The Strategic Use for SMEs of the Madrid

The Strategic Use for SME’s of the Madrid and Hague Systems World. Betty Berendson, Intellectual. Senior Information Officer Property Organization. Information and Promotion Division, Sector of Trademarks, Industrial Designs and Geographical Indications

THE MADRID SYSTEM Objectives and Basic Features World Intellectual Property Organization

Objectives of the System • International Registration of Trademarks • Simplified access to foreign markets

Characteristics • Economical • Fast • Simple

The Protection Abroad An Alternative to the National Route (with national Offices) VS International Route (with Office of origin WIPO) • different procedures • one procedure • one language • different languages • fees paid in Swiss francs only • fees paid in local currency • recording of changes: several operations • recording of changes: one operation • local agent not compulsory Usually when there is a refusal

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

Madrid Union (80 Members) Agreement only 8 Protocol only 23 Agreement and Protocol 49 (Including EC)

International trademarks in force • some 471. 325 registrations in force • over 5 million active designations • more than 159, 000 different trademark owners

Registrations by Category of Right-Holder by end of December 2006 Marks by holder right- 1 -2 Rightholders (159, 075) 3 -10 11 -100 101 -500 > 500 Total Number of rightholders 128, 080 80. 52% 25, 579 16. 8% 5, 114 3. 21% 280 0. 18% 22 0. 01% 159, 075 100, 00%

Trademarks Worldwide • Over 2, 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 Members in 2006

Top filer Members in 2006 # filings Germany France United States Italy Benelux European Community Switzerland United Kingdom China Spain Austria Australia 6, 552 3, 896 3, 148 3, 086 2, 784 2, 523 2, 468 1, 489 1, 328 1, 215 1, 197 1, 100 share 18. 0% 10. 7% 8. 6% 8. 5% 7. 6% 6. 8% 4. 1% 3. 6% 3. 3% 3. 0%

Some significant filing increases in 2006 (as compared to 2005)

Some significant filing increases in 2006 (as compared to 2005) # applications 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% growth

Most designated Contracting Parties in registrations + subsequent designations in 2006 (as compared to 2005)

Most designated Contracting Parties in registrations + subsequent designations in 2006 (as compared to 2005) # designations China Russian Federation Switzerland United States of America Japan European Community Australia Norway Ukraine Turkey Rep of Korea Germany Romania 15, 801 14, 432 14, 260 13, 994 11, 844 10, 640 9, 115 9, 102 9, 057 8, 958 8, 334 8, 147 8, 103 growth 16. 4% 12. 7% 8. 1% 18. 0% 17. 3% 68. 7% 14. 1% 7. 8% 9. 5% 4. 2% 16. 4% 11. 0% 4. 4%

Conclusion Madrid System A useful economic tool to obtain and maintain protection of marks!

THE HAGUE SYSTEM Objectives and Basic Features World Intellectual Property Organization

Purpose of the Hague Agreement • 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 Agreement – London Act (1934) – Hague Act (1960) – Geneva Act (1999) • Entered into force on 23 Dec 2003 • Operational on 1 Apr 2004 Hague System Concerning the International Registration of Industrial Designs • Common Regulations (1996) – Last revised: 1 Apr 2004 • Admin. Instructions (2002) – Last revised: 1 Apr 2004

As of April 2007 Hague Union Members (46) (by most recent act) www. wipo. int/hague/en/members Geneva Act (1999): 22 Albania, 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): 3 Indonesia, Tunisia Holy See (denounced as of August, 2007)

As of April 2007 Hague Union Members (46) (by most recent act) By Most Recent Act 20 Geneva Act (1999) 21 Hague Act (1960) 3 London Act (1934)

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 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 Procedure Indirect Filing International Application OFFICE OF CONTRACTING PARTY OF ENTITLEMENT self-designation Direct Filing OFFICE OF DESIGNATED CONTRACTING PARTY INTERNATIONAL BUREAU OFFICE OF DESIGNATED CONTRACTING PARTY

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 representative before IB [DM/9] of • 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 Route • • many Offices for filing many languages many currencies many registrations many renewals many modifications foreign attorney or agent first needed at filing International Route (Hague System) • • one Office for filing one language one currency one int. registration one renewal one modification foreign attorney or agent first needed if refused

International Registrations in force as of December 31, 2006 • 27, 927 international registrations • 292, 389 designations • 1, 260, 164 designs

International Registrations 2006

Thank you! betty. berendson@wipo. int