The Madrid System for the International Registration of

The Madrid System for the International Registration of Marks : Objectives and Principles международной регистрации знаков сегодня и ее будущее развитие Антонина Стоянова Antonina Stoyanova Senior Legal Officer International Registries of Madrid and Lisbon WIPO сотрудник Международного Реестра товарных знаков

1989 Russ Suchard et Cie Madrid Protocol 1970 1967 WIPO Convention 1960 1925 PCT BIRPI moves to Geneva Hague Agreement 1893 1891 1886 1883 BIRPI Madrid Agreement Berne Convention Paris Convention NOT Printed More than 100 years of Experience …

… More than a Million Trademarks Worldwide NOT Printed IRN 158 574 This Longine trademark is the oldest international trademark still in effect. Originally registered in Switzerland in 1889, then internationally in 1893.

Marking a Million The registration of the millionth mark by Austrian ecocompany IRN 1 000 NOT Printed

Objectives and Concept of the Madrid System

Objectives A simple, low-cost and effective system facilitating trademark protection in export markets through: • one central application and registration procedure ensuring effects in a number of territories bound by the system • one central procedure to maintain and manage an international registration with effects in all territories concerned

Going Global Accelerated geographic expansion more attractive as more trading partners join increased flexibility in targeting markets with respect to particular goods and services Increased use by existing as well as new Contracting Parties (developing as well as developed) by small, medium and large enterprises

Comparison between national and international route National (direct) route vs. Madrid (inter. ) route Different procedures Only one procedure Different languages One language 1 of 3 (E/F/S) Different fees in local currencies (exchange–rate implications) One set of fees in CH Management of IRs: Recording of changes (in each separate country a different procedure) One procedure in respect of all countries Representative required from outset Representative required only in case of refusal

Legal Framework and Geographical Scope

Legal Framework Madrid Agreement (1891) latest revised in 1979 Madrid Protocol (1989) latest revised in 2007 Common Regulations as in force from September 1, 2009 Administrative Instructions as in force from January 1, 2008 Law and Regulations of each Contracting Party See at http: //www. wipo. int/madrid/en/legal_texts/ http: //www. wipo. int/madrid/en/members/ipoffices_info. html

Madrid Union 2 Agreement only 29 Protocol only (including EU) 54 Agreement and Protocol 85 Members

Geographical Scope II 81 MEMBERS PARTY TO THE PROTOCOL Albania, Antigua and Barbuda, Armenia, Australia, Austria, Azerbaijan, Bahrain, Belarus, Belgium, Bhutan, Bosnia & Herzegovina, Botswana, Bulgaria, China, Croatia, Cuba, Cyprus, Czech Republic, Democratic People’s Republic of Korea, Denmark, Estonia, Egypt, European Union, Finland, France, Georgia, Ghana, Germany, Greece, Hungary, Iceland, Iran, Ireland, Italy, Japan, Kazakhstan, Kenya, Kyrgyzstan, Latvia, Lesotho, Liberia, Liechtenstein, Lithuania, Luxembourg, Madagascar, Moldova, Monaco, Mongolia, Montenegro, Morocco, Mozambique, Namibia, Netherlands (+Netherlands Antilles), Norway, Oman, Poland, Portugal, Republic of Korea, Romania, Russian Federation, San Marino, San Tome and Principe, Serbia, Sierra Leone, Singapore, Slovakia, Slovenia, Spain, Sudan, Swaziland, Sweden, Switzerland, Syrian Arab Republic, the former Yugoslav Republic of Macedonia, Turkey, Turkmenistan, Ukraine, United Kingdom, United States of America, Uzbekistan, Viet Nam, Zambia underlined = Agreement also 2 MEMBERS PARTY TO THE AGREEMENT ONLY Algeria and Tajikistan www. wipo. int/madrid/en/members/ipoffices_info. html

The Madrid System in Trademarks World Some 965, 000 trademark applications were filed worldwide by nonresidents in 2007 of which Some 370, 000 are through the designation under the Madrid system (38%)

International Registrations in Force as of December 31, 2009 515, 562 the total number of registrations in force, equivalent to over 5. 6 million active national/regional registrations, belonging to 169, 939 trademark holders

Main Principles An additional route An optional route A closed system One registration - a bundle of rights

Basic Features of the Madrid Protocol

Basic Features of the Madrid Protocol Filing conditions: who, what, where to file? Examination and registration procedure International Bureau - formal examination and international registration Designated Contracting Party - Substantive examination to confirm or reject the effects of IR Centralized management of IR : subsequent territorial extension, modifications, renewal etc.

Filing Preconditions Applicant having an attachment to a Contracting Party Real and effective industrial or commercial establishment Domicile, Nationality (Articles 2 & 3, Paris Convention) Having the mark registered or deposited for registration in the same territory( basic mark or application for a mark) same person, same mark, same goods and services (or less)

Filing Conditions – Where? An international application must be presented to the International Bureau through the IP office of the CP with which the applicant has the attachment (establishment, domicile or nationality) - Filing through the Office of Origin of the applicant (Indirect filing)

Filing Conditions One form -Official (http: //www. wipo. int/madrid/en/forms/) One language (English, French or Spanish) One standard of goods and services classification (Nice Classification) One set of fees in Swiss Currency: online cost estimate (at http: //www. wipo. int/madrid/en/fees/calculator. jsp)

International Application Content: • Office • Applicant • Entitlement • Basis • Mark • Goods & services • Designations • Fees • Other indications 222

International Filing and Registration Flow OFFICE OF ORIGIN Certify and forward the application to the IB APPLICANT Entitlement Basic mark Form EN OFFICE INTERNATIONAL BUREAU OFFICE Formal examination; registration; publication (Gazette); Certificate; Notification to all designated CPs Substantive examination under domestic law, within 12/18 months Protection = effect of Refusal a national registration

Latest Developments and Statistics

Enhancement of ROMARIN As from January 1, 2009 Notifications of provisional refusals, their confirmation or withrawal, invalidations or statements of grant of protection, received by IB are available in Romarin

General Profile 2009 35, 925 International Registrations Average Number of Designations 7. 4 Average Number of Classes 2. 6 Average Fee All Fees CHF 3, 408 57%< 3, 000 CHF

Top Filer CPs in 2010(until September) as compared to 2009 Origin No. Filing 2009 Germany 2 713 1 EU 2 611 2 France 2 541 3 USA 2 375 4 Switzerland 1 057 8 Benelux 1, 221 6 Italy 1, 444 5 China 1, 090 7 Japan 747 9 Russian Fed. 697 10 Austria 557 13 UK 655 11 Australia 597 12

Some significant filing increases in 2009 (as compared to 2008) Application European Union Japan Republic of Korea Hungary Croatia Singapore growth 3, 710 1, 312 249 245 235 200 3. 1% 2. 7% 33. 9% 14. 5% 17. 5% 20. 5%

Top Designated CPs for 2010( but only until September )

Where is the Czech Republic IRs by Office of Origin, steady growth as from 2005 -547, 559, 541, 607, 397 for 2009. At present 2010 -190 IRs The Cz. R is at the 17 th palce in number of applications for 2009 With share of 1. 1%, with a significant minus growth of -34. 6% Individual Designations of Cz in IRs- slow decrease as from 20055183, 4554, 4020, 3524, 2819 for 2009 At present 2010 - 1448 Cz. R is at the 34 th place, with share of 1. 00% and -21. 6% growth

Most Popular classes of goods and services in IRs in 2009

Top 50 Holders in 2009 Novartis (CH), Lidl Stiftung (DE); Henkel (DE); Zhejiang Medicine Company (CN), Shimano (JP), KRKA (SL), Richter Gedeon (HR), L’Oréal (FR), BSH Bosh und Siemens (DE), Egis Gyógyszergyár (HU), Pfizer (CH), Janssen Pharmaceutical (BE), Bayer (DE), Glaxo Group (UK), Boehringer Ingelheim (DE), Nestlé (CH), Sanofi Aventis (FR), Callaway Golf Company (US), Siemens (DE), Deutsche Telekom (DE), Biofarma (DE), Beiersdorf (DE), Tui AG (DE), Syngenta Participations (CH), DSM IP Assets (NL), ITM Entreprises (FR), Kabushiki Kaisha (JP), ICN (PL), Spar (AT), Gazprom(RU), Kaufland (DE), Daiichi Sankyo (JP), Audi AG (DE), Unilever (NL), GDF Suez (FR), Hofer (AT), ZF (DE), BASF (DE), Novo Nordisk (DK), Brillux Gmb. H (DE), Beijing Wanjindao (CN), Pivovarna Union (SL), Christian Dior Couture (FR), Ningbo Far East (CN), Microsoft Corporation (US), Hangzhou Zhongce Rubber (CN), Mibe Gmb. H (DE), Strauss Adriatic (RS), Merck (DE), Ecom Holdings (AU)

International Registrations and Subsequent Designations -1996 - 2009

Signs of Recovery 2009 - Madrid System IRs declined by 12. 3 %, representing the first decrease since 2002 -2003 and being primarily due to a fall in applications from residents of France, Germany and USA. Beyond 2009 there are grounds for optimism as international trademarks registrations under MS have returned to growth The experience of the first six months of 2010 points to a positive rebound in Madrid IRs

Electronic communication and Information Tools

Electronic Communications: Offices IB

Electronic Communications: Holders and Reps. IB

Electronic Communications: Holders and Reps. IB

Electronic Communications: IB Holders and Reps. Notifications

Information Products & Services provided by IB Various legal texts, guide and information notices (WIPO Lex. Search, new tool, as from Sept 2010, http: //www. wipo. int/wipolex/en/), specific Madrid legal texts, http: //www. wipo. int/madrid/en/legal_texts/ WIPO Gazette of International Marks Fee Calculator: on-line costing service Madrid Simulator: on-line filing guide tool ROMARIN: on-line search database Country specific legal information on national procedures in relation to Madrid Protocol free access at http: //www. wipo. int/madrid/en/

Information Concerning Procedures Before IP Offices The legal framework of Madrid system includes the national Trademark Legislations of all Madrid Member states. In order to improve information concerning this issue, WIPO provides specific information in regard to procedures before IPOffices, 76 country profiles to date hp: //www. wipo. int/madrid/en/members/ipoffices_info. html

International Application Simulator The simulator is designed to respond specifically to the individual need in using the Madrid System when seeking protection of your mark abroad. At the end of the simulation, it will also help you estimate the cost of registering your mark through the Madrid System. http: //www. wipo. int/madrid/en/madrid_simulator/

E- Payment of fees with regard to IAs and IRs, as notified by IB in irregularity letters at: online services : http: //www. wipo. int/madrid/en/services/ Made through a credit card or through a current account with WIPO Any queries regarding e-payment at: e-payment@wipo. int

Recent Accessions The most recent Members of MP are Madagascar(P): Ghana (P): Egypt (P): Liberia(P): Sudan(P): Kazakhstan (P): January 28, 2008 September 16, 2008 September 3, 2009 December 11, 2009 February, 16, 2010 December 9, 2010

Prospective Accessions Most promising: Mexico, Tajikistan(A), Algeria (A) Under consideration: Canada, Indonesia, New Zealand, Thailand, South Africa, Brazil, India

Conclusion: the Madrid System • A simple, low-cost and effective international TM application and registration system (1891 - 2010) • Two treaties: the Madrid Protocol (1989) and the Madrid Agreement (1891) • • Benefits trademark holders in 85 members Signifiant Instrument to facilitate global trade

Future evolvements - - - Simplification of MS After the repeal of the safegurad clause and the predominant position of the P more that 90% of the annual IRs are exclusively governed by the MP If and when the two remaining Agreement only member states accede to Protocol, the Agreement will cease to exist( or will be frozen) That will make the system simpler, even more efficient and more attractive

The Madrid System Simplifies TM Registration & Management worldwide Empowers Businesses in export markets See what our users say about the Madrid system at: http: //www. wipo. int/multimedia/en/madridvideos/index. html

Thank you Antonina. Stoyanova@wipo. int