Transcript Recent Developments in the Field of Trademarks and the Madrid System for the International Registration of Marks WIPO National Seminar on Industrial Property and on.

Recent Developments in the Field
of Trademarks and the Madrid
System for the International
Registration of Marks
WIPO National Seminar on Industrial Property
and on the Implementation of the TRIPS’
Obligations in the Pursuance of National Public
Policies and Goals
World
Intellectual
Property
Organization
Damascus, May 28 and 29, 2008
Päivi Lähdesmäki, WIPO
Table of Contents:
• Part I: Recent Developments in
the Field of Trademarks
– Recent Activities
• Part II: Madrid System for the
International Registration of
Marks
Part I:
Recent Developments
in the Field of
Trademarks
World
Intellectual
Property
Organization
Recent Activities:
Singapore Treaty on the Law of
Trademarks (2006):
- framework for defining harmonized rules
on trademark administration at the national
offices
- not yet in force, but the following States
have ratified it or acceded to it:
• Singapore: Ratification - March 26, 2007
• Switzerland: Ratification - July 6, 2007
• Bulgaria: Accession - January 21, 2008
Singapore Treaty: main features
Nature of Marks
– nature of marks is open-ended
– Regulations define details concerning
• representation of hologram and non-visible
marks
Singapore Treaty: main features
Electronic Communication
• Free choice of form and means of transmittal
of communications
– Regulations define details concerning
requirements for e-filing
• Signature of communication on paper (no
certification required)
• Electronic transmittal
– filing on paper within one month
• Electronic communications
– free choice of authentication measures
Singapore Treaty: main features
Relief Measures:
At least one of the following
measures must be available in the
case that a time limit has been
missed:
– extension of time limit
– continued processing
– reinstatement, if failure was
unintentional or occurred despite
due care
Singapore Treaty: main features
Trademark Licenses
• Recording
– license
– amendment of license
– cancellation of license
• Standard Content of Request
• Documentary Evidence
– extract from contract (certified)
– statement of license document (signed by
both parties)
Resolution Supplementary to the
Singapore Treaty
• Understanding by the Contracting Parties:
- no obligation:
to register new types of marks or
implement electronic filing systems
- special provisions:
to provide developing and leastdeveloped countries with technical
assistance
- Assembly:
to monitor progress of assistance
- dispute settlement
Singapore Treaty:
Benefits for Trademark Owners
and for Contracting Parties
• Modernization of legal framework for
trademark administration
• Streamlining of national procedures
• Reduction of backlogs and increase turnover
of files
• Alignment with the Madrid System
• Potential benefits of electronic filing
Part II:
Madrid System for the
International Registration
of Marks
World
Intellectual
Property
Organization
The Madrid System
« The Madrid System has earned the
trust and confidence of the business
community as a reliable option for
brands seeking export markets. »
« Brand value is one of the most
important assets that a business
holds. »
Madrid System in
perspective –
a potential economic tool
End of 2007:
• significantly
lowertrademarks
costs than
483,210
international
in force =
through national route (10 to 20
equivalent to some
times less)
5.4 million active designations
The Madrid
System
• Madrid Agreement
(1891)
• Madrid Protocol (1989)
– operational on April 1,
1996
• Common Regulations
– latest revision 2008
• Admin. Instructions
• National Law
What is the Madrid
System?
A closed system of international
registration and management of marks.
CONNECTION needed
with the Office of origin
What the Madrid System is not?
• As the Madrid System concerns only
procedures, it does NOT determine:
- conditions for protection
- refusal procedures at the Office
- rights resulting from protection
These issues are governed by
national laws.
Objectives of the Madrid System:
Registration and Administration
of Trademarks in up to
82 Contracting Parties
- through a single procedure
- in a single language
- a single administration of
the international registration
Advantages of the Madrid
System
National Route
(National Offices)
International Route
(Office of origin
WIPO)
• file in many Offices
• file in one Office of
origin
• file in one language
• fees in one currency
• foreign agent only if
refused
• one international
registration
• one renewal
• changes recorded via the
the International Bureau
• file in many languages
• fees in many currencies
• foreign agents
• many registrations
• many renewals
• changes recorded via
each national office
... Madrid System in summary:
Administrative efficiency
Flexibility
World
Intellectual
Property
Organization
Cost effectiveness
Accessions since January 2004
•
•
•
•
•
•
•
•
•
•
•
•
•
Azerbaijan
(P)
Bahrain
(P)
Botswana
(P)
Croatia
(P)
European Community
(P)
Kyrgyzstan
(P)
Madagascar
(P)
Montenegro
(A+P)
Namibia
(A+P)
Oman
(P)
San Marino
(P)
Syrian Arab Republic (August 5, 2004) (A+P)
Uzbekistan
(P)
Contracting Parties to only
the Madrid Agreement (7)
Algeria,
Bosnia and Herzegovina,
Egypt,
Kazakhstan,
Liberia,
Sudan,
Tajikistan
Contracting Parties to only the
Madrid Protocol (26)
Antigua & Barbuda,
Australia, Bahrain, Botswana, Denmark,
Estonia, European Community, Finland,
Georgia, Greece, Iceland, Ireland, Japan,
Lithuania, Madagascar, Norway, Oman,
Republic of Korea, Singapore, Sweden,
Turkey, Turkmenistan, United Kingdom,
United States of America, Uzbekistan,
Zambia
Contracting Parties to both the Madrid
Protocol + Agreement (49)
Albania, Armenia, Austria, Azerbaijan, Belarus,
Belgium, Bhutan, Bulgaria, China, Croatia,
Cuba, Cyprus, Czech Republic, Democratic
People’s Republic of Korea, France, Germany,
Hungary, Iran (Islamic Republic of), Italy,
Kenya, Kyrgyzstan, Latvia, Lesotho,
Liechtenstein, Luxembourg, Moldova, Monaco,
Mongolia, Montenegro, Morocco, Mozambique,
Namibia, Netherlands, Poland, Portugal,
Romania, Russian Federation, San Marino,
Serbia, Sierra Leone, Slovakia, Slovenia, Spain,
Swaziland, Switzerland, Syrian Arab Republic,
The former Yugoslav Republic of Macedonia,
Ukraine, Viet Nam
Madrid Union - 82 Members
Madrid System
on May 1, 2008
Agreement only 7
Protocol only 26 (Including EC)
Agreement and Protocol
49
Filing trends in 2007:
A record of 39,945 international
applications was received (growth
of 9,5%) comprising:
- a record of 370,234 new
designations (growth of 1,5%)
- most filings were made by
small and medium sized
(SMEs) enterprises (holders of
1 to 10 marks)
International Applications
2004-2007
+ 9.5%
+ 8.6%
40'000
35'000
+ 13.9%
+ 23.4%
30'000
25'000
33'577
36'471
39'945
2005
2006
2007
20'000
15'000
29'472
10'000
5'000
0
2004
Major User Contracting Parties
Madrid System
applications filed in 2007
Office of Origin
2006
2007
Share
Growth
Germany
France
United States of America
European Community
Italy
Switzerland
Benelux
China
United Kingdom
Australia
Austria
Japan
Russian Federation
Spain
Turkey
5,663
3,705
3,148
2,445
2,958
2,468
2,639
1,328
1,054
1,100
1,117
847
622
994
733
6,090
3,930
3,741
3,371
2,664
2,657
2,510
1,444
1,178
1,169
1,134
984
889
859
717
15.2%
9.8%
9.4%
8.4%
6.7%
6.7%
6.3%
3.6%
2.9%
2.9%
2.8%
2.5%
2.2%
2.2%
1.8%
7.5%
6.1%
18.8%
37.9%
-9.9%
7.7%
-4.9%
8.7%
11.8%
6.3%
1.5%
16.2%
42.9%
-13.6%
-2.2%
Most designated Contracting Parties
in applications and subsequent designations
Madrid System
Designated CP
China
Russian Federation
United States of America
Switzerland
European Community
Japan
Australia
Ukraine
Turkey
Norway
Republic of Korea
Germany
Croatia
Singapore
2006
2007
15,801
14,432
13,994
14,260
10,640
11,844
9,115
9,057
8,958
9,102
8,334
8,147
6,970
6,717
16,676
15,455
14,618
14,528
12,744
12,296
9,848
9,751
9,377
9,346
8,988
7,184
7,059
7,005
Share Growth
4.5%
4.2%
3.9%
3.9%
3.4%
3.3%
2.7%
2.6%
2.5%
2.5%
2.4%
1.9%
1.9%
1.9%
5.5%
7.1%
4.5%
1.9%
19.8%
3.8%
8.0%
7.7%
4.7%
2.7%
7.8%
-11.8%
1.3%
4.3%
Filing trends in 2007:
• Developing countries:
– 2,108 filings (5,3% of total filings)
– 10,5% growth over 2006
– Most significant growth:
• Republic of Korea with 330 international
applications (+73.7%)
Filing trends in 2007: SMEs
(holders of 1-10 marks) own
more than 57% of registrations
Trademarks
by right-holder
Right-holders
(159,420)

1-2 marks
3-10 marks
11-100 marks
101-500 marks
> 500 marks
127,118
26,604
5,395
279
24
79.74%
16.69%
3.38%
0.18%
0.01%
All
159,420
100.00%
101-500 marks
10.67%
Registrations
in force
(483,210)
Number of
right-holders
> 500 marks
5.30%
1-2 marks
31.67%

11-100 marks
26.87%
3-10 marks
25.48%
Filing trends in 2007:
Amounts of Fees paid per
International Registration
25000
54%
20000
15000
27%
10000
s
10%
5000
0
5%
Less than
3,000 CHF
3,000 - 4,999 5,000 - 6,999 7,000 - 9,999
CHF
CHF
CHF
3%
1%
10,000 14,999 CHF
15,000 or
more CHF
%
54%
27%
10%
5%
3%
1%
IR
20'661
10'449
3'798
2'035
974
554
The basic Madrid Procedure:
1) filing via national Office
2) formal examination and
registration by the International
Bureau
– registration or notification of
irregularity
– notification to Designated Contracting
Parties and publication by the
International Bureau
3) examination by the Office of a
Designated Contracting Party
– protection/refusal
Basic Procedure:
Precondition: basic application or basic registration
OFFICE OF
ORIGIN
INTERNATIONAL
BUREAU
Certifies that particulars in
international application =
those in basic application or basic
registration
Checks formalities
Records in the International Register
Publishes in the International Gazette
Notifies designated Contracting Parties
Substantive Examination
OFFICE OF
refusal
DESIGNATED
within set
CONTRACTING
time limits
PARTY
refusal
no refusal = effect of a
national registration
Anyone who is a. . .
Natural or Legal Entity with a
connection through
a real and effective industrial or commercial
establishment or,
-
a domicile in a Contracting Party or,
-
nationality of a Contracting Party,
is entitled to file an international
application.
The “basic mark” on which the
international application is based,
can be
• an application for registration
(under the Madrid Protocol) or,
• a registration
in the country of origin
Office of origin verifies that the
international application
corresponds to the basic
application or registration.
Designations in the international
application may be made only
in respect of:
• Contracting Parties
– to the Madrid Agreement or Protocol or
both
• Contracting Parties
– bound by the same Treaty as the
Country of Origin of the Applicant
- a “closed” system
Procedure: International
Registration Date (Art. 3(4))
Necessary indications (Rule 15(1))
- identity of the applicant and contact details
- designated Contracting Parties
- reproduction of the mark
- goods and services
...received by the International
Bureau within 2 months from the date
on which the Office of Origin received
application:
- date of receipt by Office of Origin
…received by the International
Bureau later than 2 months from the
date on which the Office of Origin
received application:
- date of receipt by the International
Bureau
Why Subsequent Designation ?
- Protection was not desired at the time
of filing the international application
-Protection was not possible at the time of
filing the international application
(the designated country/organization was not a
Party to either the Agreement of the Protocol)
Date of Subsequent
Designation:
- presented directly
by the holder to the
International
Bureau (Rule
24(6)(a))
- presented via the Office
to the International
Bureau (Rule 24(6)(b))
- date of receipt
- received by the International
Bureau within 2 months: date of
receipt by the Office
- received by the International
Bureau later than 2 months: date
of receipt by the International
Bureau
Date of Subsequent Designation
(cont.):
• request for later effect of the
subsequent designation (Rule
24(6)(d)):
– designation takes effect after
renewal
– designation takes effect after the
recording of a change or a
cancellation
Term of Protection of International
Registration (and of Subsequent
Designation)
- term of protection of the international
registration: 10 years
- renewal for further 10 years
- subsequent designation: valid until the
expiry of the international registration
itself (only one renewal)
Renewal Procedure:
• Unofficial notice of expiry to the holder
– 6 months before the expiry of
the 10 year period
• Payment directly with the International
Bureau
– 6 months grace period after the
expiry date (+ 50% basic fee)
An International Registration has the Effect
of a ….
- national application until the expiry of the
time limit to issue a refusal
- national registration from the expiry of
the time limit to issue a refusal (if no refusal
or if refusal is withdrawn)
Time Limit for Issuing
Provisional Refusal
by the Office:
• Notification of provisional refusal
– 12 months
– 18 months (if declaration under
Article 5(2)(b) of the Protocol)
– 18 months plus (if declaration
under Article 5(2)(c) of the
Protocol)
Notification (cont.) - Three Stages:
• (i) The initial notification of provisional refusal
- Prescribed content
- Recording and transmission by the
International Bureau
• (ii) Confirmation or withdrawal - when
‘final’ before the Office
• (iii) Further decision affecting protection
Statement of Grant of
Protection (Rule 17(6))
Protection granted
(only if no
provisional refusal has been
communicated)
Ceasing of Effect of Basic mark
within the first 5 years:
What are the consequences?
The Office of origin
- must notify the International Bureau and
- request the cancellation of the
international registration, to the extent
applicable
The International Bureau
- cancels the international registration and
informs the designated Contracting Parties
Transformation After “Ceasing of
Effect” of the Basic mark
(possible only under the Protocol)
Conditions:
- national application filed within
3 months from the cancellation of
the international registration
- goods/services in the national
application must be covered by
the goods/services of the
international registration in
respect of that Contracting Party
Representation Before the
International Bureau (Rule 3)
Appointment:
• official form:
– international application
– subsequent designation
– recording of a change
• no power of attorney
• signed by the holder or
presented through an
Office
• separate communication:
– simple letter
– unofficial form MM12
• specify relevant app./reg.
• signed by applicant/holder/
Office of the holder‘s CP
Cancellation:
• simple letter
– all or specified app./reg. of
an applicant/holder
– signed by applicant/holder
or representative
• appointment of a new
representative
– ex officio by the IB
• change in ownership
without re-appointment
– ex officio by the IB
Change in Ownership:
• may result from
– contract, assignment
– court decision
– operation of law: inheritance,
bankruptcy
– others
• may be limited to
– some of the goods or services
– some of the Contracting Parties
Change in Ownership:
Who may become the new owner?
• new owner must be entitled (through
establishment, domicile of nationality) to
file international applications
• entitlement is to be considered in respect
of each designated Contracting Party
Change in Ownership:
Presentation to the
International Bureau
Who may present the request? (Rule 25(1)(b), Form MM5)
directly
transferor
(recorded holder)
(signed by the holder)
through the Office of the
Contracting Party of the holder or of
the new owner
(signed by the Office and/or holder)
transferee
(new owner)
through the Office of the
Contracting Party of the holder or of
the new owner
(signed by the Office and/or holder)
Centralization of Procedures
•
•
•
•
•
•
•
Transfers / Changes in Ownership
Changes in Names and Addresses
Renewal
Change of Representatives
Recording of Licenses
Recording of Restrictions
Changes to specification of goods
and services and/or Contracting
Parties
Illustration of Administrative
Efficiency
China, Turkey, Australia,
Russian Federation, Spain, France,
Ukraine, Germany, Norway, Japan
• translation of specification into 10 languages
• power of attorney in some countries
• notarization and legalization
• 10 financial transactions
• 10 instructing letters
• 10 different filing/renewal dates
Interface with the
European Community
Trade Mark (CTM)
World
Intellectual
Property
Organization
CTM Interface: Overview
• Link with the CTM as from
October 1, 2004:
1) OHIM as Office of Origin
2) Designation of the European Community
(EC) possible in Contracting Parties to the
Madrid Protocol
CTM Interface: Overview
1) OHIM (Office for
Harmonization in the Internal
Market) as Office of Origin
Entitlement: Connection
with the EC as a
Contracting Organization
(Art. 2(1)(ii) MP)
national of an
EC Member State
domicile on
EC territory
establishment
on EC territory
Designation of Contracting Parties
The international application is governed by the
Protocol
form MM2 (fr/en/es)
P
P
European Community
P
P
Norway
P
AP
Syrian Arab
Republic
A
Bosnia and Herzegovina
CTM Interface: Overview
2) Designation of the European
Community (EC)
- possible in Contracting Parties to
the Madrid Protocol
Designation of the EC
in the application
(forms MM2 or MM3)
subsequently
(form MM4)
• indication of a second
language before OHIM
• seniority claims
• opting back: subsequent
designation resulting from
conversion
Indication of a second language
before OHIM (Art. 115 CTMR)
English
Spanish
German
French
Italian
• opposition proceedings
• revocation proceedings
• invalidity proceedings
In Practice
(Add form MM17 to form MM2, MM3 or MM4)
Opting back: Two possibilities
Conversion of the EC
designation (Art. 154 CTMR)
• designation of EC refused
• designation ceases to have effect
– renunciation
– no renewal
European
Community:
conversion into
national applications
(Art. 108-110 CTMR)
International (Madrid):
conversion into subsequent
Madrid designations
(Madrid Rule 24(7))
no translation necessary
Two Ways of Opting Back:
“opting out”:
conversion under
EC law
AP
Syrian Arab Republic
P
European Community
“staying within”:
subsequent designation
under Madrid
Subsequent Procedure
• present request before OHIM within three
months after refusal or ceasing of effect
(Arts. 154, 108 CTMR)
• use form MM16 or the corresponding form
provided by OHIM
• OHIM will then pass on the request for
subsequent designation of EC Member
States to the International Bureau
(Madrid Rule 24(2)(a)(iii))
Effect of the Subsequent Designation
Resulting from Conversion
keeping the date of the
initial EC designation
(Madrid Rule 24(6)(e))
if applicable, seniority
date of an earlier
national mark
(Arts. 154, 108 CTMR)
Ensuring the efficient administration of the trademark
portfolio under the Madrid System:
– change in name, address or ownership
– one renewal date for all designated Contracting Parties
Repeal of the Safeguard
Clause
• the Protocol, and the Protocol alone,
will (as from September 1, 2008)
apply between States bound by both
the Agreement and the Protocol
• Entry into Force on September 1,
2008
New Article 9sexies
• Paragraph (1)(a)
– establishes the principle that the
Protocol, and the Protocol alone, will (as
from September 1, 2008) apply between
States bound by both the A and the P
• Paragraph (1)(b)
– Renders inoperative a declaration under
Articles 5(2)(b), 5(2)(c) or 8(7) of the P,
in the mutual relations between States
bound by both Treaties
New Article 9sexies
• Mutual relations between States
bound by both Treaties:
– Standard regime of Articles 5(2)(b),
5(2)(c) or 8(7) of the Protocol applies:
• Time limit for the notification of a provisional
refusal: 1 year
• Payment of supplementary and complementary
fees
New Article 9sexies
• Paragraph (2)
– Review of the application of new
paragraph (1)(b) after a period of three
years from September 1, 2008:
• Paragraph (1)(b) may be repealed or its scope
may be restricted by the Assembly
A
P
A∩P
World
Intellectual
Property
Organization
Current Situation:
Article 9sexies(1) : A∩P = A applies, not P
01-01-2008
Protocol Members (5 to 75)
80
60
40
20
0
1995 1996 1997 1998 1999 2000 2001 2002 2003 2004 2005 2006 2007 2008
P
2
5
7
9
11
15
18
18
20
21
22
23
23
26
A/P
3
7
15
25
29
34
36
38
41
45
45
47
50
49
01-01-2008
Agreement Members
(46 to 56)
80
60
40
20
0
1995 1996 1997 1998 1999 2000 2001 2002 2003 2004 2005 2006 2007 2008
A/P
3
7
15
25
29
34
36
38
41
45
45
47
50
49
A
43
39
32
25
22
18
16
14
13
11
11
9
7
7
A
World
Intellectual
Property
Organization
P
Repeal of the Safeguard clause
A
World
Intellectual
Property
Organization
P
Practical Implications for the Office:
• Only Offices of Contracting Parties bound by
both the Agreement and the Protocol are
concerned
• These Offices will need to adapt their
procedures and automated systems to
integrate the changes entailed by the repeal
of the safeguard clause (i.e. as from
September 1, 2008, the Protocol prevails
over the Agreement)
Practical Implications for the Office:
• The International Bureau has sent to these
Offices an Information Kit prepared by the
Legal Service.
• The purpose of the Information Kit is to
inform these Offices on the changes that
will have an impact on their procedures and
automated systems.
Further Legal Developments
of the Madrid System
Recommendation
of the Madrid Working Group to the Assembly
in 2008 (document MM/LD/WG/5/8):
- the only new obligation for Offices: to send
Statements of Grant of Protection where no
provisional refusal has been issued (proposed
Rule 18ter(1))
-
Proposed
Proposed
Proposed
Proposed
amendment of Rule 16
revised Rule 17
new Rule 18bis
new Rule 18ter
- Entry into force: transitional provision to be added in Rule
40(4)
Further Legal Developments
of the Madrid System
Proposed new Rule 18ter(1)(a):
- new obligation to the offices:
- (1)(a) sending of statement of grant of
protection obligatory where no
notification of provisional refusal has
been communicated
- entry into force: no obligation before
January 1, 2011 (proposed Rule 40(5))
Thank You
Päivi Lähdesmäki
Senior Legal Officer
International Registration Systems
Legal Service
[email protected]
World
Intellectual
Property
Organization