India and the Madrid ProtocolAn update on the Madrid system

AIPPI, HyderabadOctober 14, 2011Debbie Roenning

Director, Legal Division, Brands and Designs Sector

The Madrid System

A centralized filing mechanism

A one-stop shop for trademark holders to obtain and maintain trademark protection in export markets

An option to the national route

A purely procedural treaty

The domestic legislations of the designated Contracting Parties set the conditions for protecting a trademark and determine the rights which result from protection

Madrid System

1 Agreement only29 Protocol only (including EU)55 Agreement and Protocol

85 Members

Accessions

Recent accessions to the Madrid Protocol2010: Sudan, Israel, Kazakhstan2011: Tajikistan (as of June 30, 2011)

Future accessions?Colombia, Costa Rica and Dominican RepublicASEAN countries by 2015IndiaSouth-AfricaBarbados, Jamaica and Trinidad & Tobago MaltaNew Zealand

Basic featuresEntitlementAn international application may be based on one or more applications or registrationsThe fees payable in connection with the application

The basic fee (CHF 653 or 903)A complementary fee for each designated Contracting Party with supplementary fee OR individual fee

Scope of protection – to be determined by designated Contracting PartyThe Contracting Party may elect for 12/18 months refusal period

Basic features (2)

Statement of grant of protection

Subsequent designation

The 5 years dependency period Central attack – Ceasing of effects (withdrawal, lapse, renunciation, final decision of rejection, cancellation or invalidation)

Transformation of the International registration into national applications

10 years term of protection with renewal every 10 years

OFFICE OF ORIGIN

Verifies, certifies and forwards the International application to the International Bureau

INTERNATIONAL BUREAU

Formal examination only.Inscribes the International registration in the International Register, publishes it in the Gazette, issues a certificate and sends notifications to the designated Contracting Parties

OFFICE OF THE DESIGNATED

CONTRACTING PARTIES

Substantive examination.Decision on refusal or granting of rights based on their domestic legislation

International Application

International Registration Procedure

The National Route vs. the Madrid Route

Many Offices for filing

Many application forms

Many languages

Many currencies

Many registrations

Many renewals

Many 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

Benefits for Trademark OwnersSimple and economical procedure

A single set of simple formalities

A single filing Office

Low registration fees

No need to pay foreign agents for filings

No need to pay translation of the paperwork into several languages

Effective procedure

A single international application produces the same legal effect in various countries

A fixed deadline for the confirmation or refusal of the legal effects in each designated country

Benefits for the Offices and Government

The Contracting Parties can focus on substantive examination

The Madrid system has a positive effect on economic growth

It empowers SMEs

It promotes international trade by contributing to the opening of new markets and assisiting in development of export

It creates a more favorable climate for foreign investment in the internal market

Benefits for Local Agents

The Madrid Protocol is optional and it does not replace the direct filing route

Applicants would need the services of local agents at filing stage or at post-registration stage

Increased designations will create more business opportunities (substantive work), like searches, refusals, oppositions, request for cancellations, dispute settlements, license and assignments contracts, and enforcement

Post-registration activity may compensate for any reduction in local filing activity

Recent developments

Mandatory Statements of grant of protection as of January 1, 2011Two anniversaries in April 2011

120 years of the Madrid system (April 14, 1891)15 years of operations of the Madrid Protocol (April 1, 1996)

Translation of certain documents upon requestStatement of grant of protection following a provisional refusalLimitation of the list of goods and services

Statistics 2010 and 2011

In 2010:

39,687 international applications filed

37,533 international registrations recorded

21,949 international registrations renewed

By end of 2010, there were 526,674 international registrations in force, equivalent to

Over 5.5 million active national/regional registrations

Involving 174, 349 trademark holders

In 2011, up + 7.4% compared to 2010

General profile 2010

37,533 International Registrations

Average Number of Designations 7

Average Number of Classes 2 to 3

Average Fee CHF 2,996

All Fees 67.9% < 3,000 CHF

Filing Contracting PartiesContracting Party of Origin 2006 2007 2008 2009 2010

Germany (DE) 5,663 6,090 6,214 4,793 5,006

European Union (EM) 2,445 3,371 3,600 3,710 4,707

United States of America (US) 3,148 3,741 3,684 3,201 4,147

France (FR) 3,705 3,930 4,218 3,523 3,565

Switzerland (CH) 2,468 2,657 2,885 2,671 2,893

Italy (IT) 2,958 2,664 2,763 1,872 2,596

China (CN) 1,328 1,444 1,585 1,358 1,928

Benelux (BX) 2,639 2,510 2,667 1,968 1,922

Japan (JP) 847 984 1,278 1,312 1,577

Russian Federation (RU) 622 889 1,190 1,068 1,218

United Kingdom (GB) 1,054 1,178 1,162 1,008 1,176

Australia (AU) 1,100 1,169 1,092 1,000 1,035

Austria (AT) 1,117 1,134 1,245 1,050 1,020

Other Countries 7,377 8,184 8,492 6,661 6,897

Total 36,471 39,945 42,075 35,195 39,687

Most designated Contracting PartiesDesignated Contracting Party 2006 2007 2008 2009 2010

China (CN) 15,801 16,676 17,829 14,766 16,143

European Union (EM) 10,640 12,744 14,502 12,564 14,604

United States of America (US) 13,994 14,618 15,715 13,406 14,252

Russian Federation (RU) 14,432 15,455 16,768 14,150 14,250

Switzerland (CH) 14,260 14,528 14,907 13,161 12,469

Japan (JP) 11,844 12,348 12,748 10,386 11,124

Australia (AU) 9,115 9,848 10,529 8,575 9,222

Republic of Korea (KR) 8,334 8,988 9,539 7,755 8,336

Ukraine (UA) 9,057 9,751 10,635 8,539 8,288

Turkey (TR) 8,958 9,377 9,844 7,942 8,210

Norway (NO) 9,102 9,346 9,787 7,627 7,503

Singapore (SG) 6,717 7,005 7,607 5,957 6,444

Croatia (HR) 6,970 7,059 7,482 5,967 5,531 Other Countries 225,501 223,374 221,002 172,549 163,100

Total 364,725 371,117 378,894 303,344 299,476

Online Information Services

Legal texts, Guide and Information NoticesWIPO Gazette of International MarksE-Renewal ToolFee Calculator: Costing serviceMadrid Simulator: On-line filing guide toolGoods & Services Manager: A WIPO-administered database of accepted indications of goods and services ROMARIN: On-line search databaseDynamic Madrid Statistics free access at http://www.wipo.int/madrid/en/

New Web based Client Services

Madrid Portfolio Manager

Will allow holders and their representatives to manage their portfolio online

Madrid Realtime Status

Will inform of status of an international application/registration (www.madrid.int/mrs)

Madrid Electronic Alert

Will inform of changes in a specific international registration

An Income-sharing system

The Madrid system is an income-sharing system

From 2005 to 2010, the International Bureau received 1,081.7 million CHF in income from its Madrid services

23.22% − 251.2 million CHF − kept by WIPO

76.78% − 830.5 million CHF − sent to the Offices

In 2010, 192.8 million CHF received as income

47.7 million CHF kept by WIPO

145.0 million CHF sent to Offices

Thank you for your attention

debbie.roenning@wipo.int