HOW TO PROTECT A MARK?

Giulio C. Zanetti, IDLO Turin, November 9, 2006 1

HOW TO GET PROTECTION?

1. National Route 2. International Route 3. Regional Route

WIPO Madrid System ARIPO Banjul System OHIM OAPI EU System Bangui System

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Madrid system for the International Registration of Marks

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• • • • •

National Route

(with national Offices) different procedures different languages fees paid in local currency recordal of changes: several operations (usually) through a local agent • • • • •

International Route

(With Office of origin WIPO) one procedure one language fees paid in Swiss francs recordal of changes: one operation local agent only if there is a refusal 4

NB

– only procedure => no substance – effects of IR = effects of national registration – closed systems => entitlement 5

WHO may use the system?

natural person

any

legal entity • an establishment in • or: a domicile in • or: the nationality of

having

}

a Contracting Party

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MADRID SYSTEM

–

Madrid

Agreement

Concerning the International Registration of Marks (1891)

– Protocol

Relating to the Madrid Agreement (1989; came into operation on April 1, 1996) 7

Madrid Union 78 Members

Agreement and Protocol 45 Protocol Only 22 Agreement Only 11 (includes EC)

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The International Application

• basic registration (A+P) or basic application (P) • through Office of origin • in one language: English or French or Spanish • content • subsequent designations the mark goods/services designations • fees 9

The Procedure Before the International Bureau

No irregularity : registration in the International Register correction within time limits reception scanning examination Irregularity : irregularity letter – entitlement – designated Contracting Parties – fees paid – classification of goods/services – Vienna Classification no correction within time limits application

considered abandoned

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Advantages of the Madrid System

• Facilitates the international protection of marks of a country’s own nationals • Facilitates the protection of foreign marks, thereby encouraging inward investment • The country’s Office draws revenue from: – handling fees – designation fees 11

Advantages of the Madrid Protocol Simplicity, economy and flexibility • at the application stage: • a single application • in one language • filed with the trademark office of the home country • to obtain protection in several countries.

• at the post-registration stage: • guarantee on the period within which potential grounds of refusal to protect a mark can be raised by the offices of the designated countries • possibility of designating other countries after registration • easy handling of operations: • a single request to record changes (transfers, changes of name or address, etc.) which may affect the registration as a whole or in part; • a single request for renewal .

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Administrative Efficiency

• Centralized filing and administration • Default position….protection granted • Finite timescales 13

• Ability to relinquish designations • Ability to add subsequent designations • Different coverage in different designations

Flexibility

More freedom to secure appropriate protection cost effectively 14

One System

2 Treaties 2 Possible types of Designations 3 Types of International Applications

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Types of Applications

Rule 1(viii): MM1 Governed exclusively by Agreement

all designations governed by Agreement

Rule 1(ix): MM2 Governed exclusively by Protocol

all designations governed by Protocol

Rule 1(x): MM3 Governed by Agreement and Protocol

some

designations

governed by Agreement some

designations

governed by Protocol 16

Language Regime Rule 6

(as of April 1, 2004) 17

International Application and Registration • Agreement only – application: French (MM1) – registration: French ( only ) • Protocol only or in part – application: English or French

or

Spanish (MM2 / MM3) – registration: English, French

and

Spanish (translations by IB) 18

Subsequent Designations • Registration Agreement only – French (

only

) • Registration Protocol only or in part – filing: English, French

or

Spanish – recording and publishing: English, French

and

Spanish • First Designation under Protocol – recording, publication and republication: English, French

and

Spanish 19

Date of the International Registration

• Article 3(4) of the Agreement and Protocol – Reception of application by OO, if received by IB within

2 months

• Rule 15 (four mandatory elements) – identity of applicant – designated Contracting Parties – reproduction of the mark – indications of goods and services 20

Effects of the International Registration (Article 4) The International ‘Registration’ =

A National Application

until the expiry of the time limit to issue a refusal

= A National Registration

once the time limit to issue a refusal has expired (assuming no refusal or refusal withdrawn) 21

Refusals Are there any limitations on the right to refuse?

• • Time Limit Grounds 22

Time Limits

• Notification of

provisional

refusal : – 12 months • Mandatory under Agreement • Optional under Protocol – 18 months • Optional under Article 5(2)(b) of the Protocol – ‘18 months +’ in case of opposition • Article 5(2)(c) of the Protocol 23

Non-Valid Grounds for Refusal

– formal grounds – classification of the goods/services (Rule 12 ! ) – multi-class registration (Art. 5(1)) 24

Statement of Grant of Protection - if no notification of Refusal issued , a CP may send SGP after: (a)

all

procedures complete (protection granted), or (b) (i)

ex officio

exam complete + (ii) after expiry of opposition period (protection granted).

WIPO will record the statement and transmit it to the Holder 25

International trademarks in force • some 440.000 registrations in force • over 5 million active designations • more than 145,000 different trademark owners

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Germany France United States Benelux Italy Switzerland European Community China Austria United Kingdom 1,014 Japan Spain Australia

Top filer Members in 2005

5,802 3,497 2,847 2,426 2,340 2,235 1,852 1,334 1,190 3.0% 893 853 852 17.3% 10.4% 8.5% 7.2% 7 .0% 6.7% 5.5% 4.0% 3.6% 2.7% 2.5% 2.5% 27

United States European Community Japan Australia Turkey China Norway Russian Federation

Significant filing increases in 2005

# filings growth 2,584 1,520 890 846 699 1,315 226 602 152.0% 91.4% 80.4% 71.7% 63.3% 52.7% 51.2% 28

China Switzerland Russian Federation United States of America Japan Germany Italy Turkey France Norway Spain United Kingdom Ukraine

Top designated countries in 2005

13,576 13,192 12,809 11,861 10,099 9,153 8,818 8,599 8,584 8,440 8,328 8,288 8,270 29

Thank you!!!

[email protected]

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