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The Legal and Technical Implications of Japanese and Philippine Accession to the Madrid Protocol. Maricris Jan Tobias Intellectual Property Office of the Philippines] JPO Long-Term Research Fellowship December 2006-March 2007. The Madrid Protocol: History and Background.

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the legal and technical implications of japanese and philippine accession to the madrid protocol

The Legal and Technical Implications ofJapanese and PhilippineAccession to the Madrid Protocol

Maricris Jan Tobias

Intellectual Property Office of the Philippines]

JPO Long-Term Research Fellowship

December 2006-March 2007

the madrid protocol history and background
The Madrid Protocol: History and Background
  • The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol)
    • one of the systems for the international registration of trademarks
    • simplifies the international registration of marks and reduces the cost of registration
comparison of the madrid agreement and the protocol
Must be based on a trademark registration in the Office of origin,

A Contracting Party has 12 months to declare in a notification of refusal that protection cannot be granted in its territory

Official language is French

Cannot transform failed international applications into national applications

Can be based on an international application or registration

A Contracting Party can extend refusal period to 18 months

Official languages are English, French and Spanish

An Office of a Contracting Party may receive higher fees under the Protocol, consistent with its national fee structure.

Failed international applications may be transformed into national applications in each of the designated countries within three months of refusal, and still benefit from the date of the international registration and priority date.

Comparison of the Madrid Agreement and the Protocol

Madrid Agreement

Madrid Protocol

madrid system process
Madrid System Process
  • A trademark holder presents an application for international registration to the International Bureau of the World Intellectual Property Office through the Office of origin.
  • The IB records the mark in the International Register and publishes it in the WIPO Gazette of International Marks then notifies each designated Contracting Party of the request for protection
From the date of the international registration or subsequent designation, the mark will be protected in each of the designated Contracting Parties as if it had been filed directly.
  • Each designated Contracting Party has the right to refuse protection, but it should notify the IB within 12 or 18 months.
  • If there is no timely refusal, the mark will be protected as if it had been registered by the Office of that Contracting Party.
  • International registration remains dependent on the mark registered or applied for in the Office of origin for the first five years.
  • An international registration may be renewed every 10 years upon payment of the prescribed fees.
qualified to file under the protocol
Qualified to File Under the Protocol
  • only by a natural person or a legal entity which has a real and effective industrial or commercial establishment in, or is domiciled in, or is a national of, a country which is party to the Madrid Agreement or the Madrid Protocol, or
  • who has such an establishment in, or is domiciled in, the territory of an intergovernmental organization which is a party to the Protocol, or is a national of a Member State of such an organization
trademark administration in japan
Trademark Administration in Japan
  • On December 14, 1999, Japan acceded to the Protocol, which entered into force on March 14, 2000.
  • Declarations:

(a) availing of the 18-month time limit for refusal

(b) charging an individual fee in connection with each international designation, and with the renewal of any such international registration, payable in two parts

(c) while the recording of licenses is provided for in the domestic law, the recording of licenses in the International Register has no effect

changes to japanese law and practice
Changes to Japanese Law and Practice
  • Amending the Japan Trademark Law
    • Now Chapter VIIbis
    • Procedure for filing an international application through the JPO
    • Procedure for designating Japan for extension of territorial protection
  • Implementing rules and regulations for accession to the Protocol
    • Took effect March 14, 2000
In case an international filing is cancelled under Art. 6(4) of the Protocol, the holder may file a national application in Japan within three months from cancellation of the international registration.
  • Protection for marks for which a trademark application has been filed and a trademark right has yet to be granted.
Publication of the Publication of Unexamined Trademark Application, the Publication of International Trademark Application, and the Publication of Registered International Trademark to make information on these applications available to the public
  • Right to claim damages equivalent to his business loss caused by infringing use of a trademark application, after warning from the applicant but before the registration of the establishment of the trademark right concerning the designated goods or designated services relating to the said application.”
Trademark examination period 18 months from the date of filing an application for both Protocol applications and national filings
  • Reduction of first action period from 20 months to 7 months by
    • adopting a paperless system in trademark application filing procedures on January 1, 2000;
    • increasing the number of examiners dedicated to implementing the Protocol; and
    • outsourcing certain steps in the examination process to allow trademark examiners to focus on substantial examination and final decision.
Revision of JPO Trademark Examination Manual to comply with the amendments to Trademark Law and increased transparency in the examination process
  • Allowed online filing for trademark applications.
  • JPO reorganization
    • International Trademark Application Division and the Examination Division specifically to handle Protocol applications
    • national registration file directory.
    • Appeals Division collegial examination of Protocol cases
    • new database, office procedures and computer system to provide technical support to Protocol users and examiners
  • Public Awareness Seminars
trademark administration in the philippines
Trademark Administration in the Philippines
  • Republic Act No. 8293 (1998) of the Intellectual Property Code of the Philippines (IP Code) was enacted in 1998
  • IP Philippines is streamlining its trademark processes, improving the trademark automation systems, and human resource development to be able to cope with the procedural requirements of the Protocol.
  • Reduced turnaround time from 4.8 years to 2.8 years from date of filing
  • Backlog down by 92%; expects to have disposed of 100% of its backlog applications by the middle of 2007.
  • Comprehensive updating of its trademark database.
  • Considering how to develop a system of protection for non-traditional trademarks as presently, trademarks are limited to visual signs for goods or services
philippine program for accession to the protocol
Philippine Program for Accession to the Protocol
  • Evaluation of the benefits of accession to the Protocol;
  • Examination of the Protocol provisions and the regulations vis-à-vis Philippine trademark law and rules and regulations;
  • Consultations with stakeholders
  • Drafting of position paper recommending accession; and
  • Operationalization of the accession process by the Philippine government.
advantages of the madrid protocol
Advantages of the Madrid Protocol
  • Facilitate Registration of Marks
  • Flexibility
  • Expedited Review
  • Significant Cost Savings
  • Right of Priority
Maintaining Protection
  • Replacement
  • Transformation
  • Increased Revenue Creating Avenues for Trademark Offices
  • Creation of a Favorable Climate for Investments
disadvantages of the madrid protocol
Disadvantages of the Madrid Protocol
  • Dependency and Central Attack
  • Cost of Addressing Official Actions
  • Restriction on Amendment of Marks
  • Restriction on Assignments
  • Limited Membership
  • Periods for Action
  • Operational Demands
  • Amendment of Domestic Laws and Regulations
  • Study of Economic Benefits
  • Selective Use of the Madrid Protocol