Protection of Trademarks

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Protection of Trademarks Beyond the EU The
Madrid System for the International Registration
of Marks Ljubljana, December, 2005
Helen Lom Director-Advisor WIPO
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Madrid System
history legal basis
OVER 100 YEARS OF PROVEN SUCCESS Two independent
treaties Madrid Agreement (1891) Madrid
Protocol (1989) (in force 1995) Common
Regulations (1996 2000 2001 2003) Link
between Protocol CTM since October
2004
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The Madrid System a PartnershipAdministered by
WIPO, in cooperation with the trademark offices
of member States/IGOs (OHIM)

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When would you use the Madrid System?

• When you need trademark protection in multiple
  jurisdictions (territoriality principle)
• 1. Not in all EU countries (by
  choice/necessity)
• 2. Beyond the EU

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Why would you use the Madrid System?

• Because it facilitates obtaining and maintaining
• a trademark registration with legal effect in
  several countries.
• Because it is less time consuming, less
  complicated, and therefore less expensive.
• (US 10,00.00 vs. US 100,000.00)

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HOW?

• By providing for
• 1. a single International Application
• 2. a single International Registration
• (i) in a single language (English/French/Spani
  sh)
• (ii) subject to one set of time limits one
  set of fees (CHF)
• 3. a single procedure for renewing a registration
  and recording any changes
• with legal effect in each designated jurisdiction
  , as if the trademark had been applied for and
  registered through the national/regional
  route.

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Madrid System
advantages

• National Route
• Different applications
• Different procedures
• Different languages
• Different fees in different currencies
• Different time limits
• Different renewals
• Recording changes several operations

• Madrid
• One application
• One procedure
• One language (E/F/S)
• One set of fees in one currency (CHF)
• One set of time limits
• One renewal procedure
• Recording changes one operation (US90)

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Madrid System
basic principles

• Closed System (applicant establishment,
  domicile, nationality)
• Need of a Basic Application or Basic
  Registration
• International Application
• filed with WIPO but through Office of origin
• in one language (E/F/S)
• containing a bundle of designations (w/ national
  effect)
• fees paid in Swiss francs
• Possibility of refusal in each designated CP
  within time limits
• Possibility to make subsequent designations
• Recording of changes/renewal in a single
  operation
• IR dependent on basic application/registration (5
  yrs.)

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Link with the CTM(since October 2004)

• Designation of the EC
• in international applications originating in any
  Protocol country (including EC Member States)
• indication of a second language
• seniority
• possibility of opting-back in case the
  designationof the EC drops
• OHIM as Office of origin

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What the Madrid System is

• It is primarily a procedural arrangement.
• It provides for a centralized international
  procedure for obtaining, maintaining and renewing
  a single trademark registration but with legal
  effect in all the jurisdictions designated for
  protection, as if the trademark had been applied
  for and registered through the national/regional
  route.
• An International Registration is equivalent to
  a bundle of national registrations.

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What the Madrid System is not

• It is not a substantive or a normative
  arrangement.
• It does NOT
• - provide for an international mark with
  international rights
• - determine the substantive conditions for
  granting protection
• - determine the rights arising from registration
• - require any minimum standards of protection or
  any harmonization of national laws
  (exception renewal term)

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Madrid Union - 78 Membersby September 15,
2005On its way to becoming GLOBAL

• Madrid Agreement -56 Member Countries
• Madrid Protocol -67 Contracting Parties

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A Growing System almost half of the Contracting
Parties have joined in the last 10
years.Slovenia is party to both - Agreement
(1991) - Protocol (1998)

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(No Transcript)
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Applications January-August 2005 as compared to
2004-2003
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Significant filing increases January-August
2005
filings growth

• United States 1,905 85.3
• European Community 1,285
• China 900 23.8
• Japan 604 30.7
• Australia 573 51.6
• Turkey 518 30.8
• Russian Federation 403 32.1

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Major User Contracting Partiesapplications filed
(Jan-Aug 2005)
filings share

• Germany 3,907 17.2
• France 2,378 10.5
• United States 1,905 8.4
• Benelux 1,674 7.4
• Italy 1,565 6.9
• Switzerland 1,538 6.8
• European Community 1,285 5.7
• China 900 4.0
• Austria 830 3.7
• United Kingdom 720 3.2
• Japan 604 2.7

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Registrations January-August 2005(as compared to
2004 and 2003)
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Record number of registrationsThe
nearly 35,000 International Registrations in 2005
are equivalent to about 420,000 new national
trademark registrations.Why? Because on average
about 12 countries are designated for protection
in each international registration.
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Most Designated Contracting Partiesin
registrations subsequent designationsJan-Aug
2005

filings growth
China 7,873 34.0 Switzerland 7,768 14.7 Russian
Federation 7,425 12.6 United States of
America 6,749 55.6 Germany 5,879
7.1 Japan 5,752 28.1 Italy 5,630
6.4 France 5,369 - 0.8 Spain 5,322
1.2 United Kingdom 5,135 - 1.4
Benelux 5,030 - 3.8 Turkey 4,907 19.6
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SLOVENIA 2004

• Registrations 145
• Designations 5,260
• (at registration/subsequent)
• Comparative registrations Austria 978
• Bulgaria 214
• Czech Rep. 484

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International trademarks in forceby end August
2005

• some 440,000 registrations in force
• over 5 million active designations
• more than 145,000 different trademark owners

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Registrations by Category of Right-Holderby end
of August 2005
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IN CONCLUSION

• Through its simple and inexpensive procedure for
  obtaining, maintaining, and renewing a single
  trademark registration with legal effect in
  multiple jurisdictions, the Madrid System offers
  great value for Slovenian enterprises.

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Thank you