Madrid – A System for businesses Handling the Madrid Portfolio

1. Madrid – A System for businesses Handling the Madrid Portfolio Diego Agustín CARRASCO PRADAS Head, Legal Section, Legal and Promotion Division, International Registries of Madrid and Lisbon, Brands and Designs Sector October 2010

2. Share within Global Trademark Activity • Over 200 different national/regional trademark jurisdictions worldwide • Some 965,000 trademark applications were filed worldwide by non-residents in 2007 of which • Some 350,000 are designations in international registrations (Madrid System)

3. Trademarks in Force Right-holders (169,939) Registrations in force (515,562)

4. Amount of Fees per Registration

5. Major users of the System (Number of application filed)

6. Most Designated Contracting Parties

7. Designations per Registration

8. International Registrations in Force as of December 31, 2009 515,562 the total number of registrations in force, equivalent to over 5.6 million active national/regional registrations, belonging to 169,939 trademark holders

9. Processing Times • Average of 44.76 days to register a regular application. • Average of 31.8 days to send a notice of irregularity. • Average of 47.7 days waiting for a response. • Average of 65.22 days to process a response.

10. Benefits for Trademark Owners 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 of the legal effect in each country concerned

11. Subsequent Designation • Can designate additional Contracting Parties after international registration • Subject to international procedures similar to those of a designation in an international application • Start date for protection • = recording of subsequent designation • Term and renewal of IR does not change • Reasons • Indefinite term of trademark registration • Expansion of trade • Refusal ground no longer applies • New Contracting Parties

12. Presentation of the Subsequent Designation OFFICE of the Contracting Party of the Holder PresentMM4 Through Holder Present MM4 Directly To INTERNATIONALBUREAU

13. The International Bureau (SD) OFFICE of the Contracting Party of the Holder Holder Notifies Informs INTERNATIONALBUREAU Formality Examination No Irregularities Notifies Records in the int’l Register Publishes in the Gazette Designated Contracting Parties Designated Contracting Parties Designated Contracting Parties

14. Changes in the International Registration • Changes in the International Registration • Change in Ownership (MM5) • Limitation, Renunciation and Cancellation (MM6, 7, 8) • Change of Name or Address of the Holder (MM9)

15. Ceasing of Effect • For a period of five years from the date of it registration, the international registration remains dependent on the Basic Mark • If the Basic Mark ceases to have effect, the international registration will no longer be protected • Commonly called “Central Attack”

16. The International Bureau (CB) OFFICE OF Origin 5-Year Dependency Notifies Ceasing of Effect Holder Transmits INTERNATIONALBUREAU Formality Examination No Irregularities Notifies Records in the int’l Register Publishes in the Gazette Designated Contracting Parties Designated Contracting Parties Designated Contracting Parties

17. The Madrid System Goods and Services Database

18. Project approved in 2009 • Objectives • Accelerate the pace of construction and deployment of the Madrid System Goods and Services Database • Set the ground for Phase I of the pilot project to assess the feasibility of introducing additional filing languages

19. The Database • A WIPO-administered database of indications of goods and services: • correctly classified by the IB according to the Nice Classification (Ninth edition) • accepted by the IB under the Madrid system procedures (i.e., will not be subject of an irregularity notice under Rule12 or Rule 13 of the Common Regulations) • To the extent possible, would also contain information on whether a given indication is also accepted by the Office of a potentially designated Contracting Party

20. Database Languages • English, French, Spanish • Other language versions: in cooperation with the Offices of interested Madrid Union Members In the context of the project approved by the Assembly, WIPO is ready to assist in the translation of the database into Arabic, Chinese, Dutch, German, Italian, Japanese, Portuguese and Russian, upon request from the Office or Offices concerned

21. Advantages • For the IB and participating TM Offices: • increased productivity, consistency and quality in the processing of trademark applications • For trademark owners: • diminished risk of registration being refused on grounds of wrong classification or non-acceptance of the terms used to indicate goods or services

22. Madrid Filing Assistant • A search and classification tool • offering user-friendly access to the Madrid System G&S Database • helping applicants compose their lists of goods and services

23. MFA Functions • Include the possibility to: • BROWSE AND PICK terms in a given class in the database; • CHECK THE ACCEPTANCE BY WIPO of terms in a preexisting list of goods or services; • SEARCH for the correct class of a given term or for the most suitable term to identify a good or service; • obtain an AUTOMATIC TRANSLATION of a given indication into the other languages of the database. • an additional function under development: CHECK ACCEPTANCE BY DCP (Designated Contracting Party)

24. Madrid Portfolio Manager MPM • Portfolios are established for Clients on the basis of eMail addresses recorded in the International Register • Users establish WIPO User Center account, using the same eMail address • Once authenticated to the WIPO User center account, the MPM presents Clients portfolio for display • Users can view the status of each registration, upload new requests for recordal, make payments etc • Asynchronous electronic communication

25. Madrid Electronic Alerts • The MEA is an electronic watch service for 3rd Parties • Users etsablish a WIPO User Center Account • Using the MEA service they then establish a list of IRNs that they wish to monitor. • Where an IRN is the subject of any change, the User receives an email, with a hyperlink to ROMARIN for that IRN

26. Thank You diego.carrasco@wipo.int