Protecting a Valuable Asset – How to Protect Your Brand With Madrid

1. Protecting a Valuable Asset – How to Protect Your Brand With Madrid HanoiOctober 24, 2017 Denis CrozeDirector, WIPO Singapore Office

2. Common Forms of Trademarks • Word/s (in a plain font or a ‘fancy’ font) • phrase • logo • picture • aspect of packaging • or combination of the above... JUST DO IT

3. Why Protect? • Trademark is often the most valuable asset an SME owns • Potential to constantly appreciate in value • Acts as deterrent to infringers domestically and overseas Source: Forbes – The World’s Most Valuable Brands 2017 Ranking

4. Protection Options • The national route - file trademark application/s with the IP Office of each country in which you want protection • The regional route (where available) - apply through a regional trademark registration system with effect in all member states (e.g. EUIPO application gives protection in all current and future EU members) • The international route - file through the Madrid System

5. The International Route The Madrid System may be preferred when you: • Seek protection in multiple markets, particularly if these are in different regions • Want flexibility to add new markets as your export plans develop • Have limited budget and/or time to spend on registration and management of your trademarks

6. Independent Filings vs WIPO Registration Systems InternationalBureau of WIPO

7. The Madrid System is Convenient • Access a centralized filing and management procedure • File one application, in one language and pay one set of fees for protection in multiple markets • Expand protection to new markets as your business strategy evolves

8. The Madrid System is Cost-effective • File an international application, which is the equivalent of a bundle of national applications, effectively saving time and money • Avoid paying for translations into multiple languages or working through the administrative procedures of multiple IP Offices

9. Costs Fees are payable to WIPO in Swiss francs • Basic fee*, whichincludes 3 classes of goods/services • 653 Swiss francs – b/w reproduction of mark • 903 Swiss francs – color reproduction of mark • Fees for designatedContracting Parties (dCP) • Standard fees– complementary (100 Swiss francs per dCP) and supplementary (100 Swiss francs per class beyond 3) OR • Individualfeeswherethisisdeclared

10. How Much?

11. How Much? • 2379 CHF = 2439 USD (for 10 years registration)

12. How Much for ASEAN Members? • 1448 CHF = 1482 USD (for 10 years registration)

13. Members of the Madrid System 116 countries

14. The Madrid System is Global • Currently: 116 countries covered by the 100 members • Markets that represent more than 80% of world trade • Recent accessions include: • 2014: OAPI and Zimbabwe • 2015: Algeria, Cambodia, The Gambia and Lao People’s Democratic Republic • 2016: Brunei Darussalam • 2017: Thailand, Indonesia

15. The Madrid System is Used by all Business Sectors • Madrid System users come from all corners of the globe and represent a broad cross-section of industries of different sizes

16. Madrid System Users: Business Size • Individual entrepreneurs, small and large businesses find the Madrid System to be a convenient and cost-effective means to protect marks in key markets throughout the world

17. Right-Holders (2016)

18. How the Madrid System Works The International Trademark Registration Process

19. Timeline Decision of designated Office: Grant or Refusal The International Trademark Registration Process Designated Office Office of Origin WIPO Substantive examination Basic application or registration 2 months 2 – 3 months 12 or 18 months Time limit for provisional refusal Recorded at WIPO and communicated IRN Certificate Date of International Registration 10 years

20. Thank You for Your Attention WIPO Website: http://www.wipo.int/ Madrid Website: www.wipo.int/madrid/en/ WIPO Singapore Office: http://www.wipo.int/singapore/ Email: singapore.office@wipo.int denis.croze@wipo.int