wipo’s activities in the asean : focus on the madrid protocol aipa annual conference march 28,...
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WIPO’s Activities in the ASEAN :
Focus on the Madrid Protocol
AIPA Annual Conference March 28, 2015Denis CROZE
Director, WIPO Office in Singapore
WIPO Office in Singapore
Opened in 2005
Service Center in the region, promoting WIPO’s Global IP services as well as the WIPO Arbitration and Mediation Center
Focus on the ASEAN by assisting the implementation of the ASEAN IP Action Plan (2011-2015) with its various Initiatives, requested by the ASEAN Working Group on Intellectual Property Cooperation (AWGIPC)
Enhances capacity and knowledge of policy makers, government officials, IP professionals and practitioners, IP owners and the user community
WIPO Website: http://www.wipo.int/portal/index.html.en
WIPO Singapore Office (WSO): http://www.wipo.int/singapore/
Basics about the Madrid System
How to protect your trademark abroad?
The national route: application with the Trademark Office of each country in which protection of the mark is sought
The regional route: Application with the regional Office with effect in all the Member States which are members of a regional trademark registration system
The international route (Madrid Protocol): one central procedure to apply, maintain and manage an international registration with effects in all territories designated
Go National or International/Madrid Route ?
National Route
Many Offices for filing
Many application forms
Many languages
Many currencies
Many registrations
Many renewals
Many modifications
Many foreign attorneys needed from filing stage
Madrid Route
One Office for filing
One single application form
One language (E/F/S)
One currency (Swiss francs)
One international registration
One renewal
One modification
Foreign attorney first needed in case of refusal
Objectives of the Madrid System
A simple, low-cost and effective system to facilitate trademark protection in export markets through:
one central filing and registration procedure producing effects in one or more territories bound by the system
one central procedure to maintain and manage an international registration with effects in all territories concerned
Advantages of the Madrid System
Its coverage (95 Contracting Parties)
Fixed time limit for granting or refusing protection (12 or 18 months)
Formal examination by WIPO , substantive examination by the Offices of the designated Contracting Parties
Flexibility of the system (Tailoring the list of goods and services for the different markets)
Centralized management of portfolio (renewals, changes concerning the mark, etc.)
Subsequent designation of other contracting parties is possible
Madrid Union
1 Agreement only40 Protocol only (including EU and OAPI)54 Agreement and Protocol
95 Members
Accessions
2012: Colombia, Mexico, New Zealand and Philippines
2013: India, Rwanda and Tunisia
2014: OAPI and Zimbabwe
2015: Cambodia (enter into force on June 5, 2015)
Future accessions:
ASEAN countries by 2015
Canada
Caribbean countries
African countries
Latin American countries?
Benefits for Trademark Owners
Simplicity A single set of simple formalitiesA single filing Office
Cost Savings Low registration feesNo need to pay foreign agents for filingsNo need to pay translation of the paperwork into several languages
Effectiveness A single international application produces simultaneously the same legal effect in many designates CPs A fixed deadline for confirmation or refusal of the legal effect in each designated CP concernedAll subsequent changes to the international registration may be recorded and have effect through one single procedure
Benefits for Trademark Owners
Flexibility
Choice among the CPs in which protection is sought
Possibility of limitation of the scope of protection, renunciation or cancellation of the IR
User-Friendliness
Strong focus on a customer-oriented policy
Availability of different free of charge online tools and services supporting trademark holders in registering and managing their IRs
Continuous automation of the procedures under the Madrid System
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
Expanding of services: Management of TM portfolios
Trademarks in force – 2014
Trademarksby right-holder
1-2 marks3-10 marks11-100 marks101-500 marks> 500 marks
All
79.40%17.00%
3.43%0.15%0.02%
100.00%
157,23533,669
6,794297
32
198,027
Number ofright-holders
Right-holders(198,027)
Registrationsin force(594,477)
1-2 marks32%
11-100 marks27% 3-10 marks
26%
101-500 marks9%
> 500 marks6%
Available online tools http://www.wipo.int/madrid/en/services/
Madrid Goods and Services Manager (MGS): To use correct specifications of goods and services
Madrid Real-Time Status (MRS): To inform of the status of an international application/registration Madrid Portfolio Manager (MPM): To allow the holders and representatives to view and modify their portfolio
Madrid Electronic Alerts (MEA): To allow users to submit a list of IRs for the IB to monitor and inform of changes
Image-based search tool http://www.wipo.int/branddb/en/
Fee Calculator: http://www.wipo.int/madrid/en/fees/calculator.jsp
E-subsequent designation is now available
The Madrid Protocol in the ASEAN
16ASEAN IP Action Plan 2011 – 2015
28 Initiatives
INITIATIVE: 1. Reduction of average turnaround time (from filing to registration) for the registration of trademarks without objections/opposition to 6 months by 2015
INITIATIVE: 5. Capacity building for trademark and industrial design attorneys/professionals
INITIATIVE: 14. Accession to Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks by AMSs by 2015
INITIATIVE: 15. Accession to the Hague Agreement Concerning the International Registration of Industrial Designs by at least 7 AMSs by 2015NITIATIVE: 17. Establishment of a regional network of patent libraries within schools and universities in AMSs to increase access to global scientific and technology information for research and development
INITIATIVE: 27. Capacity building for industrial design and trademark examiners
INITIATIVE: 28. Infrastructure Modernization of ASEAN IP Office
WIPO Assistance in the ASEAN on Madrid Protocol
Extensive technical assistance (Legislative advice, drafting of an accession roadmap, seminars, training of examiners, etc.)
Joint activities in cooperation with other IP donors (AANZFTA, OHIM/ECAP III, USPTO, etc.)
Most of the acceding legislations are ready and waiting for the national Parliaments to pass it – Most of the countries say they will accede before the end of the year
Myanmar is requiring more time to accede.
Madrid Protocol in the ASEAN
Singapore - 2000
Vietnam - 1949 (A) – 2006 (P)
Philippines – 2012
Cambodia (June 2015)
Acceding Countries (expected in 2015): Brunei, Indonesia, Lao, Malaysia, Thailand
Other Members in the RegionChina (1995), Japan (2000), Australia (2001), Republic of Korea (2003), New Zealand (2012), India (2013)
Madrid Statistics in ASEAN (2013)
Number of international registrations by holders domiciled in
Singapore: 221
Vietnam: 76
Philippines: 43
Number of designations from holders domiciled in
Singapore: 1259
Vietnam: 566
Philippines: 290
Number of designations from holders domiciled in other Madrid CP
Singapore: 7354
Vietnam: 4853
Philippines: 3121
Fee Calculator (in Swiss francs)
Philippines Singapore Vietnam
Basic fee (no color) 653 653 653
Individual fee 95 272 101
Total 748 925 754
