The International System of Registration of Marks

 N e w s l e t t e r

INTRODUCTION

In today’s highly competitive marketplace, trademarks are an indispensable business tool which enables companies to effectively market and promote their products and services within both domestic and export markets. The International Trademark Registration System (Madrid Agreement and the Protocol relating to the Agreement) administered by WIPO is a cost-effective and efficient option for businesses seeking to protect their trademarks in multiple countries.

A set of new Common Regulations under the Madrid Agreement and Protocol were adopted during the 2003 Assembly of the Madrid Union. The new Common Regulations came into force on April 1, 2004. Important modifications were introduced to the Common Regulations such as the inclusion of Spanish as a third working language of the Madrid Protocol as well as amendments, accommodating a number of specific features of the Community Trade Mark Regulation, in order to facilitate the accession of the European Community to the Madrid Protocol. For more extensive information on the Madrid System, please browse through this site : http://www.wipo.int/madrid/en/.

MEMBER STATES OF THE MADRID UNION AND ACCESSIONS IN 2004

When the Protocol entered into force in December 1995, four States were party to it (China, Spain, Sweden and the United Kingdom), whereas the number of its Contracting Parties is 65 at present. During the first semester of the year 2004, Croatia, Namibia and the Syrian Arab Republic joined the Madrid Protocol, with Namibia and the Syrian Arab Republic also adhering to the Madrid Agreement. The trend towards accession to the Madrid System is clearly continuing. The European Community deposited its instrument of ratification to the Madrid Protocol on July 1, 2004. The Madrid Protocol will enter into force with respect to the European Community on October 1, 2004. With respect to Israel, there are encouraging signals that accession to the Madrid Protocol may materialize soon. Concerning Azerbaijan and South Africa, the consideration of a possible accession to the Madrid Protocol appears to be in an advanced stage. The overall number of Madrid Union members at present is 76 countries (45 bound by the Agreement and the Protocol, 11 bound by the Agreement only and 20 bound by the Protocol only). The list of Contracting Parties is available as an Annex at the end of this document.

INTERNATIONAL REGISTRATIONS DURING 2003

During the course of the year 2003, the International Bureau of WIPO received and examined more than 23,872 applications and recorded and published 21,851 registrations. Since applicants designate on average 12 countries in an international registration under the Madrid System, these international trademark registrations represent approximately 262,000 national trademark applications. The International Bureau further dealt with 6,640 requests for renewals, 8,743 requests for subsequent designations and some 54,724 modifications. It further processed 101,907 decisions by designated Contracting Parties, such as provisional refusals, final decisions concerning provisional refusals and statements of grant of protection. Compared to the year 2002 and despite a slight decrease in the number of new registrations, the total number of transactions under the Madrid System, in 2003, continued to increase for the sixth consecutive year. At the end of 2003, the International Register contained a total of some 412,000 registrations in force (representing some 4.8 million national registrations).

The largest number of international applications filed in 2003 came from users in Germany (4,999 or 22.9%), France (3,281 or 15%), Switzerland (2,204 or 10.1%) and the Benelux (2,104 or 9.6%).

The top twenty users of the Madrid System in 2003 were: 

Henkel, Sanofi, Unilever, Janssen Pharmaceutica, L’Oréal, Nestlé, Bayer, Novartis, Siemens, ITM, Boehringer, Biofarma, Philips Electronics, BASF, Novartis, Merck, Syngenta, Fiat, Kodak and Bongrain.

Moreover the Madrid System is also widely used by SMEs. Among the owners of the trademarks that are internationally registered, more than 90% own less than 10 such registrations.

INFORMATION TECHNOLOGY SERVICES UNDER THE MADRID SYSTEM

The Madrid System’s Paperless Office

The Common Regulations under the Madrid Agreement and Protocol allow the International Register to be kept in electronic form.¹ WIPO has developed information technology systems – a combination of software tools and electronic databases – to enable staff of the International Bureau and users of the Madrid System to benefit from new efficiencies. WIPO now processes all international applications, subsequent designations and all actions related thereto in a “paperless” environment. Paper documents are scanned and indexed immediately upon receipt by WIPO. The subsequent processing of the documents is based on their facsimile images, which are accessible from computer workstations. From beginning to end, the facsimile images of the documents are under the control of an electronic process management system until processing is complete, the relevant data being entered in the (electronic) International Register. At this point, the facsimile image of each document is permanently archived in an optical storage device.

Electronic Communications

The rules of the Madrid System also allow for electronic communications between WIPO’s International Bureau and the Offices of the Contracting Parties.² The International Bureau has established, in cooperation with various interested offices, a standard for electronic communication based on XML (Extensible Markup Language) techniques. The resulting electronic communication standard is known as the MECA (Madrid Electronic CommunicAtions) system.

By June 2004, 30 offices had received official notifications in electronic form, while four offices (Australia, Benelux, Switzerland and the Korean IP Office) also transmitted international applications and other requests for recording in the International Register by electronic means. The challenge for WIPO is to persuade as many offices as possible to establish electronic communication systems with the International Bureau, with the ultimate aim of reducing operating costs and offering Madrid System users a service that is speedier and still more cost-effective.

Electronic Publication

For the benefit of the users of the Madrid System, the International Bureau also issues various information products relating to the international registration of marks. The WIPO Gazette of International Marks is published, since April 1, 2004, once a week in paper form and on CD-ROM on a four-weekly cumulative basis, thus enabling the searching of the Gazette by electronic means. The CD-ROM publication is cumulative over a calendar year, with the last CD-ROM published for a given year providing an annual index relating to the Gazette. The Gazette shows various procedures (new international registrations, subsequent designations, refusals, changes, renewals, etc.) as they occur, as opposed to the state of the International Register at a given moment.

ROMARIN, a DVD-ROM publication that contains data relating to all international registrations in force, is issued on the same four-weekly basis as the CD-ROM version of the WIPO Gazette. ROMARIN reflects the state of the International Register at a given moment. The ROMARIN DVD-ROM includes a search engine enabling sophisticated searching of both bibliographic and image data. Subscribers to ROMARIN may also download from the Internet daily or weekly updates of changes made in the International Register but not yet included on the DVD-ROM, thus ensuring that they have access to the most up-to-date information.

Data concerning all international registrations currently in force, as well as international applications and subsequent designations received but not yet recorded, are also made available for searching in electronic form on the Internet through the Madrid Express as part of the Industrial Property Digital Library (IPDL) at http://ipdl.wipo.int. Madrid Express is updated daily.

Other Information Services

WIPO provides a free-of-charge information service on legal and procedural issues concerning the Madrid Agreement and Protocol for users of the Madrid System as well as for the general public. WIPO is not competent to advise particulars on the implementation and interpretation of the Madrid System by the Contracting Parties, insofar as it is a matter for their national legislation. Approximately 40 messages are received daily asking a variety of questions, which go from very specific queries such as current international filing procedures, modifications of international registrations, applicable fees, to questions of a more general nature, such as in relation to the legal framework and membership of the Madrid System. The Sector of Trademarks, Industrial Designs and Geographical Indications is responsible for providing such information. Queries can be sent to the following electronic address: intreg.mail@wipo.int.

OUTLOOK

The most recent developments concerning accession to the Madrid System demonstrate that the system is developing in the right direction. However, there are many challenges ahead. WIPO will not content itself with merely pursuing the enlargement of the membership of the system, but will examine its current functioning and introduce changes to it that will enhance its acceptance as a truly global filing and registration system.

Work in this respect has already started. It concerns, in particular, communications between WIPO, on the one hand, and national offices, trademark owners and their representatives, on the other; the access to international application and registration data; the availability of information on the practices and procedures of the designated Contracting Parties; and the evolution of the legal framework of the Madrid System as a whole. The guiding principle, as always, is to make the system simpler, more user-friendly and more cost-effective.

The ever-increasing use of the Madrid System requires a constant review of the existing information products. Starting with the widely used Madrid System home page (http://www.wipo.int/madrid/en/), a sub site of the main WIPO Web site at www.wipo.int, we are developing an additional number of features which will enhance the flow of information between WIPO, national or regional Offices of Contracting Parties and trademark owners and their representatives. We have already introduced an e-mail subscription service, which will alert subscribers by e-mail every time a new information notice concerning the Madrid system is issued.

In addition, a search engine is created for retrieving information notices. The Guide to the International Registration of Marks has been re-edited and supplemented by information on individual Contracting Parties. This information was compiled with the help of the offices of the Madrid System members and is now accessible on-line and updated regularly.

Information concerning international registrations, which is currently available free of charge via the Madrid Express on-line database and by subscription via the ROMARIN DVD-ROM, will be expanded and presented in a more user-friendly manner.

UPCOMING EVENTS

• Seminar on the Madrid System of International Registration of Marks (in English), Geneva, Switzerland, October 5 and 6, 2004
  
• Conference on the Accession of the European Community to the Madrid Protocol (in English, French and Spanish with simultaneous interpretation), Geneva, Switzerland, October 7, 2004.

(A): only the Agreement applies

(P): only the Protocol applies

(A&P): both the Agreement and Protocol apply

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^* Belgium, Luxembourg and the territory of the Kingdom of the Netherlands in Europe have a unified legislation on trademarks and a common office for the registration of trademarks under that legislation (Benelux Office). Under the Madrid System, protection shall be requested as if they were one country (Benelux). Their designation shall be subject to payment of a single complementary or individual fee.

^** The Netherlands Antilles is a territory of the Kingdom of the Netherlands to which Benelux trademark law does not apply, but which has its own trademark law and its own office for the registration of trademarks under that law. Protection in respect of the Netherlands Antilles shall be requested through a specific designation under the Protocol, distinct from that of the Benelux.

¹ Rule 1(xxiv) of the Common Regulations under the Madrid Agreement and the Protocol provides that “International Register” means the collection of data maintained by the International Bureau, irrespective of the medium in which such data are stored.

² Section 11 of the Administrative Instructions for the Application of the Madrid Agreement and Protocol provides that, where an office so desires, communications between that office and the International Bureau shall be by electronic means in a way agreed upon between the International Bureau and the office concerned.