Introduction to the Madrid system Emily Erskine Information

Introduction to the Madrid system Emily Erskine Information and Promotion Division Brands and Designs Sector The World Intellectual Property Organization International Center of the Lomonosov Moscow State University, Geneva, May 31, 2012

2 Course Outline Overview of the Madrid system Options for the Registration of Marks Procedural Summary Phase I – Office of Origin Phase II – International Bureau Phase III – Office of the Designated Contracting Party Management of the International Registration Practical Analysis of the Madrid system’s Operations Users’ Views – Video Case Studies

3 Overview of the Madrid system Introduction Objectives Legal Background and Framework Geographical Scope Basic Features Advantages Statistics What’s New

4 Madrid system: introduction International Registration of marks administered by the International Bureau of WIPO: Headquarters in Geneva, Switzerland Offers filing, registration and management of trademarks under 87 jurisdictions worldwide (http: //www. wipo. int/madrid/en/members/) More than 1, 000 Marks registered in 120 Years A legal tool – grant and enforcement of rights A business tool – access to international trade A marketing tool - branding An administrative tool – facilitates and centralizes formalities http: //www. wipo. int/multimedia/en/madrid-

Objectives Obtaining and maintaining protection of marks in several countries through a single international application Simple, flexible, user-friendly, time and cost -effective option to access a wide range of export markets through one central filing, registration, maintenance and management mechanism An option to the traditional national or regional route 5

6 One System - Two Treaties Madrid Agreement concerning the International Registration of Marks (1891) Protocol Relating to the Madrid Agreement (1989)

7 Differences between the Agreement and the Protocol Agreement Protocol Accession States or intergovernmental organizations Condition Basic registration Basic application or Basic registration Entitlement Cascade (Establishment, Domicile, Nationality) No cascade Language English, French or Spanish Standard fees or individual fees Time limit for refusal 12 months 12, 18 months or + Dependence 5 years, transformation Renewal 20 years 10 years Features Fees

8 Legal Background Paris Convention Pioneer Treaty Madrid Agreement Madrid Protocol 1883 1891 1989

9 Legal Framework I Madrid Agreement (1891) Madrid Protocol (1989) Common Regulations (1996) Administrative Instructions (2002) Nice Agreement (Classification 1957) Vienna Agreement (Classification 1973) National/Regional Laws & Regulations of Contracting Parties (http: //www. wipo. int/wipolex/en/)

10 Legal Framework II Madrid Treaties and Regulations Basic principles and mechanism of the Madrid system formal conditions filing procedures centralized registration and management Domestic Laws and Regulations of Contracting Parties Define conditions to grant trademark protection Establish procedures for trademark protection Determine rights that result from protection

11 Geographical Scope 1 Agreement only 30 Protocol only (including EU) 56 Agreement and Protocol 87 Members

12 Basic Features 1 – Application Entitlement (Articles 2 & 3, Paris Convention) Basic application or registration Exclusively through the Office of Origin Form: MM 1 (A) or MM 2 (P) or MM 3 (AP) Languages: English/French/Spanish Classification: Nice Classification Fees Designations (between 1 and 87 options)

13 Precondition Madrid Agreement and Madrid Protocol Articles 2 & 3 - Paris Convention Applicant Establishment Domicile Nationality Basic Registration Basic Application

14 Connections Member State or Organization Applicant Member State or Organization of Office of Origin 1 Establishment Domicile Nationality Office of Origin 2 Common Treaty Designated Contracting Party

15 Basic Features 2 - Registration Possibility of Refusal by designated Contracting Party (deadline) Statement of Grant of protection Extension to new Contracting Parties Changes/Modifications 5 year dependency period Central attack – Ceasing of effects (withdrawal, lapse, renunciation, final decision of rejection, cancellation or invalidation) Transformation of the international registration into national or regional applications 10 years term of protection renewable every 10 years

Synopsis: Advantages for Trademark Owners A TM owner can register his mark in all the countries party to the system by filing: a single international application in one language (English, French or Spanish) subject to one set of fees (one currency) no Associate fees required at filing Thereafter, the international registration can be maintained and renewed through a single procedure subsequent changes to the International Register extension to more countries The Madrid system therefore reduces the administrative burden and costs involved in registering and maintaining marks in several countries

17 Statistics http: //www. wipo. int/madrid/en/statistics/

International Registrations in Force on December 31, 2011 Registrations in force: 540, 089 Containing some 5 540 000 active designations Belonging to 178, 507 different right-holders (many of them SMEs) 40, 711 international registrations recorded by the International Bureau

19 Comparison - Statistics 2010 - 2011 Jan. – Dec. 2010 2011 Growth International Applications 39, 687 42, 270 6. 5% International Registrations 37, 533 40. 711 8. 5% Subsequent Designations 12, 112 13, 668 12. 8% Renewals 21, 949 21, 754 (-195) -0. 9%

20 Major Filing Contracting Parties in 2011 European Union 5859 Germany 5000 United States of America 4791 France 3804 Switzerland 2933 Italy 2306 China 2149 Benelux 1920 Russian Federation 1652 Japan 1538

21 Most Designated Contracting Parties – Registration and Post Registration China 18724 European Union 16344 United States of America 15890 Russian Federation 15691 Switzerland 13695 Japan 12211 Australia 10453 Republic of Korea 9821 Turkey 9277 Ukraine 8903

22 Most Popular Classes in International Registrations in 2011 Class 9 Covers e. g. computer hardware & software and other electronic apparatus of a scientific nature 9. 286 Class 35 Services such as « office functions, advertising & business management » 7. 596 Class 42 Covers services provided by e. g. scientific, industrial or technological engineers and computer specialists 5. 505 Class 25 Covers clothing, footwear and headgear 5. 411 Class 41 Covers services in the area of education, training, entertainment, sporting and cultural activities 4. 687

23 The Oldest Valid International Mark Originally registered in Switzerland in 1889 then internationally in 1893

24 The One Million Mark

25

26 Recent Development in 2011 Mandatory Statements of Grant of Protection as of January 1, 2011 Two anniversaries in April 2011: 120 years of the Madrid system (April 14, 1891) 15 years of operations of the Madrid Protocol (April 1, 1996)

Recent Accessions Recent accessions to the Madrid Protocol April 25, 2012: Philippines May 29, 2012: Columbia March 2012 Mexico – Approval by Senate 2011: Tajikistan Future accessions – under consideration Costa Rica and Dominican Republic ASEAN countries by 2015 India Barbados, Jamaica and Trinidad & Tobago Madrid Malta Protocol New Zealand South Africa ARIPO 27

Some Information Products and Services 28 3 New Web-based Communication Services: http: //www. wipo. int/madrid/en/services Madrid Real-time Status (MRS) – Status of applications Madrid Electronic Alert (MEA) – Status of registrations Madrid Portfolio Manager (MPM) – Management of trademark portfolio The Madrid Highlights – First Edition – March 2012 Legal texts, Guide to the International Registration of Marks, Information Notices, Forms, List of Contracting Parties Fee Calculator: Cost Estimate (Various Operations) Madrid Simulator: International Application Simulator Madrid system Goods and Services Manager WIPO Gazette ROMARIN: on-line search database http: //www. wipo. int/madrid/en/

29 Options for the Registration of Marks

3 Ways to Register a Trademark The National Route The Regional Route African Regional Industrial Property Office (ARIPO) Office for the Harmonization of the Internal Market (OHIM) Organisation Africaine de la Propriété Intellectuelle (OAPI) The International Route - Madrid System Benelux Office for Intellectual Property (BOIP)

31 The National Route vs. the Madrid Route Several offices for filing Several application forms Several languages Several currencies Several registrations Several renewals Several modifications Foreign attorney needed from filing One Office for filing One single application form One language (E/F/S) One currency (CHF) One international registration One renewal One modification Foreign attorney first needed in case of refusal

32 Procedural Summary – Madrid system International Registration Procedure Phase I – Office of Origin Phase II – International Bureau Phase III – Office of the Designated Contracting Party Management of the International Registration Case Studies: Management of Internaitonal Registration Subsequent Designation Transfer of rights Refusals – Responding through Request for Limitation of Goods and Services Licenses Change of Representative

33 International Registration Procedure International Application OFFICE OF ORIGIN INTERNATIONAL BUREAU OFFICES OF DESIGNATED CONTRACTING PARTIES Certifies entitlement/basic mark and forwards the application to the IB Formal examination Records in the International Register Publishes in the International Gazette Notifies designated Contracting Parties Substantive Examination – Time Limit Grant of Protection Provisional Refusal

34 Phase I - Examination Procedure (OO) Reception of the International application – Applicant › Office of Origin Minimum filing requirements checked Receipt and file reference number Data entry (available means) Creation of application files Electronic or paper Examination - Goods and services (basic) Regular – IB Irregular - Applicant

35 Phase II – Examination Procedure 1 (IB) Reception Scanning Data Entry Examination

36 Examination Procedure 2 (IB) No Irregularities Examination (4 mandatory elements) Vienna Classification Designated Contracting Parties Applicant Nice Classification Finance Processing Translation Registration – International Register – Notification – Publication

Examination Procedure 3 (IB) : Irregularities No correction w/in time limits Correction w/in time limits Registered Abandoned Registered 37

Phase III - Examination Procedure (Designated CP) Grant of Protection Provisional Refusal Confirmation of Refusal Substantive Examination Statement of Grant of Protection Registered 38

Grounds for Refusals Absolute Grounds devoid of any distinctive character generic descriptive: indicate the kind, quality, quantity, purpose, value, place of origin of goods service marks that are likely to deceive consumers considered to be contrary to public order or morality ( «baby girl» 4 smoking items) contrary to honest practices in industrial or commercial matters

Grounds for Refusals – Absolute Grounds Distinctive Not Distinctive Generic Descriptive Safari 4 Jewellery 1818 DZX for Cosmetics « Football World Cup 2012 » 4 Sports Events «Phone» 4 Mobile Phone «Crispy» 4 chips Apple 4 Computers or Cell Phones «Sweets» 4 Confectionery

Relative Grounds for Refusals Where there exists a likelihood of confusion with an earlier trade mark and when an identical/similar trade mark is to be used on goods or services which are identical/similar to the earlier registered mark Other issues such as the nature of the goods or services, their methods of use, end users and whether they are in competition with each other are considered when assessing similarity EARLIER MARK REGIONAL APPLICATION COSMOPOLITAN (MAGAZINES) (COSMETICS)

Refusals – Procedures to Responses Governed by national law – vary from country to country Strategies/procedures for responding also vary accordingly – specificities Likely first step Decide early on strategy Appoint local representative – not mandatory (advisable) Obtain advice

43 Roles Case Studies

44 The Role of the Office of Origin I International Application Concordance between the basic mark and the international mark Applicant Goods and Services Color Combination and claim Certification and signature Presentation – postal order, eletronic means, fax transmission (Article 1(2); Article 2(2)) Guidance Irregularities Fees Article 3(1) Rules 9(1), 9(5)(d) and 11(7)

The Role of the Office of Origin II International Registration Notification to the IB of cancellation, refusal, withdrawal or ceasing of effects of basic mark within the dependency period Transmission of other requests to the IB, i. e. , TR – EX Notify IB of Changes in the Basic Mark Request for Cancellation of the International Registration

46 The Role of the International Bureau International Application/Registration Procedural Counterchecks formalities International Registration Number and Date Records in the International Register Notifies designated Contracting Parties Informs Office of Origin Sends a Certificate to holder Publishes in the Gazette Centralized Management Rules 9, 11, 12, 13 and 15

47 International Registration Date = date the OO certifies having received application (unchanged) 2 months January 2, 2012 Reception by OO March 2, 2012 Reception by IB

48 International Registration Date = date IB receives complete/corrected application (modified) Beyond 2 month period 2 months March 1, 2012 Reception by OO May 1, 2012 Reception by IB May 14, 2012 Reception by IB

49 Effects of the International Registration = National Application/Registration A National Application until the expiry of the time limit to issue a refusal A National Registration when the time limit to issue a refusal expires A National Registration in case: No Refusal within time limit Refusal not regarded as such Refusal Withdrawn Only concern designated CPs - territorial (Article 4)

The Role of the Office of the Designated Contracting Party I Substantive Examination of the International Registration Decision Grant of Protection Refusal Opposition Final Decision Substantive Examination of Subsequent designations

The Role of the Office of the Designated Contracting Party II Notify the International Bureau Mandatory Statement of Grant of Protection (2011) Provisional Refusal within time limit Confirmation of Refusal or Grant of Protection Further Decision in case of an appeal Declaration that a limitation has no effect Replacement of a national or regional registration The effects of an IR have been invalidated Transformation of IR into national/regional application Other matters

52 Management of an International Registration I Subsequent Designation Change in Ownership Change in name and/or address of Holder Change in name and/or address of Representative Limitation (some G&S – some/all CPs) Cancellation of G&S (some/all G&S – all CPs) Renunciation (all G&S – some CPs) Licenses Renewal Cancellation of the international registration

53 Management of an International Registration II Dependence Ceasing of Effects Independence

Ceasing of Effects If a basic mark “ceases to have effect” in whole or in part within 5 years of date of IR, Office of Origin notifies IB, pursuant to Rule 22, and requests partial or total cancellation of IR International Bureau cancels IR to the extent requested by Office of Origin. IB notifies all designated Contracting Parties of partial or total cancellation of IR, records and publishes the information No particular action required; some designated Contracting Parties may update their databases

Dependence - Independence What happens if the basic application or registration is refused, withdrawn or ceases to have effect? before the expiry of 5 years international registration still depends on national mark (Art. 6(3)): risk of ‘central attack’ 5 years after the international registration no effect, international registration becomes independent (Art. 6(2))’

Practical Analysis of the Madrid system’s Operations Users’ Views – Video Shiseido Treasury Wine Estate Case Studies

57 Qualification: Case Studies

58 Case Study (1) Algeria (A) Office of Origin? France (AP) Ireland (P)

59 Case Study (2) European Community (P) Algerian national (A) China (AP) United States (P)

60 Case Study (3) Achieving Trademark rights in the European Community and the US for an Asian company Applicant = Indian Company Entitlement = establishment in Mongolia Designations = EM, US, + any others

Case Study 4 – RF/FD/LI Holder of International Registration – Shiseido Office of Origin – Italy (1977)– Entitlement Class 21 – Toilet utensils; cosmetic utensils. Designations: ES, NA, KR, US, AT, CN, GH Refusals from Korea and US only Terms too vague (LI – proposed) LI – Solution from Holder Entitement Designations G&S RF LI FD Toilet utensils, namely, toilet sponges, toilet brushes and toilet brush holders; cosmetic utensils, namely, cosmetic brushes and cosmetic removing paper Final Decision – Limitation (above)

Case Study 6 IR May 26, 1985 RF Designations: 20 Contracting Parties FD (V) Classes: 7 classes Refusal – 1 only (PL) RF = all the goods and services FD = Reversal – Acceptance for all the goods and services

Case Study 7 EN/IR – 1993 – 10 Classes EX (1 CP/ALL G&S) TR – 1999 (ALL CPs/3 G&S) TR – 2000 – (ALL CPs/ALL G&S) RE – 2003 (1 CP) EX – (3 CPs/diff. G&S) RE – 4 CPs LI – (ALL CPs & ALL G&S EX (2 CPs/1 Class

Case Study 7 Cont’d IRN 73689724 A EN – 1993 – Designations: AT BG BX CH Holder: Platform Ltd. , USA G&S: 03 09 14 16 18 20 24 25 27 28 Extension to BY – all G&S Transfer to Plastic. Form Co. USA + Change of Rep. - 1999 Designations - all G&S – class 3 only Transfer to Casandra & Co. Ltd. Spain – 2000 Designations – All G&S – All Renewal in 2003 – for CH only

Case Study 7 Cont’d Plastic. Form Co. USA EX – GB, GR, TR + LI as FF GB – class 9, 14, 16 GR – class 14, 14 TR – class 03 09 14 16 18 20 24 25 27 28 Renewal for BY, GB, GR, TR Plastic. Form Co. USA – Licensed for all designations and all G&S to Société de Création des Puits, SARL, France Further Extension to FI, SE – Class 27 only

Case Study 8 - Ceasing of Effects IR – February 2000 – OO/SE Goods and Services: Class 35 Total Ceasing of Effects: the basic application number XXXXXX has ceased to have effect as from 20. 02. 2004. This decision affects all goods and services IR – September 2000 – OO/DE Goods and Services : Classes 9, 16, 38 and 42 Partial Ceasing of Effects: the basic registration number 399 77 318. 5/38 has been renounced in respect of certain goods and services. The renunciation was declared on 14/01/2004 Classes 9, 16, 38 and 42 are modified (limited) Class 35 is cancelled

Summary The Madrid system Advantages Objectives Roles/Procedures (IB, CP, OO) Dependence/Independence Renewal Legal Background Basic Application/Registration Gazette

68