India and the Madrid ProtocolAn update on the Madrid system
AIPPI, HyderabadOctober 14, 2011Debbie Roenning
Director, Legal Division, Brands and Designs Sector
The Madrid System
A centralized filing mechanism
A one-stop shop for trademark holders to obtain and maintain trademark protection in export markets
An option to the national route
A purely procedural treaty
The domestic legislations of the designated Contracting Parties set the conditions for protecting a trademark and determine the rights which result from protection
Madrid System
1 Agreement only29 Protocol only (including EU)55 Agreement and Protocol
85 Members
Accessions
Recent accessions to the Madrid Protocol2010: Sudan, Israel, Kazakhstan2011: Tajikistan (as of June 30, 2011)
Future accessions?Colombia, Costa Rica and Dominican RepublicASEAN countries by 2015IndiaSouth-AfricaBarbados, Jamaica and Trinidad & Tobago MaltaNew Zealand
Basic featuresEntitlementAn international application may be based on one or more applications or registrationsThe fees payable in connection with the application
The basic fee (CHF 653 or 903)A complementary fee for each designated Contracting Party with supplementary fee OR individual fee
Scope of protection – to be determined by designated Contracting PartyThe Contracting Party may elect for 12/18 months refusal period
Basic features (2)
Statement of grant of protection
Subsequent designation
The 5 years dependency period Central attack – Ceasing of effects (withdrawal, lapse, renunciation, final decision of rejection, cancellation or invalidation)
Transformation of the International registration into national applications
10 years term of protection with renewal every 10 years
OFFICE OF ORIGIN
Verifies, certifies and forwards the International application to the International Bureau
INTERNATIONAL BUREAU
Formal examination only.Inscribes the International registration in the International Register, publishes it in the Gazette, issues a certificate and sends notifications to the designated Contracting Parties
OFFICE OF THE DESIGNATED
CONTRACTING PARTIES
Substantive examination.Decision on refusal or granting of rights based on their domestic legislation
International Application
International Registration Procedure
The National Route vs. the Madrid Route
Many Offices for filing
Many application forms
Many languages
Many currencies
Many registrations
Many renewals
Many modifications
Foreign attorney needed from filing
One Office for filing
One single application form
One language (E/F/S)
One currency (CHF)
One international registration
One renewal
One modification
Foreign attorney first needed in case of refusal
Benefits for Trademark OwnersSimple and economical procedure
A single set of simple formalities
A single filing Office
Low registration fees
No need to pay foreign agents for filings
No need to pay translation of the paperwork into several languages
Effective procedure
A single international application produces the same legal effect in various countries
A fixed deadline for the confirmation or refusal of the legal effects in each designated country
Benefits for the Offices and Government
The Contracting Parties can focus on substantive examination
The Madrid system has a positive effect on economic growth
It empowers SMEs
It promotes international trade by contributing to the opening of new markets and assisiting in development of export
It creates a more favorable climate for foreign investment in the internal market
Benefits for Local Agents
The Madrid Protocol is optional and it does not replace the direct filing route
Applicants would need the services of local agents at filing stage or at post-registration stage
Increased designations will create more business opportunities (substantive work), like searches, refusals, oppositions, request for cancellations, dispute settlements, license and assignments contracts, and enforcement
Post-registration activity may compensate for any reduction in local filing activity
Recent developments
Mandatory Statements of grant of protection as of January 1, 2011Two anniversaries in April 2011
120 years of the Madrid system (April 14, 1891)15 years of operations of the Madrid Protocol (April 1, 1996)
Translation of certain documents upon requestStatement of grant of protection following a provisional refusalLimitation of the list of goods and services
Statistics 2010 and 2011
In 2010:
39,687 international applications filed
37,533 international registrations recorded
21,949 international registrations renewed
By end of 2010, there were 526,674 international registrations in force, equivalent to
Over 5.5 million active national/regional registrations
Involving 174, 349 trademark holders
In 2011, up + 7.4% compared to 2010
General profile 2010
37,533 International Registrations
Average Number of Designations 7
Average Number of Classes 2 to 3
Average Fee CHF 2,996
All Fees 67.9% < 3,000 CHF
Filing Contracting PartiesContracting Party of Origin 2006 2007 2008 2009 2010
Germany (DE) 5,663 6,090 6,214 4,793 5,006
European Union (EM) 2,445 3,371 3,600 3,710 4,707
United States of America (US) 3,148 3,741 3,684 3,201 4,147
France (FR) 3,705 3,930 4,218 3,523 3,565
Switzerland (CH) 2,468 2,657 2,885 2,671 2,893
Italy (IT) 2,958 2,664 2,763 1,872 2,596
China (CN) 1,328 1,444 1,585 1,358 1,928
Benelux (BX) 2,639 2,510 2,667 1,968 1,922
Japan (JP) 847 984 1,278 1,312 1,577
Russian Federation (RU) 622 889 1,190 1,068 1,218
United Kingdom (GB) 1,054 1,178 1,162 1,008 1,176
Australia (AU) 1,100 1,169 1,092 1,000 1,035
Austria (AT) 1,117 1,134 1,245 1,050 1,020
Other Countries 7,377 8,184 8,492 6,661 6,897
Total 36,471 39,945 42,075 35,195 39,687
Most designated Contracting PartiesDesignated Contracting Party 2006 2007 2008 2009 2010
China (CN) 15,801 16,676 17,829 14,766 16,143
European Union (EM) 10,640 12,744 14,502 12,564 14,604
United States of America (US) 13,994 14,618 15,715 13,406 14,252
Russian Federation (RU) 14,432 15,455 16,768 14,150 14,250
Switzerland (CH) 14,260 14,528 14,907 13,161 12,469
Japan (JP) 11,844 12,348 12,748 10,386 11,124
Australia (AU) 9,115 9,848 10,529 8,575 9,222
Republic of Korea (KR) 8,334 8,988 9,539 7,755 8,336
Ukraine (UA) 9,057 9,751 10,635 8,539 8,288
Turkey (TR) 8,958 9,377 9,844 7,942 8,210
Norway (NO) 9,102 9,346 9,787 7,627 7,503
Singapore (SG) 6,717 7,005 7,607 5,957 6,444
Croatia (HR) 6,970 7,059 7,482 5,967 5,531 Other Countries 225,501 223,374 221,002 172,549 163,100
Total 364,725 371,117 378,894 303,344 299,476
Online Information Services
Legal texts, Guide and Information NoticesWIPO Gazette of International MarksE-Renewal ToolFee Calculator: Costing serviceMadrid Simulator: On-line filing guide toolGoods & Services Manager: A WIPO-administered database of accepted indications of goods and services ROMARIN: On-line search databaseDynamic Madrid Statistics free access at http://www.wipo.int/madrid/en/
New Web based Client Services
Madrid Portfolio Manager
Will allow holders and their representatives to manage their portfolio online
Madrid Realtime Status
Will inform of status of an international application/registration (www.madrid.int/mrs)
Madrid Electronic Alert
Will inform of changes in a specific international registration
An Income-sharing system
The Madrid system is an income-sharing system
From 2005 to 2010, the International Bureau received 1,081.7 million CHF in income from its Madrid services
23.22% − 251.2 million CHF − kept by WIPO
76.78% − 830.5 million CHF − sent to the Offices
In 2010, 192.8 million CHF received as income
47.7 million CHF kept by WIPO
145.0 million CHF sent to Offices
Thank you for your attention