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The Strategic Use for SME’s of the Madrid and Hague Systems. Betty Berendson, Senior Information Officer Information and Promotion Division, Sector of Trademarks, Industrial Designs and Geographical Indications. THE MADRID SYSTEM Objectives and Basic Features. Objectives of the System. - PowerPoint PPT Presentation
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World Intellectual
Property Organization
The Strategic Use for SME’s of the Madrid and Hague Systems
Betty Berendson, Betty Berendson, Senior Information OfficerSenior Information Officer
Information and Promotion Division,Information and Promotion Division,Sector of Trademarks, Industrial Designs and Geographical IndicationsSector of Trademarks, Industrial Designs and Geographical Indications
World Intellectual
Property Organization
THE MADRID SYSTEM
Objectives and Basic Features
Objectives of the System
• International Registration of Trademarks
• Simplified access to foreign markets
Characteristics
• Economical
• Fast
• Simple
National Route(with national Offices)
• different procedures• different languages• fees paid in local currency• recording of changes:
several operations• (usually) through
a local agent
VS International Route(with Office of origin WIPO)
• one procedure • one language • fees paid in Swiss francs
only • recording of changes:
one operation • local agent not compulsory
Usually when there is a refusal
The Protection AbroadAn Alternative to the National Route
Advantages for Users
• Simpler, faster and much more affordable
• Simplified registration in one country with the possibility of many designations
• Simplified management of a trademark portfolio
• Flexibility
Registration and Administration of Trademarks in up to 80 Contracting
Parties
– through a single procedure– with a single administration– in a single language
Closed System
• Attachment necessary– establishment (real and effective)– domicile– nationality
• Office of Origin
Procedure through the Madrid System
• Via national office
• Language
• Formal examination
• Registration
• Notification and publication
• Refusal (or not) by designated Contracting Parties
Bundle of National Rights
• National (designated) Offices determine:– substantive conditions of protection– applicable procedure if refusal– scope of protection
Central Administration
• Subsequent Designations
• Assignments• Changes in Names and Addresses• Limitation, renunciation, cancellation• Renewal
Agreement only 8Protocol only 23
Agreement and Protocol 49(Including EC)
Madrid Union
(80 Members)
International trademarks in force
• some 471.325 registrations in force
• over 5 million active designations
• more than 159,000 different trademark owners
Marks by right-holder
1-2
3-10
11-100
101-500
> 500
Total
80.52%
16.8%
3.21%
0.18%
0.01%
100,00%
128,080
25,579
5,114
280
22
159,075
Number of right-holders
Right-holders(159,075)
Registrations by Category of Right-Holderby end of December 2006
Trademarks Worldwide
• Over 2,000,000 trademark applications are filed worldwide annually
• Approximately 700,000 are international trademarks filings, from which:
• Over 300,000 are filed through the Madrid System (43%)
On-line Services
• Madrid Express database
• ROMARIN database
• WIPO Gazette of International Marks
• E-Renewal
• Fee Calculator
http://www.wipo.int/madrid/en/services/
Top filer Membersin 2006
Top Filer
0%5%
10%15%20%25%
German
y
Franc
e
United S
tates
Italy
Benelu
x
Europe
an C
ommunit
y
Switzer
land
China
United K
ingdom
Austra
lia
Austria
Japa
n
Others
Pourcentage
Top filer Membersin 2006
# filings shareGermany 6,552 18.0%France 3,896 10.7%United States 3,148 8.6%Italy 3,086 8.5%Benelux 2,784 7.6%European Community 2,523 6.8%Switzerland 2,468 6.8% United Kingdom 1,489 4.1%China 1,328 3.6%Spain 1,215 3.3%Austria 1,197 3.3%Australia 1,100 3.0%
Some significant filing increases in 2006 (as compared to 2005)
Europe
an U
nion
United
state
s
China
Austra
lia
Other th
an th
e top
20
2005
2006
2'523
3'296
1'416
1'068
3'260
1'530
2'595
1'311
848
2'929
0
500
1'000
1'500
2'000
2'500
3'000
3'500
Growth
2005
2006
Some significant filing increases in 2006 (as compared to 2005)
European Community 2,523 65.5%
Italy 3,086 25.5%Australia 1,100 29.1%Spain 1.215 17.2%United States 3.148 10.5%other than the top 20 3,260 11.3%
# applications growth
Most designated Contracting Partiesin registrations + subsequent
designationsin 2006 (as compared to 2005)
20052006
13749 13533
12750 12697
1060810043
8143 8120 7819 78167624 7196
7081
11'751 12530
11384
10760
9224
5805 76387123
7108
8782
5865
8177
6157
0
2'000
4'000
6'000
8'000
10'000
12'000
14'000
Most Designated Countries
20052006
Most designated Contracting Partiesin registrations + subsequent designations
in 2006 (as compared to 2005)
China 15,801 16.4% Russian Federation 14,432 12.7%Switzerland 14,260 8.1%United States of America 13,994 18.0%Japan 11,844 17.3%European Community 10,640 68.7%Australia 9,115 14.1%Norway 9,102 7.8%Ukraine 9,057 9.5%Turkey 8,958 4.2%Rep of Korea 8,334 16.4%Germany 8,147 11.0%Romania 8,103 4.4%
# designations growth
Conclusion
Madrid System Madrid System A useful economic toolA useful economic toolto obtain and maintain to obtain and maintain protection of marks!protection of marks!
World Intellectual
Property Organization
THE HAGUE SYSTEM
Objectives and Basic Features
Purpose of the HagueAgreement
• An international registration system for protection of industrial designs in several countries, by means of a single international application filed with the International Bureau of WIPO.
• A single international application replaces a whole series of national applications.
Legal Framework
Hague SystemConcerning the
International Registrationof
Industrial Designs
• Hague Agreement– London Act (1934)
– Hague Act (1960)– Geneva Act (1999)
• Entered into force on 23 Dec 2003• Operational on 1 Apr 2004
• Common Regulations (1996)– Last revised: 1 Apr 2004
• Admin. Instructions (2002)– Last revised: 1 Apr 2004
Hague Union Members (46)
Geneva Act (1999): 22Albania, Botswana, Croatia, Egypt, Estonia, France, Georgia, Hungary, Iceland, Kyrgyzstan, Latvia, Liechtenstein, Moldova, Namibia, Romania, Singapore, Slovenia, Spain, Switzerland, The former Y.R. of Macedonia, Turkey, Ukraine
Hague Act (1960): 21 Belgium, Belize, Benin, Bulgaria,Côte d’Ivoire, D.P.R. of Korea, Gabon, Germany, Greece, Italy, Luxembourg, Mali, Monaco, Mongolia, Montenegro, Morocco, Netherlands, Niger, Senegal, Serbia, Suriname
London Act (1934): 3Indonesia, TunisiaHoly See (denounced as of August, 2007)
(by most recent act)
www.wipo.int/hague/en/members
As of April 2007
Hague Union Members (46)(by most recent act)
20 Geneva Act (1999)21 Hague Act (1960) 3 London Act (1934)
By Most Recent Act
As of April 2007
Advantages
• One vs. Many Relationships Provides for the centralized acquisition, maintenance and management of industrial design rights around the world by filing a single international application in which one or more Contracting Parties are designated.
• “Bundle of Rights” The resulting international registration has the effect of a grant of protection in each designated Contracting Party, although it is not itself, nor does it result in, an independent grant of protection in each designated Contracting Party (DCP).
. . . What It Is Not.
• Since the Hague System is primarily a procedural arrangement, it does not determine:
– the conditions for protection;– the refusal procedure to be applied when
deciding whether a design may be protected; or– the rights which result from protection.
• Such issues are governed by the law of each
Contracting Party designated in an international registration.
Filing the International Application
• Closed System– Entitlement: Connection between applicant and a
Contracting Party via establishment, domicile, habitual residence (Geneva Act) or nationality
– Only designate Contracting Parties to Hague System• Not required to have a prior national
application or grant of protection– “Self-designation” is possible
• Application can be filed either directly with International Bureau (IB) or indirectly via the Contracting Party from which entitlement is derived
Formal Examination by IB
• IB examines for formalities only– Substantive grounds, such as novelty, not
considered by IB
• Recorded in an International Register– Registration certificate sent to holder
• Publication in WIPO International Designs Bulletin– Immediate publication at applicant’s request– Differed publication and payment of related
fees at applicant’s request
Substantive Examination by DCP
• Substantive examination, if any, undertaken by each DCP as provided by its national law
• Refusal by DCP must be sent to IB within set time limits from the date of publication of international registration– Holder has same remedies as would have been
available if filed under national law
• If not refused, or if refusal withdrawn, the IR produces the same effect as a grant of protection under national law
General ProcedureIndirect
Filing
Direct
Filing
self-designation
OFFICE OFDESIGNATED
CONTRACTINGPARTY
OFFICE OFDESIGNATED
CONTRACTINGPARTY
OFFICE OFDESIGNATED
CONTRACTINGPARTY
OFFICE OF CONTRACTING
PARTY OFENTITLEMENT
InternationalApplication
INTERNATIONALBUREAU
Duration of Protection
• International registration initially valid for 5 years from date of international registration– Renewable for five-year periods
• Minimum duration of protection set by governing treaty
– May be renewed, with respect to a given DCP, for the full grant of protection allowed under the national law of that DCP
• Maximum duration of protection set by each DCP
Effects of International Registration
• As an application– As of the date of the International Registration
• As a grant of protection– Hague (1960)
• By default, as of the date of the international registration, but can be later (if office examines for novelty)
– Geneva (1999) • By default, as of the date of the expiry, at
the latest, of the applicable refusal period, but can be later (if office examines for novelty)
Central Management• Appointment [DM/7] or cancellation [DM/9] of
representative before IB• Change of name and address of holder [DM/6]
or representative [DM/8]
• Record change of ownership [DM/2]
• Limit designs in one or more DCP(s) [DM/3 ]
• Renounce all designs in one or more DCP(s) [DM/5]
• Renewal in 5-year terms [DM/4]
http://www.wipo.int/hague/en/forms
/
General Advantages
National or Regional International Route Route (Hague System)
• many Offices for filing • one Office for filing• many languages • one language• many currencies • one currency• many registrations • one int. registration• many renewals • one renewal• many modifications • one modification• foreign attorney or agent • foreign attorney or agent
first needed at filing first needed if refused
International Registrationsin force as of December 31, 2006
• 27,927 international registrations
• 292,389 designations
• 1,260,164 designs
1,143 International Registraions
Average Number of Designations 12
Average Number of Designs 5
Average Fee 1,761 CHF
Higest Fee* 15,850 CHF
All Fees 96% < 5,000 CHF
International Registrations 2006
Thank [email protected]