World Intellectual Property Organization THE INTERNATIONAL REGISTRATION SYSTEMS National Seminar for Patent Attorneys Minsk, October 24 and 25, 2007 Federico

World Intellectual

Property Organization

THE INTERNATIONAL REGISTRATION SYSTEMS

National Seminar for Patent AttorneysMinsk, October 24 and 25, 2007

Federico Guicciardini Corsi SalviatiFederico Guicciardini Corsi Salviati

Officer-in-chargeOfficer-in-charge

Information and Promotion Division (IPD)Information and Promotion Division (IPD)

Sector of Trademarks, Industrial Designs and Geographical IndicationsSector of Trademarks, Industrial Designs and Geographical Indications

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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications

Table of Contents

1. Introduction2. The Madrid System3. The Hague System4. Conclusions

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(1) Introduction

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International Systems

• Trademarks are distinctive signs, used to differentiate between identical or similar goods and services offered by different producers or services providers

• Industrial designs, also referred to simply as designs, concern the ornamental or aesthetic aspects of products

• Both are a type of industrial property, protected by intellectual property rights

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International Systems

• The WIPO-administered Madrid System for the International Registration of Marks offers a route to trademark protection in multiple countries by filing a single application

• Similarly, the WIPO-administered Hague System for the International Registration of Industrial Designs facilitates industrial designs protection in multiple countries by filing a single application

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(2) The Madrid System

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One System – Two Treaties

Madrid Agreement(adopted in 1891 and in force since

1893)

Madrid Protocol (adopted in 1989 and in force since

1996)

Common Regulations (adopted in 1996)

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Objectives of the System

• International Registration of Trademarks

• Simplified access to foreign markets

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National Route(with national Offices)

• different procedures

• different languages

• fees paid in local currency

• recording of changes:several operations

• (usually) througha 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 compulsoryUsually when there is a refusal

Alternative to the National Route

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Effects

• Simpler, faster and very much affordable

• Simplified registration in one country with the possibility of many designations

• Simplified management of a trademark portfolio

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Registration and Administration

Registration and Administration of Trademarks in 81 Contracting Parties – through a single procedure– with a single administration– in a single language

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Closed System

• Attachment necessary– establishment (real and effective)– domicile– nationality

• Office of Origin

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The Madrid System Procedure

• Role of the National Office

• Language

• Formal examination

• Registration

• Notification and publication

• Refusal (or not) by designated Contracting Parties

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Bundle of National Rights

• National (designated) Offices determine:– substantive conditions of protection

– applicable procedure if refusal

– scope of protection

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Central Administration

• Subsequent Designations• Assignments• Changes in Names and Addresses• Limitation, renunciation, cancellation• Renewal

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Basis of the International Application

• National registration (A)• National registration or application (P)• Language: French (A) - French, English or

Spanish (P)

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Refusal of Protection

• 12 months (A)

• 12 months or 18 months (P) - or more in the case of an opposition

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Fees

• A Fee Calculator is available at WIPO Website

• In 2006, applicants paid on average of 3,433 CHF for an international registration

• 55% or international registrations are less than 3,000 CHF

• 80% of registrations were less than 5,000 CHF

• Average of 11.5 designations per each registration

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Contracting Parties

• States (A)

• States and certain Intergovernmental Organizations (P)

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To Sum Up

AGREEMENT PROTOCOLE

Accession States States plus Int. Organizations

Precondition Basic registration Basic application or registration

Languages French English, French and Spanish

Fees Supplementary and complementary

Possibility of individual fees

Refusal time 12 months 18 months or +

Dependency 5 years 5 years + transformation

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Madrid Union (81 Members)

Agreement only: 7Protocol only: 24Agreement & Protocol: 50

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Recent Accessions: An Overview

• Viet Nam (to the Protocol): July 11, 2006• Botswana (to the Protocol): December 5, 2006• Uzbekistan (to the Protocol): December 27, 2006• Azerbaijan (to the Protocol): April 15, 2007• San Marino (to the Protocol): September 12, 2007• Oman (to the Protocol): October 16, 2007

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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%)

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International Trademarks in force

• Some 471.325 registrations in force

• Over 5 million active designations

• More than 159,000 different trademark owners

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Registration by Category of Right-Holder by December 31, 2006

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Top Filer Members in 2006

Major filer countries in 2006 (shares within total filings in 2006 and growth rates as compared to 2005)

Country # Filing Share

Germany 6,552 18 %

France 3,896 10.7 %

USA 3,148 8.6 %

Italy 3,086 8.5 %

Benelux 2,784 7.6 %

Switzerland 2,468 6.6%

UK 1,489 4.1 %

China 1,328 3.6 %

Spain 1,215 3.3 %

Austria 1,197 3.3 %

Australia 1,100 3.0 %

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International Registrations

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Renewals 2003 - 2006

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Number of Designations (2006)

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Fees per International Registration

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International Applications 1996 - 2006

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Top filer Members in 2006

Top Filer (Percentage)

0%

5%

10%

15%

20%

25%

Ger

man

y

Fra

nce

Uni

ted

Sta

tes

Ital

y

Ben

elux

Eur

opea

nC

omm

unity

Sw

itzer

land

Chi

na

Uni

ted

Kin

gdom

Aus

tral

ia

Aus

tria

Japa

n

Oth

ers

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Some significant filing increases

in 2006 (as compared to 2005)

# Applications Growth

EU 2,523 65.5 %

Italy 3,086 25.5 %

Australia 1,100 29.1 %

Spain 1.215 17.2 %

USA 3.148 10.5 %

Other than the top 20

3,260 11.3 %

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Most Designated Contracting Parties in registrations + Subsequent Designations in

2006 Vs 2005Country # Designations Growth

China 15,801 16.4 %

Russia 14,432 12.7%

Switzerland 14,260 8.1%

USA 13,994 18.0%

Japan 11,844 17.3%

EU 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%

France 7,495 - 12.7%

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Belarus and the Madrid System

• Agreement: December 25, 1991• Protocol: January 18, 2002• International registrations in 2007: 34• Subsequent designations in 2007: 7• Individual designations in 2007: 3736• Individual renewals in 2007: 2072• Subsequent designations in 2007: 631

September 2007

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International Registrations from Belarus

0

5

10

15

20

25

30

35

2002 2003 2004 2005 2006 2007

September 2007

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Subsequent Designations from Belarus

0

5

10

15

20

25

30

35

2002 2003 2004 2005 2006 2007

September 2007

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Designations of Belarus

0

500

1000

1500

2000

2500

3000

3500

4000

4500

5000

2002 2003 2004 2005 2006 2007

September 2007

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Designations of Belarus in Renewals

0

500

1000

1500

2000

2500

2002 2003 2004 2005 2006 2007

September 2007

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Belarus in Subsequent Designations

0

100

200

300

400

500

600

700

800

900

2002 2003 2004 2005 2006 2007

September 2007

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The Madrid System Website

• The Madrid System• Filing Information• Madrid System Information Notices• Fees Calculator• Guides and Information Material• The WIPO Gazette of International Marks• Annual Statistics• Contacts

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(3) The Hague System

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The Hague Agreement

The Hague Agreement is a procedural filing system for the international registration and protection of industrial designs, administered by the International Bureau of WIPO in Geneva (Switzerland)

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Registration and management of Industrial Designs in up to 47 Contracting Parties by:

• A single procedure• With a single administration process (WIPO)• In one language (English or French)• On payment of a fee in a single currency

(CHF)

Objectives

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The Hague System works on a purely procedural way. It does not determine:

• The conditions for protecting a design• The procedure to be applied in order to

decide whether a design may be protected• The rights which result from protection

These issues are governed by the national law of the designated countries

Protection by Domestic Law

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The Hague Agreement was adopted in 1925 and entered into force in June 1928. It was by then revised by 3 Acts, namely:

• The 1934 Act (London Act) in force in 1939• The 1960 Act (Hague Act) in force in 1987• The 1999 Act (Geneva Act) in force in 2004

Common Regulations (latest revision September 2007) and the Administrative Instructions

Components

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The Hague Union Members (47)

24 Geneva Act (1999)21 Hague Act (1960) 2 London Act (1934)

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Geneva Act: (24)Albania, Armenia, Botswana, Croatia, Egypt, Estonia, European Community, France, Georgia, Hungary, Iceland, Kyrgyzstan, Latvia, Liechtenstein, Namibia, Republic of Moldova, Romania, Singapore, Slovenia, Spain, Switzerland, The FYR of Macedonia, Turkey, Ukraine

Hague Act (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 (2)Indonesia, Tunisia

The Hague Union Members (47)

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• This is a closed system• Connection required between applicant and a

CP via establishment, domicile, habitual residence or nationality

• Filing either directly with WIPO or indirectly via the CP from which entitlement is derived

• Without the required entitlement in a CP it is not possible to file an international application under the Hague Agreement

Who May Use the Hague System

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• No prior national application or registration is required to fill an international application

• Filing directly with WIPO in either English or French

• It must contain a reproduction of the industrial designs concerned, along with the designation of the CPs

• It may include up to 100 designs (same class of Locarno)

The International Application

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• The International Application is normally sent directly to WIPO by the applicant

• WIPO checks the formal requirements• WIPO does not appraise in any way the novelty

of the designs and therefore it is not entitled to reject an international application on this ground

• An application complying with the prescribed formal requirements is registered and published by the International Bureau in the International Designs Bulletin

• The holder is notified a certificate of international registration

Formal Examination by WIPO

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• Each Office must identify in the Bulletin the registrations in which it is designated in order to proceed with the substantive examination provided by its domestic legislation

• An Office may refuse protection, in its territory, to an industrial design subject to international registration if it does not fulfil the conditions of protection at the national level

• 6 or 12 months refusal period (1960 - 1999)

Examination by Designated Office

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• Same effect as a national application until the expiry of the refusal period of pending the outcome of the refusal procedure

• If no refusal, effect as a national registration from the date of its filing

Effects of the International Registration

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• 5 years initial term from the date of the international registration

• Renewal up to 10 years (5+5) under the 1960 Act and up to 15 years (5+5+5) under the 1999 Act

• If the law of a designated CP provides for a longer duration (for instance 25 years), the IR can be renewed up to the same maximum duration

International Registration Management

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SCHEDULE OF FEES (as in force on January 1, 2008)

I. International Applications Governed Exclusively or Partly by the 1960 Act or by the

1999 Act Swiss francs

1. Basic fee 1.1 For one design 397 1.2 For each additional design included in the

same international application 19 2. Publication fee

2.1 For each reproduction to be published 17 2.2 For each page, in addition to the first,

on which one or more reproductions are shown (where the reproductions are submitted on paper) 150

3. Additional fee where the description exceeds

100 words per word exceeding 100 words 2

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4. Standard designation fee 4.1 Where level one applies:

4.1.1 For one design 42 4.1.2 For each additional design included in

the same international application 2 4.2 Where level two applies:

4.2.1 For one design 60 4.2.2 For each additional design included in

the same international application 20 4.3 Where level three applies:

4.3.1 For one design 90 4.3.2 For each additional design included in the same international application 50

5. Individual designation fee (the amount of the individual designation fee is fixed by each Contracting Party concerned)

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To Sum Up

1960 Act 1999 Act

Accession States States plus Int. Organizations

Languages French English, French

Refusal time 6 months 12 months option

Additional Requirement

Not possible Identity of creator, brief description, claim

Min. duration 10 years 15 years

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International Registrations in 2006by Contracting Party of the Owner

Sw itzerland35.64%

Germany24.87%

Turkey2.36%

Italy4.03%

Benelux9.11%

Other Countries4.47%France

19.53%

Registrations by Country in 2006

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Most Designated Countries in 2006

1334

895

600

482

84

456

0 200 400 600 800 1000 1200 1400

Spain

Italy

Benelux

Switzerland

France

Germany

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Registrations as of December, 31 2006

• 28,955 international registrations (from 9,349 different holders)

• 292,389 designations• 1,260,164 designs

During the year 2006

• International registrations: 1,143• Average number of designs: 5• Renewals: 3,889• Average fee: 1,761 CHF• All fees: 96% are below 5,000 CHF

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Classes of Goods 2006

10 Clocks and watches and other measuring instruments, checking and signalling instruments

22%

9 Packages and containers for the transport or handling of goods

11%

6 Furnishing 8%

7 Household goods, not elsewhere specified 6%

11 Articles of adornment 6%

23 Fluid distribution equipment, sanitary, heating, ventilation and air-conditioning equipment, solid fuel

5%

14 Recording, communication or information retrieval equipment 5%

26 Lighting apparatus 4%

19 Stationery and office equipment, artists' and teaching materials

4%

12 Means of transport or hoisting 4%

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Some Top Users

Swatch (CH); DaimlerChrysler (DE); Interior's (FR); Sony Overseas (CH); Unilever (NL); BMW (DE); Hermes Sellier (FR); SEB (FR); Sara Lee (NL); Phillips Electronics (NL); Porsche (DE); Braun (DE); Nokia (DE); Hansgrohe (DE); Tefal (FR); Société Elmar Wolf (FR); WTG Westfälische Textil-Ges. Klingenthal & Co. (DE); Seb (FR); Volkswagen (DE); Siemens (DE); Swarovski (LI); Interior’s (FR); Fiat (IT); Calor (FR); Leifheit (DE); Koziol Geschenkartikel (DE); Richmont (CH); Fonkel Meublemarketing (NL); Mainetti (DE); Guy Degrenne (FR); Cartier (FR); Salomon (FR); Grohe Water Technology (DE); Societe Des Verres des Verres de Securite (FR); Vitra Patente (CH); Grosfillex Sarl Arbent Oyonnax (FR); ITM Enterprises (FR); Chaumet International (FR); Henkel Kommanditgesellschaft auf Aktien Henkelstrasse (DE); Chopard International (CH); Goodyear Tire & Rubber Company (DE); WMF (DE); Groupe Bercher (FR).

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Why Protecting Designs in the EC

• 70% Prevent copying• 23.4% Company policy• 20.3% Get ahead competition• 10.1% Prestige• 6.5%Prevent people think “I copy”• 5.8%Other

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Legal Texts and Guide

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The Hague System Website

• The Hague System• Filing Information• Fees Calculator• Guides and Information Material• The International Designs Bulletin• The Hague Express Database• Annual Statistics• Contacts

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(4) Conclusions

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Conclusions for both Systems

• Administrative efficiency and flexibility• Portfolio management (savings on costs) • Business asset increasing commercial

value of a company and its products• Registered design may be licensed (or

sold)• Encourages fair competition and honest

trade practices

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Conclusions for both Systems

• International protection with a minimum of formalities and expense

• The right to prevent unauthorized copying or imitation by third parties

• Exclude all others making, offering, importing, exporting or selling product with the design

• Overall management by WIPO• Simplified access to new markets• Saving on costs

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• Making a Mark

(Trademarks)• Looking Good

(Designs)• Inventing the

Future • (Patents)• Creative Expression

(Copyright)

IP for Business Seriesby the SMEs Division of WIPO

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Useful Internet Links at WIPO

• WIPO Administered Treaties• The SMEs Division of WIPO• Resources for Business• Calendar of Meetings• WIPO Electronic Bookshop• E-Newsletters

World Intellectual

Property Organization

Many thanks!

[email protected]

Documents

World Intellectual Property Organization THE INTERNATIONAL REGISTRATION SYSTEMS National Seminar for Patent Attorneys Minsk, October 24 and 25, 2007 Federico