Recent Developments in the Field of Trademarks and

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 World Intellectual Property Organization Damascus, May 28 and 29, 2008 Päivi 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

Part I: Recent Developments in the Field of Trademarks World Intellectual Property Organization

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

Singapore Treaty: main features 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

Singapore Treaty: main features 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

Singapore Treaty: main features 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 or implement electronic filing systems - special provisions: to provide developing and leastdeveloped 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

Part II: Madrid System for the International Registration of Marks World Intellectual Property Organization

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 End of 2007: • significantly lower costs than 483, 210 international trademarks in force = through national route (10 to 20 equivalent to some times less) 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 many languages • fees in many currencies • foreign agents • many registrations • many renewals • changes recorded via each national office • file in one Office of origin • file in one language • fees in one currency • foreign agent only if refused • one international registration • one renewal • changes recorded via the International Bureau

. . . Madrid System in summary: Administrative efficiency Flexibility World Intellectual Property Organization Cost effectiveness

Accessions since January 2004 • • • • Azerbaijan Bahrain Botswana Croatia European Community Kyrgyzstan Madagascar Montenegro Namibia Oman San Marino Syrian Arab Republic (August 5, 2004) Uzbekistan (P) (P) (A+P) (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

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

Madrid Union - 82 Members Madrid System on May 1, 2008 Agreement only 7 Protocol only 26 (Including EC) Agreement and Protocol 49

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 Applications 2004 -2007 + 9. 5% + 23. 4% + 13. 9% + 8. 6%

Major User Contracting Parties Madrid System applications filed in 2007

Madrid System Most designated Contracting Parties in applications and subsequent designations

Filing trends in 2007: • 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

Filing trends in 2007: Amounts of Fees paid per International Registration

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

Basic Procedure: Precondition: basic application or basic registration l tiona na Inter cation li App OFFICE OF ORIGIN INTERNATIONAL BUREAU Certifies that particulars in international application = those in basic application or basic registration Checks formalities Records in the International Register Publishes in the International Gazette Notifies designated Contracting Parties Substantive Examination OFFICE OF refusal DESIGNATED within set CONTRACTING time limits PARTY refusal no refusal = effect of a national 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 only in 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 Refusal by 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 MM 12 • 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: Who may become the new owner? • 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

Change in Ownership: Presentation to the International Bureau Who may present the request? (Rule 25(1)(b), Form MM 5) directly transferor (recorded holder) (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) transferee (new owner) through the Office of the Contracting Party of the holder or of the new owner (signed by the Office and/or holder)

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

Interface with the European Community Trade Mark (CTM) World Intellectual Property Organization

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

CTM Interface: Overview 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 domicile on EC territory establishment on EC territory

Designation of Contracting Parties The international application is governed by the Protocol form MM 2 (fr/en/es) P P European Community P P Norway P AP Syrian Arab Republic A Bosnia and Herzegovina

CTM Interface: Overview 2) Designation of the European Community (EC) - possible in Contracting Parties to the Madrid Protocol

Designation of the EC in the application (forms MM 2 or MM 3) subsequently (form MM 4) • indication of a second language before OHIM • seniority claims • opting back: subsequent designation resulting from conversion

Indication of a second language before OHIM (Art. 115 CTMR) English Spanish German French Italian • opposition proceedings • revocation proceedings • invalidity proceedings

In Practice (Add form MM 17 to form MM 2, MM 3 or MM 4)

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

Two Ways of Opting Back: “opting out”: conversion under EC law AP Syrian Arab Republic P European Community “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 MM 16 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 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) 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

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 9 sexies • 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 9 sexies • 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 9 sexies • 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

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

01 -01 -2008 Protocol Members (5 to 75)

Agreement Members (46 to 56) 01 -01 -2008

A World Intellectual Property Organization P Repeal of the Safeguard clause

A World Intellectual Property Organization 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 18 ter(1)) - Proposed amendment of Rule 16 Proposed revised Rule 17 Proposed new Rule 18 bis Proposed new Rule 18 ter - Entry into force: transitional provision to be added in Rule 40(4)

Further Legal Developments of the Madrid System Proposed new Rule 18 ter(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 Lähdesmäki Senior Legal Officer International Registration Systems Legal Service paivi. lahdesmaki@wipo. int World Intellectual Property Organization