World Intellectual Property Organization Recent Developments in the Field of Trademarks and the Madrid System for the International Registration of Marks

World Intellectual

Property Organization

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, 2008Päivi Lähdesmäki, WIPO

Table of Contents:

• Part I: Recent Developments in the Field of Trademarks – Recent Activities

• Part II: Madrid System for the International Registration of Marks

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Part I:

Recent Developments in the Field of Trademarks

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

Singapore Treaty: main features

Nature of Marks

– nature of marks is open-ended

– Regulations define details concerning• representation of hologram and non-visible

marks


Electronic 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


Relief 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


Trademark 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)

Resolution Supplementary to the Singapore Treaty

• Understanding by the Contracting Parties:

- no obligation:to register new types of marks orimplement electronic filing systems

- special provisions:to provide developing and least-

developed countries with technical assistance

- Assembly:to monitor progress of assistance

- dispute settlement

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

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Part II:Madrid System for the

International Registration of Marks

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. »

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

The Madrid System

• Madrid Agreement (1891)

• Madrid Protocol (1989)– operational on April 1, 1996

• Common Regulations– latest revision 2008

• Admin. Instructions

• National Law

What is the Madrid System?

A closed system of international registration and management of marks.

CONNECTION needed

with the Office of origin

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.

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

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 the

each national office the International Bureau

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... Madrid System in summary:

Administrative efficiency

Flexibility

Cost effectiveness

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)

Contracting Parties to only the Madrid Agreement (7)

Algeria, Bosnia and Herzegovina,

Egypt,Kazakhstan,

Liberia, Sudan,

Tajikistan

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

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

Contracting Parties to both the Madrid Protocol + Agreement (49)

Madrid Union - 82 Memberson May 1, 2008

Agreement only 7Protocol only 26

Agreement and Protocol 49

(Including EC)Ma

drid

Sys

tem

Filing trends in 2007:

A record of 39,945 international applications was 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)

International Applications2004-2007

29'472

39'94533'577 36'471

0

5'000

10'000

15'000

20'000

25'000

30'000

35'000

40'000

2004 2005 2006 2007

+ 8.6%+ 13.9%

+ 23.4%

+ 9.5%

Major User Contracting Partiesapplications filed in 2007

Office of Origin 2006 2007 Share Growth Germany 5,663 6,090 15.2% 7.5% France 3,705 3,930 9.8% 6.1% United States of America 3,148 3,741 9.4% 18.8% European Community 2,445 3,371 8.4% 37.9% Italy 2,958 2,664 6.7% -9.9% Switzerland 2,468 2,657 6.7% 7.7% Benelux 2,639 2,510 6.3% -4.9% China 1,328 1,444 3.6% 8.7% United Kingdom 1,054 1,178 2.9% 11.8% Australia 1,100 1,169 2.9% 6.3% Austria 1,117 1,134 2.8% 1.5% Japan 847 984 2.5% 16.2% Russian Federation 622 889 2.2% 42.9% Spain 994 859 2.2% -13.6% Turkey 733 717 1.8% -2.2% M

ad

rid S

yste

m

Most designated Contracting Parties in applications and subsequent designations

Designated CP 2006 2007 Share Growth China 15,801 16,676 4.5% 5.5% Russian Federation 14,432 15,455 4.2% 7.1% United States of America 13,994 14,618 3.9% 4.5% Switzerland 14,260 14,528 3.9% 1.9% European Community 10,640 12,744 3.4% 19.8% Japan 11,844 12,296 3.3% 3.8% Australia 9,115 9,848 2.7% 8.0% Ukraine 9,057 9,751 2.6% 7.7% Turkey 8,958 9,377 2.5% 4.7% Norway 9,102 9,346 2.5% 2.7% Republic of Korea 8,334 8,988 2.4% 7.8% Germany 8,147 7,184 1.9% -11.8% Croatia 6,970 7,059 1.9% 1.3% Singapore 6,717 7,005 1.9% 4.3% M

ad

rid S

yste

m


• 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%)

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

Trademarksby right-holder

1-2 marks3-10 marks11-100 marks101-500 marks> 500 marks

All

79.74%16.69%3.38%0.18%0.01%

100.00%

127,11826,604

5,395279

24

159,420

Number ofright-holders

Right-holders(159,420)

Registrationsin force(483,210)

1-2 marks31.67%

11-100 marks26.87% 3-10 marks

25.48%

101-500 marks10.67%

> 500 marks5.30%


Amounts of Fees paid per International Registration

54%

27%

10%5%

3% 1%

0

5000

10000

15000

20000

25000

% 54% 27% 10% 5% 3% 1%

IR 20'661 10'449 3'798 2'035 974 554

Less than 3,000 CHF

3,000 - 4,999 CHF

5,000 - 6,999 CHF

7,000 - 9,999 CHF

10,000 - 14,999 CHF

15,000 or more CHF

s

The basic Madrid Procedure:1) 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

Certifies that particulars in international application = those in basic application or basic registration

Checks formalitiesRecords in the International RegisterPublishes in the International GazetteNotifies designated Contracting Parties

Substantive Examinationrefusal

within set time limits

refusal no refusal = effect of a

national registration

Basic Procedure:

OFFICE OF ORIGIN

INTERNATIONALBUREAU

OFFICE OFDESIGNATED

CONTRACTINGPARTY

International

Application

Precondition: basic application or basic registration

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.

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.

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

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

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)

Date of Subsequent Designation:

- presented directly by the holder to the International Bureau (Rule 24(6)(a))

- presented via the Office

to the International

Bureau (Rule 24(6)(b))

- date of receipt

- received by the International Bureau within 2 months: date of receipt by the Office

- received by the International Bureau later than 2 months: date of receipt by the International Bureau

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

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)

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)

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)

Time Limit for Issuing Provisional Refusalby the Office:

• Notification of provisional refusal– 12 months– 18 months (if declaration under

Article 5(2)(b) of the Protocol)– 18 months plus (if declaration

under Article 5(2)(c) of the Protocol)

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

Statement of Grant of Protection (Rule 17(6))

Protection granted (only if no

provisional refusal has been communicated)

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

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

Representation Before the International Bureau (Rule 3)

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

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

Change in Ownership:

• new owner must be entitled (through establishment, domicile of nationality) to file international applications

• entitlement is to be considered in respect of each designated Contracting Party

Who may become the new owner?

Change in Ownership:Presentation to the International Bureau

transferee

(new owner)

transferor

(recorded holder)

through the Office of the Contracting Party of the holder or of the new owner

(signed by the Office and/or holder)

directly(signed by the holder)

through the Office of the Contracting Party of the holder or of the new owner

(signed by the Office and/or holder)

Who may present the request? (Rule 25(1)(b), Form MM5)

Centralization of Procedures

• Transfers / Changes in Ownership• Changes in Names and Addresses• Renewal• Change of Representatives• Recording of Licenses• Recording of Restrictions• Changes to specification of goods

and services and/or Contracting Parties

Illustration of Administrative Efficiency

China, Turkey, Australia, Russian Federation, Spain, France, Ukraine, Germany, Norway, Japan

• translation of specification into 10 languages• power of attorney in some countries• notarization and legalization• 10 financial transactions• 10 instructing letters• 10 different filing/renewal dates

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Interface with the European Community Trade Mark (CTM)

CTM Interface: Overview

• Link with the CTM as from October 1, 2004:

1) OHIM as Office of Origin

2) Designation of the European Community (EC) possible in Contracting Parties to the Madrid Protocol


1) OHIM (Office for Harmonization in the Internal Market) as Office of Origin

Entitlement: Connection with the EC as a

Contracting Organization (Art. 2(1)(ii) MP)

national of an EC Member State

establishment on EC territorydomicile on

EC territory

P

PP

P

AP

NorwayP

The international application is governed by the Protocol form MM2 (fr/en/es)

Designation of Contracting Parties

Syrian Arab Republic

European Community

Bosnia and Herzegovina

A


2) Designation of the European Community (EC)

- possible in Contracting Parties to the Madrid Protocol

Designation of the EC

• indication of a second language before OHIM

• seniority claims

• opting back: subsequent designation resulting from conversion

in the application (forms MM2 or MM3)

subsequently (form MM4)

Indication of a second language before OHIM (Art. 115 CTMR)

• opposition proceedings

• revocation proceedings

• invalidity proceedings

English

French Italian

German Spanish

In Practice(Add form MM17 to form MM2, MM3 or MM4)

Opting back: Two possibilities

Conversion of the EC designation (Art. 154 CTMR)

• designation of EC refused• designation ceases to have effect

– renunciation– no renewal

European Community:

conversion into national applications (Art. 108-

110 CTMR)

International (Madrid): conversion into

subsequent Madrid designations

(Madrid Rule 24(7))no translation necessary

AP P

Two Ways of Opting Back:

Syrian Arab Republic European Community

“opting out”: conversion under

EC law

“staying within”: subsequent

designation under Madrid

Subsequent Procedure

• present request before OHIM within three months after refusal or ceasing of effect (Arts. 154, 108 CTMR)

• use form MM16 or the corresponding form provided by OHIM

• OHIM will then pass on the request for subsequent designation of EC Member States to the International Bureau (Madrid Rule 24(2)(a)(iii))

Effect of the Subsequent Designation Resulting from Conversion

Ensuring the efficient administration of the trademark portfolio under the Madrid System:– change in name, address or ownership

– one renewal date for all designated Contracting Parties

keeping the date of the initial EC designation (Madrid Rule 24(6)

(e))

if applicable, seniority date of an earlier

national mark (Arts. 154, 108 CTMR)

Repeal of the Safeguard Clause

• the Protocol, and the Protocol alone, will (as from September 1, 2008) apply between States bound by both the Agreement and the Protocol

• Entry into Force on September 1, 2008

New Article 9sexies

• Paragraph (1)(a)– establishes the principle that the

Protocol, and the Protocol alone, will (as from September 1, 2008) apply between States bound by both the A and the P

• Paragraph (1)(b)– Renders inoperative a declaration under

Articles 5(2)(b), 5(2)(c) or 8(7) of the P, in the mutual relations between States bound by both Treaties

New Article 9sexies

• Mutual relations between States bound by both Treaties:

– Standard regime of Articles 5(2)(b), 5(2)(c) or 8(7) of the Protocol applies:

• Time limit for the notification of a provisional refusal: 1 year

• Payment of supplementary and complementary fees

New Article 9sexies

• Paragraph (2)

– Review of the application of new paragraph (1)(b) after a period of three years from September 1, 2008:

• Paragraph (1)(b) may be repealed or its scope may be restricted by the Assembly

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Current Situation: Article 9sexies(1) : A∩P = A applies, not P

A P

A∩P

Protocol Members (5 to 75)

0

20

40

60

80

P 2 5 7 9 11 15 18 18 20 21 22 23 23 26

A/P 3 7 15 25 29 34 36 38 41 45 45 47 50 49

1995 1996 1997 1998 1999 2000 2001 2002 2003 2004 2005 2006 2007 2008

01-01-2008

Agreement Members (46 to 56)

0

20

40

60

80

A/P 3 7 15 25 29 34 36 38 41 45 45 47 50 49

A 43 39 32 25 22 18 16 14 13 11 11 9 7 7

1995 1996 1997 1998 1999 2000 2001 2002 2003 2004 2005 2006 2007 2008

01-01-2008

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Repeal of the Safeguard clause

A P

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A P

Practical Implications for the Office:

• Only Offices of Contracting Parties bound by both the Agreement and the Protocol are concerned

• These Offices will need to adapt their procedures and automated systems to integrate the changes entailed by the repeal of the safeguard clause (i.e. as from September 1, 2008, the Protocol prevails over the Agreement)

Practical Implications for the Office: • The International Bureau has sent to these

Offices an Information Kit prepared by the Legal Service.

• The purpose of the Information Kit is to inform these Offices on the changes that will have an impact on their procedures and automated systems.

Further Legal Developments of the Madrid System

Recommendation of the Madrid Working Group to the Assembly

in 2008 (document MM/LD/WG/5/8):

- the only new obligation for Offices: to send Statements of Grant of Protection where no

provisional refusal has been issued (proposed Rule 18ter(1))

- Proposed amendment of Rule 16- Proposed revised Rule 17- Proposed new Rule 18bis- Proposed new Rule 18ter

- Entry into force: transitional provision to be added in Rule 40(4)

Further Legal Developments of the Madrid System

Proposed new Rule 18ter(1)(a):

- new obligation to the offices:- (1)(a) sending of statement of grant of

protection obligatory where no notification of provisional refusal has been communicated

- entry into force: no obligation before January 1, 2011 (proposed Rule 40(5))

Thank You

Päivi LähdesmäkiSenior Legal Officer

International Registration Systems Legal Service

[email protected]

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Documents

World Intellectual Property Organization Recent Developments in the Field of Trademarks and the Madrid System for the International Registration of Marks