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 1 000 000
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
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 )
Origin
1.China 1
2.Russian Federation 4
3.United States of America 3
4.Switzerland 5
5.European Union
2
6.Japan 6
7.Australia 7
8.Ukraine 8
9.Turkey 10
10.Republic of Korea 9
11.Norway 11
12.Croatia 14
13.Singapore 12
14.Germany 13
15.Belarus 15
2010
2009
8 646
7 855
8 079
7 322
8 452
6 150
5 102
4 431
4 257
4 305
4 205
3 008
3 392
3 194
2 793
14,766
14,150
13,406
13,161
12,564
10,386
8,575
8,539
9,844
9,539
9,787
5,967
5,957
5,593
9,380
Share Growth
4.9%
4.7%
4.4%
4.3%
4.1%
3.4%
2.8%
2.8%
2.6%
2.6%
2.5%
2.0%
2.0%
1.8%
1.8%
-17.2%
-15.6%
-14.7%
-11.7%
-13.4%
-18.5%
-18.6%
-19.7%
-19.3%
-18.7%
-22.1%
-20.2%
-21.7%
-19.6%
-20.0%
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 CzR 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
CzR 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
Classes
Products and Services
2008
2009
Share
Growth
Class 9
covers e.g. computer hardware and software and other electrical
or electronic apparatus of a scientific nature
9,305
7,935
8.3%
-14.7%
covers services such as office functions, advertising and
business management
7,683
6,798
7.1%
-11.5%
covers services provided by e.g. scientific, industrial or
technological engineers and computer specialists
6,092
5,337
5.6%
-12.4%
includes mainly pharmaceuticals and other preparations
for medical purposes
4,868
4,553
4.7%
-6.5%
Class 25
covers clothing, footwear and headgear
5,308
4,482
4.7%
-15.6%
Class 41
covers services in the area of education, training, entertainment,
sporting and cultural activities
4,882
4,469
4.7%
-8.5%
includes mainly paper, goods made from that material
and office requisites
4,652
3,925
4.1%
-15.6%
Class 3
includes mainly cleaning preparations and toilet preparations
3,979
3,405
3.6%
-14.4%
Class 30
includes mainly foodstuffs of plant of origin, prepared for
consumption or conservations as well as auxiliaries intended for
the improvement of the flavour of food
3,191
2,991
3.1%
-6.3%
includes mainly machines, machine tools, motors and engines
3,294
2,857
3.0%
-13.3%
Class 35
Class 42
Class 5
Class 16
Class 7
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 GmbH (DE), Beijing Wanjindao (CN),
Pivovarna Union (SL), Christian Dior Couture (FR), Ningbo Far
East (CN), Microsoft Corporation (US), Hangzhou Zhongce
Rubber (CN), Mibe GmbH (DE), Strauss Adriatic (RS), Merck
(DE), Ecom Holdings (AU)
International Registrations and Subsequent
Designations -1996 - 2009
54'000
44'000
34'000
24'000
14'000
4'000
1996
1997
1998
1999
2000
2001
2002
2003
2004
2005
2006
-6'000
Registrations
Subsequent designations
2007
2008
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
OFFICES  WIPO
International Applications
6
AU BX CH EM US KR
Refusals
3
EM JP US
Statements of Grant of
Protection
2
EM JP
Modifications
6
AU BX CH EC KR US
WIPO  OFFICES
AL
EM
KE
Notifications 51
RO
ZM
SL
AT AU AZ BX CH CU CZ DK EE
ES FI FR GB GR HR HU IE JP
KR LT MD MK MZ NO PL PT
RU SE SG SI SK TR US VN RS
BA BT BG CY KP IR LS LR NA
SZ
Electronic Communications:
Holders and Reps.  IB
MM4
MM5
MM6
MM7
MM8
MM9
MM10
MM11
MM12
Subsequent Designation
Change in Ownership
Limitation of Goods and Services
Renunciation
Cancellation of International Registration
Change in Name and/or Address of Holder
Change in Name and/or Address of Rep.
Renewal of International Registration
Appointment of Representative
MM13
MM14
MM15
MM16
MM17
MM18
MM19
Recording a License
Amendment of Recording of a License
Cancellation of Recording of a License
Subsequent Designation Conversion (EM)
Claim of Seniority
Declaration of Intent to Use
Recording of Restriction Against Holder’s Right of
Disposal
Fee payments
Electronic Communications:
Holders and Reps.  IB
Electronic Communications:
IB Holders and Reps.
Notifications
Irregularity Letter
Provisional Refusal
Invalidation (total or partial) of IR
Cancellation (total or partial) of IR due to Ceasing of Effect
Statement of Grant of Protection
2nd Part of Fee Due
Extension of Opposition Period
Final Decisions
Information Products & Services
provided by IB
Various legal texts, guide and information notices (WIPO LexSearch, new tool, as
from Sept2010, 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
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/madrid/madridvideos/index.html
Thank you
Antonina.Stoyanova@wipo.int