World Intellectual

Property Organization

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

Betty Berendson, Betty Berendson, Senior Information OfficerSenior Information Officer

Information and Promotion Division,Information and Promotion Division,Sector of Trademarks, Industrial Designs and Geographical IndicationsSector of Trademarks, Industrial Designs and Geographical Indications

World Intellectual

Property Organization

THE MADRID SYSTEM

Objectives and Basic Features

Objectives of the System

• International Registration of Trademarks

• Simplified access to foreign markets

Characteristics

• Economical

• Fast

• Simple

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 AbroadAn Alternative to the National Route

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

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

• Attachment necessary– establishment (real and effective)– domicile– nationality

• Office of Origin

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

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

Central Administration

• Subsequent Designations

• Assignments• Changes in Names and Addresses• Limitation, renunciation, cancellation• Renewal

Agreement only 8Protocol only 23

Agreement and Protocol 49(Including EC)

Madrid Union

(80 Members)

International trademarks in force

• some 471.325 registrations in force

• over 5 million active designations

• more than 159,000 different trademark owners

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%

128,080

25,579

5,114

280

22

159,075

Number of right-holders

Right-holders(159,075)

Registrations by Category of Right-Holderby end of December 2006

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%)

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 Membersin 2006

Top Filer

0%5%

10%15%20%25%

German

y

Franc

e

United S

tates

Italy

Benelu

x

Europe

an C

ommunit

y

Switzer

land

China

United K

ingdom

Austra

lia

Austria

Japa

n

Others

Pourcentage

Top filer Membersin 2006

# filings shareGermany 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)

Europe

an U

nion

United

state

s

China

Austra

lia

Other th

an th

e top

20

2005

2006

2'523

3'296

1'416

1'068

3'260

1'530

2'595

1'311

848

2'929

0

500

1'000

1'500

2'000

2'500

3'000

3'500

Growth

2005

2006

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 Partiesin registrations + subsequent

designationsin 2006 (as compared to 2005)

20052006

13749 13533

12750 12697

1060810043

8143 8120 7819 78167624 7196

7081

11'751 12530

11384

10760

9224

5805 76387123

7108

8782

5865

8177

6157

0

2'000

4'000

6'000

8'000

10'000

12'000

14'000

Most Designated Countries

20052006

Most designated Contracting Partiesin 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

Madrid System Madrid System A useful economic toolA useful economic toolto obtain and maintain to obtain and maintain protection of marks!protection of marks!

World Intellectual

Property Organization

THE HAGUE SYSTEM

Objectives and Basic Features

Purpose of the HagueAgreement

• 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

Hague SystemConcerning the

International Registrationof

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

Hague Union Members (46)

Geneva Act (1999): 22Albania, 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): 3Indonesia, TunisiaHoly See (denounced as of August, 2007)

(by most recent act)

www.wipo.int/hague/en/members

As of April 2007

Hague Union Members (46)(by most recent act)

20 Geneva Act (1999)21 Hague Act (1960) 3 London Act (1934)

By Most Recent Act

As of April 2007

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).

. . . 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.

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

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

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

General ProcedureIndirect

Filing

Direct

Filing

self-designation

OFFICE OFDESIGNATED

CONTRACTINGPARTY

OFFICE OFDESIGNATED

CONTRACTINGPARTY

OFFICE OFDESIGNATED

CONTRACTINGPARTY

OFFICE OF CONTRACTING

PARTY OFENTITLEMENT

InternationalApplication

INTERNATIONALBUREAU

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

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)

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

/

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

International Registrationsin force as of December 31, 2006

• 27,927 international registrations

• 292,389 designations

• 1,260,164 designs

1,143 International Registraions

Average Number of Designations 12

Average Number of Designs 5

Average Fee 1,761 CHF

Higest Fee* 15,850 CHF

All Fees 96% < 5,000 CHF

International Registrations 2006

Thank you!betty.berendson@wipo.int