General Overview of the Madrid and the Hague Systems for the International registrations of Trademarks and Industrial Designs

Transcription

1 General Overview of the Madrid and the Hague Systems for the International registrations of Trademarks and Industrial Designs GRUR Annual Meeting Yves Closet, Head Information and Promotion Section, The Hague Registry Frankfurt, September 27, 2012

2 Two Topics TOPIC Nr. One: The Hague System for the International registration of Industrial Designs TOPIC Nr. Two: The Madrid System for the International Registration of Trademarks

3 Steve Jobs: «Design is the fundamental soul of a manmade creation» Steve Jobs (biography by Walter Isaacson), p.343: In most people s vocabularies, design means veneer. But to me, nothing could be further from the meaning of design. Design is the fundamental soul of a man-made creation that ends up expressing itself in successive outer layers. Apple Inc.: The process of designing a product was integrally related to how it would be engineered and manufactured.

4 Courtesy of Apple Inc. Cupertino, US DM/ Cl «Adapter Plug»

5 International Protection of Industrial Designs WIPO Director General Francis Gurry: Design is one of the principal means of differentiating a range of mass produced household and consumer items, such as chairs and tables, for which the technological possibilities for development have been exhausted. DM/ DM/ «Chair» «Chair»

6 Design is one of the principal means of differentiating DM/ «Chair» Description: «Chair design representing a stylized spike-heel shoe.»

7 International Protection of Industrial Designs WIPO Director General Francis Gurry: The intellectual property system encourages designers to produce attractive items that are easier, more comfortable and safer to use, by helping to protect original designs against unauthorized copying and imitation. In international markets, companies need to be able to protect their designs quickly and costeffectively in several countries.

8 1. Objectives of the Hague System

9 Hague System: A Simple, but Timeless Concept The centralized acquisition and maintenance of industrial design rights by filing a single international application for a single international registration with effect in one or more designated Contracting Parties

10 Independent Filings v. Hague Route International Bureau of WIPO

11 2. Legal Framework

12 Hague System for the International Registration of Industrial Designs Hague Agreement London Act (1934) frozen as from January 1, 2010 Hague Act (1960) Geneva Act (1999) Entered into force on December 23, 2003 Operational on April 1, 2004 Common Regulations (1996) Last revised: January 1, 2012 Common definitions Differentiates requirements Administration Instructions (2002) Last revised: January 1, 2012 National Laws and Regulations

13 3. Going Global Geographical Scope

14 Hague Union 45 Geneva Act (1999) (including EU and OAPI) 15 Hague Act (1960) 60 Contracting Parties

15 Geneva Act: Major Potential Accessions Republic of Korea announced its accession Japan actively considering accession China discussing accession to the Geneva Act with WIPO USA bill has been prepared

16 What is the Hague System? One to Many Relationship File a single international application for a single international registration (IR) in which one or more Contracting Parties (CP) are designated Bundle of Rights If no refusal is issued, the resulting international registration has the effect of a grant of protection in each designated Contracting Party

17 ... And What it is Not. Since the Hague System is primarily a procedural arrangement, it does not determine: the conditions for protection; the refusal procedure to be applied when deciding whether a design may be protected; or the rights which result from protection. Such issues are governed by the law of each Contracting Party designated in an international registration

18 Key Principles No need for a basic application/registration Designation of the Contracting Party of the holder possible Most international applications are filed directly with the International Bureau (not via an Office) E-filing and E-renewal available Subsequent designation is NOT possible

19 Who can use the Hague System? Hague System = closed system: Entitlement to file an international application: the applicant needs a connection with a CP via nationality, domicile, real and effective industrial or commercial establishment, or habitual residence (Geneva Act only) Only CPs may be designated

20 Main Advantages of the Hague System

21 When Filing ONE international application ONE international registration for all the designs included in the application In ONE language (English/French/Spanish) Payment of ONE set of fees Payment in ONE currency (= Swiss francs) Filed with ONE office (International Bureau - WIPO)

22 Filing the International Application Closed system Entitlement needed: connection between the applicant and a CP via a real and effective industrial or commercial establishment, domicile, habitual residence (Geneva Act) or through nationality Only CPs of the Hague system may be designated Prior national application or registration not needed «Self-designation» is possible (i.e. designation of the Contracting Party from which entitlement is derived)

23 Protection in the EU and more NO EM* UA CH HR EM - European Union* HR - Croatia NO - Norway UA - Ukraine CH - Switzerland TR - Turkey TR

24 Why file via the Hague System to get a RCD (Registered Community Design)? Fees often lower (i.e. 5 designs, 3 reproductions each 1,173 CHF) Unlimited number of reproductions for each design A single International Registration for subsequent management of RCD Possibility to enlarge the geographical scope to neighbouring countries

25 Formal Examination by IB IB examines formalities only Substantive grounds, such as novelty, not considered by the International Bureau Recording in the International Register Registration certificate sent to holder Publication in WIPO International Designs Bulletin Immediate publication at applicant s request Deferred publication and payment of related fees at applicant s request

26 Publication in WIPO International Designs Bulletin Effects of the international registration at this stage Same effect as a regularly filed national application in all Designated Contracting Parties

27 Substantive Examination by Designated Contracting Party Substantive examination, if any, undertaken by the Office of a designated Contracting Party as provided by its national law Refusal must be sent to the IB within the set time limits from the date of publication of the international registration Holder has same remedies as would have been available if filed as a national application If not refused, or if refusal withdrawn, the IR produces the same effect as a grant of protection under the national law

28 Central Management ONE request filed within the International Bureau in case of: Change in ownership Change in the name or address of the holder Renunciation Limitation ONE renewal request

29 General Advantages National/Regional Route International Route Many Offices for filing Many languages Many currencies Many registrations Many renewals Many modifications Foreign attorney or agent (first needed at filing) One Office for filing One language One currency One int. registration One renewal One modification Foreign attorney or agent (first needed if refused)

30 Hague System is Cost-effective and efficient, thereby creating opportunities that would not otherwise exist for any enterprise with a limited IP budget Flexible affording right holders great flexibility in targeting national, regional or global markets for particular goods

31 6. Latest Developments

32 Optional notification of statements of grant of protection since January 1, 2009 Spanish added as working language as of April 1, 2010 E-renewal interface fully operational in December 2010 Weekly publication of the International Designs Bulletin as from January 2012 New rule to refuse the effects of the recording of a change in ownership in January 2012

33 7. Future Developments of the Hague System

34 Improvement of the e-filing interface through creating user accounts in 2012 Improvement of the layout of the International Designs Bulletin in 2012 Working Group on the Legal Development of the Hague System (next meeting in November 2012)

35 Thank you Questions welcome!

36 The Madrid System for the International Registration of Marks Yves Closet, Head, Information and Promotion Section, The Hague Registry Brands and Designs Sector, WIPO Frankfurt, September 27, 2012

37 Routes for Protecting Trademarks Abroad National route: filing applications with the Trademark Office of each country in which protection of the mark is sought Regional route: apply for protection in countries which are members of a regional trademarks registration system with effect in the territories of all Member States (ARIPO, Benelux Trademark Office, OHIM and OAPI) International route: the Madrid System

38 Madrid System for the International Registration of Marks An optional route facilitating businesses in protecting trademarks abroad recognized by users for its simplicity, time and costeffectiveness, flexibility and user-friendliness

39 Objectives A simple, low-cost and effective system to facilitate trademark protection in export markets through: one central filing and registration procedure producing effects in one or more territories bound by the system one central procedure to maintain and manage an international registration with effects in all territories concerned

40 Concept: Many Routes or One Route National Routes National Registration National Registration National Registration Madrid Route National Protection National Protection International Application International Registration = National Application National Application National Registration National Protection Bundle of National Applications / Registrations

41 Concept II: Go National or International/Madrid Route? National Route Madrid Route Many Offices for filing Many application forms Many languages Many currencies Many registrations Many renewals Many modifications Foreign attorney needed from filing stage One Office for filing One single application form One language (E/F/S) One currency (Swiss francs) One international registration One renewal One modification Foreign attorney first needed in case of refusal

42 Legal Framework Madrid Agreement (1891) latest revised in 1979 Madrid Protocol (1989) latest revised in 2007 Common Regulations as in force from January 1, 2012 Administrative Instructions as in force from January 1, 2008 Law and Regulations of each Contracting Party See at

43 Legal Framework (II) Madrid Treaties and Regulations providing the basic principles and mechanism of the system; governing the formal conditions for an international registration Domestic Law and Regulations of a Contracting Party governing the substantive conditions for granting protection in each relevant territory

44 Geographical Scope Madrid Union as of August Agreement only 31 Protocol only (including EU) 55 Agreement and Protocol 87 Members

45 Geographical Scope (III) Recent accessions to the Madrid Protocol: 2011: Tajikistan (with effect from June 30, 2011) 2012: Philippines (with effect from July 25, 2012) Colombia (with effect from August 29, 2012) Future accessions to the Madrid Protocol: Algeria closing of the Madrid Agreement? ASEAN-countries (by 2015) Barbados, Jamaica, Trinidad and Tobago (by 2014) Costa Rica and Dominican Republic India, Pakistan New Zealand Malta Mexico South-Africa

46 Basic Features Basic application or basic registration ( basic mark ) in a Contracting Party to the Madrid System and Connection between a holder named in the basic mark and that Contacting Party (establishment, domicile, or nationality) are needed Filing through an Office of origin Designation of one or more other Contracting Parties with a common treaty (a self-designation is not possible)

47 Basic Features (II) Fixed time limits for granting or refusing protection by designated Contracting Parties 10 year term of protection with the possibility of renewal Subsequent designation is possible Centralized management of international registrations

48 Basic Features (III) Dependence on the basic mark for 5 years Ceasing of effect of the basic mark Possibility of transformation of an international registration into national or regional applications

49 Advantages of the Madrid System Direct Filing Madrid Protocol Fees Languages Higher filing and maintenance fees* Different currencies Many languages Lower filing and maintenance fees One currency (Swiss francs) One language (English, French or Spanish) Procedures Many procedures One single procedure Renewal Dates Many renewal dates One renewal date Time for granting/ refusing protection Many periods of time, possibly unpredictable A relatively short period of time (predictable) * If registration is desired in only one country, direct filing may be more cost effective.

50 Benefits for Trademark Owners Simplicity A single set of simple formalities A single filing Office Cost Savings Low registration fees No need to pay foreign agents for filings No need to pay translation of the paperwork into several languages Effectiveness A single international application produces simultaneously the same legal effect in many designates CPs A fixed deadline for confirmation or refusal the legal effect in each designated CP concerned All subsequent changes to the international registration may be recorded and have effect through one single procedure

51 Benefits for Trademark Owners (II) Flexibility Choice among the CPs in which protection is sought Possibility of limitation of the scope of protection, renunciation or cancellation of the IR User-Friendliness Strong focus on a customer-oriented policy Availability of different free of charge online tools and services supporting trademark holders in registering and managing their IRs Continuous automation of the procedures under the Madrid System

52 Recent Developments Customer-oriented policy General inquiries regarding the Madrid System: Madrid Customer Service: Specific international applications/registrations: madrid.team2@wipo.int, madrid.team3@wipo.int, Automation of the procedures under the Madrid System Madrid Portfolio Manager Madrid Electronic Alert System Madrid Real-Time Status

53 Recent Legal Developments New Rules, in force since September 1, 2009, for improved communications: New statement of Grant of Protection (mandatory as from January 1, 2011); Clearer rules regarding communications concerning the final disposition of the mark New model forms recommended by the Assembly of the Madrid Union for the notifications of provisional refusals, interim and final status of the mark, further decisions and ceasing of effect New model provisions for replacement and transformation

54 Working Group, July 2 to 6, 2012 Proposed Amendments to the Common Regulations under the Madrid Agreement and the Madrid Protocol Information Relating to the Review of the Application of Article 9sexies(1)(b) of the Madrid Protocol Proposal for the Introduction of the Recordal of Division or Merger concerning an IR before the Office of a Designated CP Review of the Proposal on Translations Requested by the Madrid Union Assembly

55 Web-based User Services International Application Simulator shows step by step how to use the Madrid system to seek protection of a trademark abroad. It also helps to estimate the cost of the specific international application Fee Calculator helps to calculate the cost of an international application, subsequent designation or renewal of an international registration E-Payment allows to pay fees as notified in irregularity letters or other WIPO communications with regard to international applications or registrations E-Renewal facilitates renewal of international marks by means of online payment by credit card or through a current account opened with WIPO

56 Web-based User Services (II) Goods and Services Manager On-line tool designated to assist trademark applicants in compiling the list of goods and services for the purpose of filing an international application Includes the terms from the Nice Classification (10 th edition as of January 1, 2012), frequent terms extracted from the Madrid International Register and terms from other databases (such as Trilateral list (US, EM, JP) and USPTO) accepted by the International Bureau as correctly classified Allows to reduce irregularity notices issued by the IB regarding the classification of goods and services Lists can currently be compiled in one of ten languages including English, French, Spanish, Arabic, Dutch, German, Hebrew, Italian, Portuguese and Russian and translated into three Madrid working languages (English, French or Spanish)

57 Web-based User Services (III) Madrid Real-time Status (MRS) provides the status in real time of trademark documents being processed by the International Bureau of WIPO Madrid Electronic Alert (MEA) allows users to create a list of international registration numbers of particular interest and to be informed by each time an inscription concerning one of them is recorded in the International Register Madrid Portfolio Manager (MPM) allows holders of international registrations and their representatives to access their international trademark portfolios in order to view and modify the international registrations concerned

58 Web-based User Services (IV) International Trademarks Search ROMARIN contains information regarding all international marks recorded under the Madrid System, that are currently in force in the International Register or have expired within the past six months; data relating to international applications, subsequent designations and limitations that are still under the examination process within the International Bureau Global Brand Database makes easier to search multiple brand-related data sources with regard to: International trademarks (Madrid System); Armorial bearings, flags and other State emblems (6ter of the Paris Convention); Appellations of Origin (Lisbon System); Data collections of some national registries (currently, Algeria, Canada, Morocco)

59 Web-based User Services (V) Electronic Notification Service enables the electronic communication between the International Bureau of WIPO and applicants and holders of international registrations Translation Request Since January 1, 2012, some documents have only been translated into the language of the international application and/or the language of communication chosen by the Office(s) concerned. Translation into other official Madrid working languages may be requested by completing the form available at The requested translations will be published in ROMARIN within 2 weeks.

60 Useful Links Legal Texts and Guide WIPO E-Gazette of International Marks Country Profiles Information Notices Madrid Dynamic Statistics

61 International Procedure: Overview Precondition: basic application or basic registration OFFICE OF ORIGIN Certifies entitlement/basic mark and forwards the application to the IB INTERNATIONAL BUREAU Formal examination Records in the International Register Publishes in the International Gazette Notifies designated Contracting Parties OFFICE OF DESIGNATED CONTRACTING PARTY OFFICE OF DESIGNATED CONTRACTING PARTY Substantive Examination Grant of protection = effect of national registration? Provisional refusal within time limits

62 Certification in the Office of Origin O/O certifies: the date on which the O/O received the international application; that the applicant is the same as the owner of the basic application/registration; that the mark is the same as in the basic application/registration; that the goods and services are covered by the list of goods and services appearing in the basic application/registration

63 Process in the IB: Registration Flow No Irregularities REGISTERED Scanning Reception of the request Data entry Distribution Formal Examination Finance processing Translation Irregularities Correction within time limits Vienna Classification Entitlement of the applicant Designated Contracting Parties Classification of goods/services Fees paid REGISTERED or ABANDONED No correction within time limits

64 Process in the IB (II) Recording in the International Register Sending a certificate to the holder Publication in WIPO E-Gazette of International Marks Notification of the designated CPs

65 Date of an International Registration Reception of an International Application by the IB within two months from the date of reception by O/O - date of IR will be the date of reception by O/O Reception of an International Application by the IB later than two months from the date of reception by O/O - date of IR will be the date of reception by the IB

66 Effects of the International Registration The International "Registration" = a National Application until the expiry of the time limit to issue a refusal a National Registration once the time limit to issue a refusal has expired (assuming no refusal or refusal withdrawn)

67 Following the 1 st Office Action: Confirmation of Effects of IR by DCPs The International Bureau: Records it in the International Register Notifies the holder (representative) Publishes the received information in WIPO E-Gazette

68 Following the 1 st Office Action: Provisional Refusal Notified by DCPs The International Bureau: Records it in the International Register Notifies the holder (representative) Publishes the received information in WIPO E-Gazette

69 Following the 1 st Office Action: Upon Receipt of Provisional Refusal The holder? Advised to contact a local IP agent Shall respond to the provisional refusal within time limit provided by the domestic legislation of the DCPs Shall follow procedures provided by national laws including appointment of a local representative if required

70 Questions?

71 Thank you!