Trademarks and Brands The Role of WIPO

1
Trademarks and BrandsThe Role of WIPO

• Martha Parra Friedli
• Alicante, June 5 and 6, 2008

2

• International Protection
• of Marks
• Paris Convention for the Protection of Industrial
  Property
• Madrid System Concerning the International
  Registration of Marks
• Recent and Current Work in the area of Marks

3

• The Paris Convention (PC)
• Historically at the origin of the most important
  international agreements administered by WIPO
• Established on March 20, 1883
• Revised in 1900, 1911, 1925, 1934, 1958 and 1967
• Amended in 1979
• Members 173

4

• Recent Accessions (PC)
• Saudi Arabia March 2004
• Andorra June 2004
• Pakistan July 2004
• Comoros April 2005
• Montenegro June 2006
• Yemen February 2007
• Angola December 2007
• Thailand August 2008

5

• Madrid System
• The WIPO-administered Madrid System for the
  International Registration of Marks
• offers a worldwide oriented route to trademark
  protection in multiple countries by filing a
  single application

6

• Madrid System

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)
82 Members
7

• Recent Accessions
• EU October 2004
• Bahrain December 2005
• Botswana December 2006
• Montenegro June 2006
• Viet Nam July 2006
• Uzbekistan December 2006
• Oman October 2007
• Madagascar April 2008

8

• The system provides
• One single filing and affordable procedure in up
  to 82 Contracting Parties
• Central administration of all changes subsequent
  to the international registration
• Simpler, faster and very much affordable
• Simplified management of a trademark portfolio

9
Major User CPs (Jan Jul 2007)
10

• In 2007
• WIPO received 40,000 applications (9.5 growth
  over 2006)
• Applicants paid on average 3,549 CHF for an
  international registration
• 81 of registrations were less than 5,000 CHF
• An average of 8.4 designations were made per each
  registration

11

• more information at
• www.wipo.int/export/sites/www/madrid/en/statistics
  /pdf/summary2007.pdf

12

• Recent Work
• WIPO Standing Committee on the Law of Trademarks,
  Industrial Designs and Geographical Indications
  (SCT)
• (international norm-setting)

13

• The Singapore Treaty on the Law of Trademarks
• adopted on March 27, 2006

14

• The Singapore Treaty
• Revised Trademark Law Treaty (1994)
• Objective harmonization and simplification of
  administrative requirements relating to the
  registration of marks
• Mostly procedural aspects

15

• Procedures covered
• application for registration
• appointment of a representative
• changes in name or addresses
• correction of mistakes
• transfer of ownership
• renewal of registration
• relief measures
• recording of licenses

16

• Ongoing Work
• Results of a survey Questionnaire on Trademark
  Law and Practice
• Replies received from 73 Member States and three
  intergovernmental organizations
• Document WIPO/Strad/INF/1, available at
  www.wipo.int/sct/en

17

• Ongoing Work
• Since November 2006
• Non-Traditional Marks (graphic representation)
• Trademark Opposition Procedures (possible areas
  of convergence)
• Improvements in the Administration of Article
  6ter PC
• - Database
• - Communication Procedures

18

• Thank you!
• martha.friedli_at_wipo.int