THE%20MADRID%20SYSTEM%20FOR%20THE%20INTERNATIONAL%20REGISTRATION%20OF%20MARKS:%20OBJECTIVES%20AND%20BASIC%20FEATURES

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THE MADRID SYSTEM FOR THE INTERNATIONAL
REGISTRATION OF MARKS OBJECTIVES AND BASIC
FEATURES
Tel Aviv, July 4, 2007
José Graça-Aranha Director International
Registrations Department (IRD) Sector of
Trademarks, Industrial Designs and Geographical
Indications
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Table of Contents

1. Introduction
2. Main features
3. Overview on the procedures
4. Geo profiles
5. Statistical data
6. Conclusions

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(1) Introduction
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One System Two Treaties
Madrid Agreement (adopted in 1891 and in force
since 1893)
Madrid Protocol (adopted in 1989 and in force
since 1996)
Common Regulations (adopted in 1996)
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(2) Main Features
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Objectives of the System

• International Registration of Trademarks
• Simplified access to foreign markets

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The Protection Abroad An Alternative to the
National Route

• 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
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Effects

• Simpler, faster and very much affordable
• Simplified registration in one country with the
  possibility of many designations
• Simplified management of a trademark portfolio

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(3) Overview on the Procedures
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Registration and Administration

• Registration and Administration of Trademarks in
  up to 80 Contracting Parties
• through a single procedure
• with a single administration
• in a single language

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Closed System

• Attachment necessary
• establishment (real and effective)
• domicile
• nationality
• Office of Origin

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The Madrid System Procedure

• Role of the National Office
• Language
• Formal examination
• Registration
• Notification and publication
• Refusal (or not) by designated Contracting Parties

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Bundle of National Rights

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

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Central Administration

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

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Basis of the International Application

• National registration (A)
• National registration or application (P)
• Language
• French (A)
• French, English or Spanish (P)

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Refusal of Protection

• 12 months (A)
• 12 months or 18 months (P)
• or more in the case of an opposition

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Fees

• Complementary fee per designation (CHF 73) (A)
• Option for individual tax per designation

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Contracting Parties

• States (A)
• States and certain Intergovernmental
  Organizations (P)

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The Agreement Vs. the Protocol

• Basis of the international application
• Language
• Refusal of protection
• Fees
• Regional Systems

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To Sum Up
AGREEMENT PROTOCOLE
Accession States States plus Int. Organizations
Precondition Basic registration Basic application or registration
Languages French English, French and Spanish
Fees Supplementary and complementary Possibility of individual fees
Refusal time 12 months 18 months or
Dependency 5 years 5 years transformation
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(4) Geo Profiles
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Madrid Union (80 Members)
Agreement only 7Protocol only 23 (Including
EC)Agreement Protocol 50
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Recent Accessions An Overview

• Viet Nam (to the Protocol) July 11, 2006
• Botswana (to the Protocol) December 5, 2006
• Uzbekistan (to the Protocol) December 27, 2006
• Azerbaijan (to the Protocol) April 15, 2007

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(5) Statistical Data
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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)

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International Trademarks in force

• Some 471.325 registrations in force
• Over 5 million active designations
• More than 159,000 different trademark owners

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Registration by Category of Right-Holder by
December 31, 2006
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Top Filer Members in 2006
Country Filing Share
Germany 6,552 18
France 3,896 10.7
USA 3,148 8.6
Italy 3,086 8.5
Benelux 2,784 7.6
Switzerland 2,468 6.6
UK 1,489 4.1
China 1,328 3.6
Spain 1,215 3.3
Austria 1,197 3.3
Australia 1,100 3.0

• Major filer countries in 2006 (shares within
  total filings in 2006 and growth rates as
  compared to 2005)

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International Registrations
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Renewals 2003 - 2006
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Number of Designations (2006)
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Fees per International Registration
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International Applications 1996 - 2006
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Top filer Members in 2006
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Some significant filing increases in 2006 (as
compared to 2005)
Applications Growth
EU 2,523 65.5
Italy 3,086 25.5
Australia 1,100 29.1
Spain 1.215 17.2
USA 3.148 10.5
Other than the top 20 3,260 11.3
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Most Designated Contracting Parties in
registrations Subsequent Designations in 2006
Vs 2005
Country Designations Growth
China 15,801 16.4
Russia 14,432 12.7
Switzerland 14,260 8.1
USA 13,994 18.0
Japan 11,844 17.3
EU 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
France 7,495 - 12.7
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(6) Conclusions
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Advantages for the Users

• Administrative efficiency
• Flexibility
• Portfolio management
• Larger applicants
• Savings on costs

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Conclusions

• Simplified access to new markets
• The future

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Many thanks!

• gracaaranha_at_wipo.int