIPO Ankara, April 2008. Madrid System. Part I. Overview of the Madrid System and its Procedures Part II Managing an International Registration Latest and Future Developments of the Madrid System.

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The Madrid System for the International Registration of Marks Silvia Vincenti, WIPO Ankara, April 2008

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  1. The Madrid System for the International Registration of Marks Silvia Vincenti, WIPO Ankara, April 2008

  2. Madrid System Part I • Overview of the Madrid System and its Procedures Part II • Managing an International Registration • Latest and Future Developments of the Madrid System

  3. Objectives

  4. Madrid System The Madrid System: Objectives facilitating trademark protection in export markets through a simple, expeditious and cost-effective procedure for • the central filing of applications • the central management of registrations

  5. Madrid System Direct filing route / Madrid route

  6. Madrid System Quick comparison vsInternational Route  • oneprocedure  • onelanguage  • fees paid in only one currency (CHF)  • renewal/changes:a singleoperation • local agent not required (unless there is a refusal) Direct Filing •different procedures • different languages • fees paid in differentlocal currencies • renewal/changes:several operations • (usually) through a local agent

  7. Legal Framework and Geographical Scope

  8. Madrid System Legal Framework Madrid Agreement (1891)latest revised in 1967 Madrid Protocol (1989) last revised in 2007, with effect from Sept. 1, 2008 Common Regulationslast revised in 2007, with effect from Sept. 1, 2008 Administrative Instructionslast revised in 2007, with effect from Sept. 1, 2008 Law and Regulations of Each Contracting Party

  9. Madrid System The Madrid Protocolthe need for a more flexible approach The Madrid Protocol - 1989 - adopted - June 28, 1989 - came into force - December 1, 1995 - began operations - April 1, 1996 - last revised – September 2007, with effect from Sept. 1, 2008

  10. entitlement basic right refusal period fee system dependency languages membership Madrid System The Madrid Protocolthe need for a more flexible approach on

  11. Madrid System Comparison AgreementProtocol Members States States/Organizations Basic right basic registration basic registration/ application Entitlement cascade no cascade Languages French English, French, Spanish Fees supplementary and or individual fee option complementary Refusal 12 months or 18 months or 18+ months (opposition) options Dependency 5 years5 years with possible transformation

  12. Madrid System Protection is Governed by Domestic Law The Madrid system of international registration of marks is purely procedural.It does not determine: - the conditions for protecting a mark - the rights which result from protection These are determined by the national law of the designated Contracting Parties

  13. Madrid System Madrid Union Members (82)on April 1, 2008 Madrid Protocol - 75Madrid Agreement - 56

  14. Madrid System (Including EC) Agreement only 7Protocol only 26Agreement and Protocol 49 Madrid Union - 82 Memberson April 1, 2008

  15. Agreement (7) Algeria Bosnia and Herzegovina Egypt Kazakhstan Liberia Sudan Tajikistan Protocol (26) Antigua and Barbuda Australia Bahrain Botswana Denmark Estonia European Community Finland Georgia Greece Iceland Ireland Japan Lithuania Madagascar Norway Oman Republic of Korea Singapore Sweden Madrid System Members of the Madrid Union (82) Turkey Turkmenistan United Kingdom United States of America Uzbekistan Zambia Agreement and Protocol (49) Albania Armenia Austria Azerbaijan Belarus Belgium Bhutan Bulgaria China Croatia Cuba Cyprus Czech Republic Democratic People’s Republic of Korea France Germany Hungary Iran (Islamic Republic of) Italy Kenya Kyrgyzstan Latvia Lesotho Liechtenstein Luxembourg Moldova Monaco Mongolia Montenegro Morocco Mozambique Namibia Netherlands Poland Portugal Romania Russian Federation San Marino Serbia Sierra Leone Slovakia Slovenia Spain Swaziland Switzerland Syrian Arab Republic The former Yugoslav Republic of Macedonia Ukraine Viet Nam

  16. Overview of the Procedures

  17. Madrid System Who can use the Madrid system? Any natural person or legal entity who has: • a connection to a Contracting Party - establishment - domicile - nationality (closed system) • a basic applicationor a basic registration in that Contracting Party

  18. Madrid System Who can use the system (cont.)? If the Contracting Party is a Contracting Organization: • Establishment or domicile in the territory of an intergovernmental organization that is pary to the Madrid Protocol, or nationality of a Member State of that organization • Member State in question does not need to be party to the Madrid Agreement or Madrid Protocol (Ex.: Malta - EC)

  19. basic registrationbasic application Madrid System The registration procedure international application Office of Origin International Bureau Offices of the Designated Contracting Parties

  20. Madrid System The international application(contents) • Office of origin • applicant’s data • entitlement to file • basic application or basic registration data • reproduction of the mark • list of goods and services • designated Contracting Parties • other indications

  21. Madrid System Which Contracting Parties can be designated? • Any Contracting Party which is bound by the same treaty as the treaty of the Contracting Party of origin • Only Contracting Parties to the Madrid System can be designated

  22. Madrid System Which CP can be designated? ? Kazakhstan (A) ? (CTM) EC (P) Turkey (P) ? China (AP)

  23. Madrid System Which CP can be designated? Turkey ? ? USA ? EC ? Azerbaijan Tunisia

  24. Madrid System Three types of international application Governed exclusively by the Agreement - all designations under the Agreement Governed exclusively by the Protocol - all designations under the Protocol Goeverned by both the Agreement and the Protocol - designations under the Agreement - designations under the Protocol

  25. Madrid System Three types of international applicationconsequences • Agreementonly: – form MM1 – French – basic registration – cascade • Protocolonly: –formMM2 – English, French or Spanish – basic application or registration – no cascade • Agreement + Protocol:– form MM3 – English, French or Spanish – basic registration – cascade

  26. internationalapplication Madrid System Office of Origintasks certifies certain facts concerning the relationship between the international application and the basic application or registration (e.g., same applicant, same mark) Office of Origin The international application cannot be filed directly with the International Bureau of WIPO

  27. formality examination inscription in the International Register publication in the WIPO Gazette notification to designated Contracting Parties notification of the certificate of international registration to the holder InternationalBureau Madrid System International Bureautasks

  28. Madrid System Designated Contracting Partytasks Office of the Designated Contracting Party substantive examination opposition 12/18+ months provisional refusal no provisional refusal/withdrawn = national registration

  29. Madrid System The refusal procedure Notification of the international registration by the IB to the designated Office (Date!) Substantive examination by des. Office 12 months 18 months 18+ months Notification of PROVISIONAL REFUSAL to the IB (objection, opposition...) Response by holder Refusal procedure before the competent authority (in some cases appeal possible) National phase Notification of FINAL DECISION to the IB confirms withdraws confirms partially the provisional refusal

  30. Madrid System Length of the Refusal Perioddeclarations made under the Protocol • Extension of refusal period to 18 monthsAM, AU, BY, BG, CN, CY, DK, EE, EM, FI, GE, GR, IS, IR, IE, IT, JP, KE, LT, NO, PO, KR, SM, SG, SK, SE, CH, TR, TM, UA, GB, US, UZ (33) • Possible notification of refusals based on an opposition after 18 monthsAU, CN, CY, DK, EE, FI, GR, IR, IE, IT, KE, LT, NO, KR, SG, SE, TR, UA, GB, US (20)

  31. Madrid System Statement of grant of protection (SGP)(Rule 17(6)) • Under the Madrid System, if no provisional refusal is notified to the IB within the applicable time limit, protection is automatically granted in the designated Contracting Party concerned. The holder of the IR must wait until the expiry of the refusal period to know if protection is granted. • However, if no notification of total refusal is notified, the Office of a CP may elect to send a SGP to the IB after: a) all the refusal procedures are completed (protection granted) b) (i) ex officio exam is completed (ii) after expiry of opposition period (protection granted)

  32. Madrid System SGPs under Rule 17(6) are issued by the following Contracting Parties (April 2008) Australia Japan United Kingdom Hungary Georgia Norway Turkey Republic of Korea Ireland Singapore European Community Armenia Benelux Syria

  33. Madrid System Effects of the international registration(Article 4) • national application as from the date of the int. registration until the expiry of the time limit to issue a refusal • national registration as from the date of the int. registration once the time limit to issue a refusal has expired (in the absence of a refusal or if the refusal is withdrawn

  34. Madrid System Date of the international registration date of reception by OO date of reception by the IB 2 months date of the international registration date of reception by the IB date of reception by OO 2 months date of int. registration

  35. Madrid System Dependency on the basic national mark (5 years) After expiration of 5 years No effects, international registration becomes indipendent Before expiration of 5 years International registration still depends on the national basic mark: risk of “central attack”, ceasing of effects Transformation NO (Agreement) YES (Protocol)

  36. Madrid System Dependency – Ceasing of effects • Ceasing of effect if basic mark ceases to have effect in whole or in part within 5 years of date of IR, Office of Origin notifies IB and requests partial or total cancellation of IR • Cancellation due to a ceasing of effect the IB cancels the IR to the extent requested by Office of Origin. The IB notifies all designated Contracting Parties of partial or total cancellation of IR. Records and publishes.

  37. Madrid System Transformation(Protocol Article 9quinquies) • When? cancellation (partial or total) of and IR due to a ceasing effect triggers a right to file a national or regional application in each designated CP • Request Request for transformation must be filed directly with office(s) of the designated CP(s) within three months from the date of cancellation in the international register • Rights preserved- date of international registration becomes filing date - priority date, if any, claimed in international registration

  38. Madrid System Invalidation • Invalidation of effects of the international registration in a designated Contracting Party • Holder of international registration affected must be afforded the opportunity to defend his rights • Notification by the Office of the designated Contracting Party to the IB after invalidation is pronounced and is no longer subject to appeal

  39. Madrid System Fees Schedule(in Swiss Francs) International Application • basic fee 653 or 903 • supplementary (per class >3classes) 73* (100) • complementary (per DCP) 73* (100) * can be replaced by individual fee under the Protocol Subsequent Designation • basic fee 300 • complementary (per DCP) 73*(100)

  40. Madrid System Fees Schedule (cont.)(in Swiss Francs) Renewal • basic fee 653 • supplementary 73* (100) • complementary 73* (100) * can be replaced by individual fee under the Protocol Recording of transfer, limitation 177 Change of name/address 150 Recording of license 177

  41. Madrid System Individual FeesDeclarations made under the Protocol Armenia, Australia, Bahrain, Belarus, Benelux, Bulgaria, China, Cuba, Denmark, Estonia, European Community, Finland, Georgia, Greece, Iceland, Ireland, Italy, Japan, Kyrgyzstan, Moldova, Netherlands Antilles, Norway, Republic of Korea, San Marino, Singapore, Sweden, Switzerland, Turkey, Turkmenistan, Ukraine, United Kingdom, United States of America, Uzbekistan, Viet Nam (34)

  42. Madrid System Part II Managing an International Registration Interface with the Community Trademark System Recent Developments in the Madrid System

  43. Madrid System Centralized management • Subsequent designations • Renewal • Modifications (recording in the Int. Register): - change in ownership - change of name and address - limitation - renunciation - cancellation - recording of licences - restrictions of holder rights

  44. Subsequent Designation

  45. Madrid System Why a subsequent designation? • Subsequent designation made in respect of an international registration in order to extend protection to further CPs • When grounds of refusal, invalidation or others, which impeded the grant of protection in a Contracting Party, no longer exist

  46. Madrid System Which CPs can be designated? Any CP which is bound by the same treaty as the treaty by which is bound the CP of the holder Germany (AP) Japan (P) Turkey (P) Egypt (A)

  47. Madrid System When a subsequent designation is not possible? • Declaration under Article 14 (5) Protocol • Estonia (November 18, 1998) • Turkey (January 1, 1999) • Namibia (June 30, 2004)

  48. Madrid System How to make a subsequent designation? • Form MM4 • Through the Turkish Office or directly to the International Bureau • Fee: 300 CHF + Designation fee(complementary or individual) • Subsequent designation may relate to one I.R. only • Narrower list of G&S possible, but not broader

  49. Madrid System Date and duration of the Subsequent Designation • Presentation by holder directly to the IB • date of receipt by IB • Presentation by Office • date of receipt by Office if received by IB within 2 months • But holder may request that the sub. des. takes • effect after renewal • effect after recording of a change Duration.Until the expiry of the international registration. The subsequent designation does not have a duration of its own

  50. Change in Ownership

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