World Intellectual Property Organization

Trademarks: Bumper Year for Madrid System

March 2005


“The biggest advantage is cost, especially with assignments, changes of names, etc. This prompts us to use Madrid even if we plan to designate two countries.” – Jane Collins, Head of Trademarks for Swiss-based agrochemical giant, Syngenta Crop Protection AG

After years of only modest growth, WIPO’s international trademark registration system, the Madrid System, shifted gear in 2004 to record a 23.5 percent increase in trademark applications. The up-turn appears set to continue as the snowball effect of significant new country accessions gathers momentum.

Why the surge? Success is now breeding success. With the newest members taking the total number of contracting states to 77, the Madrid System is becoming an increasingly attractive option for companies seeking trademark registration in multiple countries. This is all the more so following three major advances within the past 18 months:

The accession of the United States of America (U.S.) to the Madrid Protocol in November 2003 has brought a big influx of new users. These include not only U.S.-based companies able to use the system for the first time, but also users from the rest of the world who can now take advantage of the Madrid system to seek trademark protection in the U.S. market. Within 12 months of joining, the U.S. had filed over 1,700 international applications, making it already the sixth biggest user in 2004.

The introduction of Spanish as the third filing language under the Madrid Protocol in April 2004 has made the system more accessible to a much broader range of users. It should, moreover, smooth the path for what WIPO hopes will be a succession of new members from the currently under-represented Latin American region.

The accession of the 25-country European Community bloc in October 2004, together with the link to the Community Trademark (CTM), increased use and gave added flexibility to users of both the Madrid and the CTM systems.

Faster, simpler, cheaper

The reputation of the Madrid system is spreading as a cost-effective, flexible and administratively efficient alternative to multiple national applications. A single international Madrid application has the same legal effect as a national application in as many of the 77 contracting states as the applicant designates. No need to pay local agents to file applications in each country. No translation of the paperwork into several languages. A fixed (12 or 18 month) deadline for refusals. Time and cost savings begin from the outset. A typical applicant, designating 12 countries for registration, can expect to find a Madrid application more than six times cheaper than the alternative1. Further down the line, the administration of renewals, amendments, transfers and so on, is also massively simplified: a single renewal date; a single transaction to change company details. The same, typical applicant stands to save over 20 times the cost of filing a change in ownership.

For Member States, too, the benefits are significant. Accession to the Madrid System stimulates overall trademark activity. The number of foreign marks filed as designations usually far exceeds any reduction in filings via the national route. Easier access to trademark protection in other countries helps national enterprises to market themselves abroad. The national trademark office is spared the tasks of formally examining, classifying and publishing international applications, all of which is handled by WIPO, but is compensated for the work it undertakes by the distribution of designation fees.

The multilingual staff of the WIPO International Bureau have a wealth of experience in processing applications and answering inquiries. Through seminars, newsletters, website, and direct contacts, they provide detailed information services to users and trademark offices. The Madrid Express provides free electronic access to details of trademarks recorded in the International Register. The new, improved ROMARIN offers a more sophisticated, subscription-based database.

New ROMARIN - improved database

Among major improvements to Madrid user-services is a powerful new version of the international trademark database, ROMARIN. The subscription-based database gives access to details of the more than 427,000 internationally-registered trademarks currently in force in the International Register. It is available both online and on DVD, in English, French and Spanish. ROMARIN offers a more sophisticated service and access to greater detail than WIPO’s alternative, free-of-charge database, the Madrid Express.

The old ROMARIN (Read-Only Memory of Madrid Active Registry Information), set up in 1992, was available to subscribers on CD-ROM only. Increasingly expensive to maintain, it had clearly had its day by the time the need arose in 2003 and 2004 to implement a raft of software changes following the introduction of new regulations and Spanish as a third working language into the Madrid System. WIPO took the opportunity to canvas subscribers and refine the requirements. In response to overwhelming user-demand for an online version, the new ROMARIN, using web-based technology, was launched in October 2004.

Users immediately felt the benefit with subscription fees slashed by 25 percent for the DVD, and subscription to the online version for well under half the price of the old service. The online version is updated daily, giving users access to details of the latest registrations and amendments well before their publication in the WIPO Gazette of International Marks. Other improvements include a search choice between a simple search, and a powerful, advanced search of all the indexes. Users can also select different display options (full, summary or countries) according to their needs.

 

Users and would-be users

“Speedy registration means more business certainty.” Jane Collins, Head of Trademarks for Swiss-based agrochemical giant, Syngenta Crop Protection AG, speaks of multiple advantages of the Madrid System for Syngenta, owner of some 32,000 trademarks in 140 countries. She highlights corporate restructuring examples, in which the Madrid’s central administration for recording changes saves millions of Swiss Francs.

“(The Madrid) is good for the price and quick. It is particularly quick and simple to claim priority, as no extra papers are needed. Another advantage is the simplicity of recording transfers and licenses. It is… very convenient, really fantastic.” An enthusiastic François Griesmar of the French-based Groupe Danone has been using the Madrid system for 30 years to manage the company’s portfolio of international brands in the food industry.

“The ideal for our Group and for the industrial sector would be Brazil’s accession to the Madrid Protocol… It would allow us to expand our trademark… and reduce our costs for obtaining such protection. The management of our trademark portfolio would be simpler, easier and more efficient.” Natan Baril, IP Counsel of The Boticário Group. Boticário, specializing in beauty products, is one of the largest trademark owners in Brazil, selling more than 650 of its trademarked products around the world. Baril was interviewed in Managing IP (MIP, www.managingip.com December 2004/January 2005).

Big or small - a flexible system for all

The above testimonials make clear the advantages for multinational businesses handling large, multiple trademark portfolios. But the Madrid System is far from the preserve of the big leagues. For small businesses, the cost and administrative savings, as well as the ease of access to foreign jurisdictions, are proportionally even more critical to profit margins. It is not surprising, therefore, that of the 138,280 companies with trademarks currently in force in the International Register, only 21 companies have over 500 marks registered; whereas a striking 96 percent of users have registered one to ten trademarks, the majority being small and medium-sized enterprises (SMEs).

A browse through the International Register quickly gives a feel for the diversity of the users. Here is a selection:

China shot into the top 10 country-users in 2004 with a 115 percent increase in applications. Among the latest raft of applicants are the Zheijiang Zhuoling Shoes Co., Ltd. of Munan Village, Zhejiang; and top foodstuffs exporter the China National Cereals, Oils and Foodstuffs Import and Export Corporation. The latter designated over 80 countries for protection of its Greatwall Brand.

The first published trademark application from Kenya, following accession to the Madrid Protocol in June 2004, was Tropical filed by Kenya Sweets Ltd.

The Republic of Korea joined the Madrid System in 2003. But Samsung Electronics Co. Ltd., now the System’s biggest Korean user, have used their German subsidiary to access the Madrid route since 1989. Here is Samsung’s Natural Color trademark for computer monitors, filed in 2003 for protection in 20 countries.

Iran also joined in 2003. The food and soft drink company, Zam Zam Iran Co, have registered internationally their Zam Zam trademark, named after the spring water at the Islamic holy site of Mecca in Saudi Arabia.

Australian-based companies are becoming enthusiastic Madrid users, filing twice as many applications in 2004 as in the previous year. The Australian Rugby Union Ltd. registered their Wallabies logo within the first year of Australia’s 2001 accession to the Protocol.

Users from the Baltic States include Latvian tinned fish producer, Brivais Vilnis, and Air Lithuania, whose elegant mark was registered in 2004.

Companies from the Netherlands, one of the Benelux founding members of the original Madrid Agreement in 1891, have been filing for over 100 years. Friesland Brands’ Victoria mark for Dutch Edam and Gouda cheeses will have something to crow about as it celebrates its 50th year in the international register next year.

Future challenges

The Madrid System is beginning to come into its own. WIPO will continue in 2005 to encourage new accessions – particularly in under-represented regions - in order to ensure that user-interests are served through an optimal geographical spread. Meanwhile, WIPO’s International Bureau is working with users to maintain the efficiency of its services within an expanded system.

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1. WIPO statistics, calculated on the model of Morocco-based applicant seeking protection in Austria, Benelux, Germany, Italy, Hungary, France, Spain, Czech Republic, Romania, United Kingdom, Slovenia and Switzerland.

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