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Overview of the Madrid System. USPTO GIPA 23 October 2013. Alan Datri Senior Counsellor Slide updated 10/25/13. Madrid System for the International Registration of Marks. Madrid Agreement (1891) Madrid Protocol (1989) As amended on October 3, 2006, and on November 12, 2007 - PowerPoint PPT Presentation
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Overview of the Madrid System
USPTO GIPA23 October 2013
Alan Datri
Senior Counsellor
Slide updated 10/25/13.
Madrid Systemfor the
International Registration of Marks
• Madrid Agreement (1891)
• Madrid Protocol (1989)– As amended on October 3, 2006,
and on November 12, 2007
• Common Regulations• Administrative Instructions
• National Laws and Regulations
www.wipo.int/madrid
Contracting Parties
1 Agreement only37 Protocol only (including EU)54 Agreement and Protocol
92 Members
Centralization
Centralized system for the acquisition, maintenance and management of trademark rights by filing a single international application for a single international registration in which one or more Contracting Parties are designated.
Allows right holders to target national, regional or global markets with respect to particular goods and services.
Cost-effective and efficient, thereby creating opportunities that would not otherwise exist for any enterprise with a limited legal budget, be it small, medium or large.
Applicant
Territory A
Territory B
Territory C
Applicant
Territory A
Territory B
Territory C
Office A
Office B
Office C
CentralizationNational/Regional Route International Route
Centralization
• one Office for filing• one language• one currency• one int. registration• one renewal*• one modification*• foreign attorney or agent
first needed if refused
• many Offices for filing• many languages• many currencies• many registrations• many renewals*• many modifications*• foreign attorney or agent
first needed at filing
National/Regional Route International Route
* Maintenance (renewal) and management (requests for modification such as change of name and address; transfer of ownership; limitation, renunciation or cancellation of goods and services or designs; appointment of representative, etc.).
AcquisitionBasic Mark
InternationalApplication
OFFICE OFDESIGNATED
CONTRACTINGPARTY
OFFICE OF ORIGIN
OFFICE OFDESIGNATED
CONTRACTINGPARTY
SUBSTANTIVE EXAMINATION
FORMALITIES EXAMINATION
International RegisterCertificate of International Registration
PublicationNotification
CERTIFICATION
INTERNATIONALBUREAU
Maintenance and Management
Renewal (10-year) – MM11Subsequent designation – MM4Subsequent designation from conversion (EU) – MM16Record change in ownership – MM5Limit G&S in one or more designated Contracting Parties – MM6Renounce all G&S in one or more designated Contracting Parties – MM7Cancel G&S – MM8Change of name and/or address of holder – MM9Change of name and/or address of representative – MM10Appointment of a domestic representative – MM12Record license – MM13Record restriction on right of ownership – MM19
Slide updated 10/25/13.
Additional Features
Dependency; Ceasing of Effect; IndependenceArticle 6; Rule 22
TransformationArticle 9quinquies
ReplacementArticle 4bis; Rule 21
Slide updated 10/25/13.
Keeping it in Perspective
Simple in conceptAccommodates business models that need to reduce costs not only in the initial filing, but also in the maintenance and management of a right
Can be complex in implementation and useNot surprising in what it seeks to accomplish, namely, to provide centralized access to different national and regional design systems
Practitioners, Practitioners, PractitionersProper functioning system depends on the advice of a knowledgeable practitioner, whether legal or paralegal or in house or outside counsel
Slide updated 10/25/13.