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Damascus, May 28 and 29, 2008 Päivi Lähdesmäki, WIPO

Recent Developments in the Field of Trademarks and the Madrid System for the International Registration of Marks WIPO National Seminar on Industrial Property and on the Implementation of the TRIPS’ Obligations in the Pursuance of National Public Policies and Goals. Damascus, May 28 and 29, 2008

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Damascus, May 28 and 29, 2008 Päivi Lähdesmäki, WIPO

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  1. Recent Developments in the Field of Trademarks and the Madrid System for the International Registration of MarksWIPO National Seminar on Industrial Property and on the Implementation of the TRIPS’ Obligations in the Pursuance of National Public Policies and Goals Damascus, May 28 and 29, 2008 Päivi Lähdesmäki, WIPO

  2. Table of Contents: • Part I: Recent Developments in the Field of Trademarks • Recent Activities • Part II: Madrid System for the International Registration of Marks

  3. Part I:Recent Developments in the Field of Trademarks

  4. Recent Activities: Singapore Treaty on the Law of Trademarks (2006): - framework for defining harmonized rules on trademark administration at the national offices - not yet in force, but the following States have ratified it or acceded to it: • Singapore: Ratification - March 26, 2007 • Switzerland: Ratification - July 6, 2007 • Bulgaria: Accession - January 21, 2008

  5. Singapore Treaty: main features Nature of Marks • nature of marks is open-ended • Regulations define details concerning • representation of hologram and non-visible marks

  6. Singapore Treaty: main featuresElectronic Communication • Free choice of form and means of transmittal of communications • Regulations define details concerning requirements for e-filing • Signature of communication on paper (no certification required) • Electronic transmittal • filing on paper within one month • Electronic communications • free choice of authentication measures

  7. Singapore Treaty: main featuresRelief Measures: At least one of the following measures must be available in the case that a time limit has been missed: • extension of time limit • continued processing • reinstatement, if failure was unintentional or occurred despite due care

  8. Singapore Treaty: main featuresTrademark Licenses • Recording • license • amendment of license • cancellation of license • Standard Content of Request • Documentary Evidence • extract from contract (certified) • statement of license document (signed by both parties)

  9. Resolution Supplementary to the Singapore Treaty • Understanding by the Contracting Parties: - no obligation: to register new types of marks or implement electronic filing systems - special provisions: to provide developing and least- developed countries with technical assistance - Assembly: to monitor progress of assistance - dispute settlement

  10. Singapore Treaty: Benefits for Trademark Owners and for Contracting Parties • Modernization of legal framework for trademark administration • Streamlining of national procedures • Reduction of backlogs and increase turnover of files • Alignment with the Madrid System • Potential benefits of electronic filing

  11. Part II:Madrid System for the International Registration of Marks

  12. The Madrid System « The Madrid System has earned the trust and confidence of the business community as a reliable option for brands seeking export markets.  » « Brand value is one of the most important assets that a business holds. »

  13. Madrid System in perspective –a potential economic tool • significantly lower costs than through national route (10 to 20 times less) • End of 2007: • 483,210 international trademarks in force = • equivalent to some • 5.4 million active designations

  14. The Madrid System Madrid Agreement (1891) Madrid Protocol (1989) operational on April 1, 1996 • Common Regulations • latest revision 2008 • Admin. Instructions • National Law

  15. What is the Madrid System? A closed system of international registration and management of marks. CONNECTION needed with the Office of origin

  16. What the Madrid System is not? • As the Madrid System concerns only procedures, it does NOT determine: - conditions for protection - refusal procedures at the Office - rights resulting from protection These issues are governed by national laws.

  17. Objectives of the Madrid System: Registration and Administration of Trademarks in up to 82 Contracting Parties • - through a single procedure • - in a single language • - a single administration of • the international registration

  18. Advantages of the Madrid System National Route International Route (National Offices) (Office of origin WIPO) • file in many Offices • file in one Office of origin • file in many languages • file in one language • fees in many currencies • fees in one currency • foreign agents • foreign agent only if refused • many registrations • one international registration • many renewals • one renewal • changes recorded via • changes recorded via theeach national office the International Bureau

  19. ... Madrid System in summary: Administrative efficiency Flexibility Cost effectiveness

  20. Accessions since January 2004 • Azerbaijan (P) • Bahrain (P) • Botswana (P) • Croatia (P) • European Community (P) • Kyrgyzstan (P) • Madagascar (P) • Montenegro (A+P) • Namibia (A+P) • Oman (P) • San Marino (P) • Syrian Arab Republic (August 5, 2004) (A+P) • Uzbekistan (P)

  21. Contracting Parties to only the Madrid Agreement (7) Algeria, Bosnia and Herzegovina, Egypt, Kazakhstan, Liberia, Sudan, Tajikistan

  22. Contracting Parties to only the Madrid Protocol (26) Antigua & Barbuda, Australia, Bahrain, Botswana, Denmark, Estonia, European Community, Finland, Georgia, Greece, Iceland, Ireland, Japan, Lithuania, Madagascar, Norway, Oman, Republic of Korea, Singapore, Sweden, Turkey, Turkmenistan, United Kingdom, United States of America, Uzbekistan, Zambia

  23. Contracting Parties to both the Madrid Protocol + Agreement (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

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

  25. Filing trends in 2007: • A record of 39,945 international applicationswas received (growth of 9,5%) comprising: • a record of 370,234 new designations (growth of 1,5%) • most filings were made by small and medium sized (SMEs) enterprises (holders of 1 to 10 marks)

  26. International Applications2004-2007 + 9.5% + 8.6% + 13.9% + 23.4%

  27. Madrid System Major User Contracting Partiesapplications filed in 2007

  28. Madrid System Most designated Contracting Partiesin applications and subsequent designations

  29. Filing trends in 2007: • Developing countries: • 2,108 filings (5,3% of total filings) • 10,5% growth over 2006 • Most significant growth: • Republic of Korea with 330 international applications (+73.7%)

  30. Filing trends in 2007: SMEs (holders of 1-10 marks) own more than 57% of registrations

  31. Filing trends in 2007:Amounts of Fees paid per International Registration

  32. The basic Madrid Procedure: • filing via national Office 2) formal examination and registration by the International Bureau • registration or notification of irregularity • notification to Designated Contracting Parties and publication by the International Bureau 3) examination by the Office of a Designated Contracting Party • protection/refusal

  33. Basic Procedure: Precondition: basic application or basic registration InternationalApplication Certifies that particulars in international application = those in basic application or basic registration OFFICE OF ORIGIN Checks formalities Records in the International Register Publishes in the International Gazette Notifies designated Contracting Parties INTERNATIONALBUREAU Substantive Examination OFFICE OFDESIGNATEDCONTRACTINGPARTY refusalwithin set time limits refusal no refusal = effect of anational registration

  34. Anyone who is a. . . Natural or Legal Entity with a connection through - a real and effective industrial or commercial establishment or, - a domicile in a Contracting Party or, - nationality of a Contracting Party, is entitled to file an international application.

  35. The “basic mark” on which the international application is based, can be • an application for registration(under the Madrid Protocol) or, • a registration in the country of origin Office of origin verifies that the international application corresponds to the basic application or registration.

  36. Designations in the international application may be made onlyin respect of: • Contracting Parties • to the Madrid Agreement or Protocol or both • Contracting Parties • bound by the same Treaty as the Country of Origin of the Applicant - a “closed” system

  37. Procedure: International Registration Date (Art. 3(4)) Necessary indications (Rule 15(1)) - identity of the applicant and contact details - designated Contracting Parties - reproduction of the mark - goods and services ...received by the International Bureau within 2 months from the date on which the Office of Origin received application: - date of receipt by Office of Origin …received by the International Bureau later than 2 months from the date on which the Office of Origin received application: - date of receipt by the International Bureau

  38. Why Subsequent Designation ? - Protection was not desired at the time of filing the international application • Protection was not possible at the time of filing the international application • (the designated country/organization was not a Party to either the Agreement of the Protocol)

  39. Date of Subsequent Designation: - presented directly by the holder to the International Bureau (Rule 24(6)(a)) - date of receipt • - received by the International Bureau within 2 months: date of receipt by the Office • presented via the Office • to the International • Bureau (Rule 24(6)(b)) - received by the International Bureau later than 2 months: date of receipt by the International Bureau

  40. Date of Subsequent Designation (cont.): • request for later effect of the subsequent designation (Rule 24(6)(d)): • designation takes effect after renewal • designation takes effect after the recording of a change or a cancellation

  41. Term of Protection of International Registration (and of Subsequent Designation) • term of protection of the international registration: 10 years • renewal for further 10 years • subsequent designation: valid until the expiry of the international registration itself (only one renewal)

  42. Renewal Procedure: • Unofficial notice of expiry to the holder • 6 months before the expiry of the 10 year period • Payment directly with the International Bureau • 6 months grace period after the expiry date (+ 50% basic fee)

  43. An International Registration has the Effect of a …. - national application until the expiry of the time limit to issue a refusal - national registration from the expiry of the time limit to issue a refusal (if no refusal or if refusal is withdrawn)

  44. Time Limit for Issuing Provisional Refusalby the Office: • Notification of provisional refusal • 12 months • 18 months (if declaration under Article 5(2)(b) of theProtocol) • 18 months plus (if declaration under Article 5(2)(c) of the Protocol)

  45. Notification (cont.) - Three Stages: • (i) The initial notification of provisional refusal - Prescribed content - Recording and transmission by the International Bureau • (ii) Confirmation or withdrawal - when ‘final’ before the Office • (iii) Further decision affecting protection

  46. Statement of Grant of Protection (Rule 17(6)) Protection granted (only if no provisional refusal has been communicated)

  47. Ceasing of Effect of Basic mark within the first 5 years: What are the consequences? The Office of origin - must notify the International Bureau and - request the cancellation of the international registration, to the extent applicable The International Bureau - cancels the international registration and informs the designated Contracting Parties

  48. Transformation After “Ceasing of Effect” of the Basic mark(possible only under the Protocol) Conditions: • national application filed within 3 months from the cancellation of the international registration - goods/services in the national application must be covered by the goods/services of the international registration in respect of that Contracting Party

  49. Appointment: official form: international application subsequent designation recording of a change no power of attorney signed by the holder or presented through an Office separate communication: simple letter unofficial form MM12 specify relevant app./reg. signed by applicant/holder/ Office of the holder‘s CP Cancellation: simple letter all or specified app./reg. of an applicant/holder signed by applicant/holder or representative appointment of a new representative ex officio by the IB change in ownership without re-appointment ex officio by the IB Representation Before the International Bureau (Rule 3)

  50. Change in Ownership: • may result from • contract, assignment • court decision • operation of law: inheritance, bankruptcy • others • may be limited to • some of the goods or services • some of the Contracting Parties

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