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The Strategic Use for SME’s of the Madrid and Hague Systems: 

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

THE MADRID SYSTEM Objectives and Basic Features: 

THE MADRID SYSTEM Objectives and Basic Features

Objectives of the System: 

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

Slide4: 

Characteristics Economical Fast Simple

The Protection Abroad: 

National Route (with national Offices) • different procedures • different languages • fees paid in local currency • recording of changes: several operations • (usually) through a 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 compulsory Usually when there is a refusal The Protection Abroad An Alternative to the National Route

Advantages for Users: 

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

Slide7: 

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: 

Closed System Attachment necessary establishment (real and effective) domicile nationality Office of Origin

Procedure through the Madrid System: 

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 : 

Bundle of National Rights National (designated) Offices determine: substantive conditions of protection applicable procedure if refusal scope of protection

Central Administration: 

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

Slide12: 

Madrid Union (80 Members)

Slide13: 

International trademarks in force some 471.325 registrations in force over 5 million active designations more than 159,000 different trademark owners

Slide14: 

Marks by right-holder 1-2 3-10 11-100 101-500 > 500 Total 80.52% 16.8% 3.21% 0.18% 0.01% 100,00% Registrations by Category of Right-Holder by end of December 2006

Trademarks Worldwide: 

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%)

Slide16: 

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

Slide18: 

Top filer Members in 2006 # filings share Germany 6,552 18.0% France 3,896 10.7% United States 3,148 8.6% Italy 3,086 8.5% Benelux 2,784 7.6% European Community 2,523 6.8% Switzerland 2,468 6.8% United Kingdom 1,489 4.1% China 1,328 3.6% Spain 1,215 3.3% Austria 1,197 3.3% Australia 1,100 3.0%

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

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

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

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

Slide22: 

Most designated Contracting Parties in registrations + subsequent designations in 2006 (as compared to 2005) China 15,801 16.4% Russian Federation 14,432 12.7% Switzerland 14,260 8.1% United States of America 13,994 18.0% Japan 11,844 17.3% European Community 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% # designations growth

Conclusion: 

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

THE HAGUE SYSTEM Objectives and Basic Features: 

THE HAGUE SYSTEM Objectives and Basic Features

Slide25: 

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: 

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

Slide27: 

Hague Union Members (46) 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) (by most recent act) www.wipo.int/hague/en/members As of April 2007

Slide28: 

Hague Union Members (46) (by most recent act) As of April 2007

Slide29: 

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).

Slide30: 

. . . 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.

Slide31: 

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

Slide32: 

Formal Examination by IB IB examines for 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

Slide33: 

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

Slide34: 

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

Slide35: 

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

Slide36: 

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)

Slide37: 

Central Management Appointment [DM/7] or cancellation [DM/9] of representative before IB 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 /

Slide38: 

General Advantages National or Regional International Route Route (Hague System) • many Offices for filing • one Office for filing • many languages • one language many currencies • one currency • many registrations • one int. registration • many renewals • one renewal • many modifications • one modification • foreign attorney or agent • foreign attorney or agent first needed at filing first needed if refused

Slide39: 

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

Slide40: 

International Registrations 2006

Slide41: 

Thank you! betty.berendson@wipo.int

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