Record International Trademark Filings in 2011
March 12, 2012
2011 saw the highest number of international trademark applications ever filed under WIPO’s Madrid System for the International Registration of Marks (“Madrid system”) with 42,270 applications, or a 6.5 % increase compared to 2010. Applications from the member states of the European Union (EU) accounted for more than half (57.4%) of all international trademark applications, and China remained the most designated country for trademark protection.
“The Madrid international trademark system enables individual businesses to protect their brands in line with their export strategies and provides excellent value for money. The recovery in Madrid system activity that we witnessed in 2010 was further consolidated in 2011, where a new record was established for the number of international trademark applications filed,” said WIPO Director General Francis Gurry.
(Photo: E. Berrod)
The largest growth rates amongst the top ten countries in the system came from the Russian Federation (+35.6%), followed by the European Union (+24.5%), the United States of America (+15.5%) and China (+11.5%).
International registrations recorded in the International Trademark Register increased by 8.5%, with a total 40,711 new registrations issued in 2011.
WIPO also recorded 21,754 international trademark renewals in 2011, reflecting the continued value that businesses place in their established brands, at a time when there is a level of uncertainty in the global economic situation.
International design activity also grew in 2011 with WIPO receiving 2,521 applications under the 59-member Hague Agreement Concerning the International Registration of Industrial Designs, or a 5.7% increase over the previous year.
Madrid system - Regional and national filing trends (table 1)
The top ten filers remained unchanged from 2010. However, in 2011, the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM) overtook Germany as the largest source of filings, with some 5,859 international applications in 2011, which represented a 24.5% increase over 2010.
Applicants in Germany ranked second, filing 5,000 international applications, or 11.8% of the total, whilst applicants based in the United States of America took third place and accounted for 4,791 international applications, or 11.3% of the total. France ranked 4th with 3,804 applications or 9% of the total. Switzerland continued to hold its 5th ranking with 2,933 international applications or 6.9 % of the total, followed by Italy, China and Benelux (Belgium, Luxembourg and the Netherlands).
With some 24,275 international applications, EU countries jointly accounted for 57.4% of the total in 2011. These figures include international applications filed through national European trademark offices of the countries concerned, as well as those filed through OHIM.
Top applicants and top holders
With 125 international trademark applications, Novartis (Switzerland) was the largest filer in 2011 followed by Philip Morris (Switzerland), Boehringer Ingelheim Pharma (Germany), Richter Gedeon Nyrt (Hungary), Nestlé (Switzerland), Philips (Netherlands) and BMW Aktiengesellschaft (Germany).
Henkel (Germany), with a total of 2,364 international registrations, holds the largest number of registrations under the Madrid system. The top 20 holders of international registrations at the end of 2011 were: Henkel (Germany), Janssen Pharmaceutica (Belgium), Novartis (Switzerland), L'OREAL société (France), Unilever (Netherlands), Nestlé (Switzerland), Sanofi-Aventis (France), BASF (Germany), ITM Enterprises (France), LIDL (Germany), Bayer (Germany), Boehringer Ingelheim Pharma (Germany), Siemens (Germany), BIOFARMA (France), Richter Gedeon Nyrt (Hungary), Syngenta (Switzerland), Philips (Netherlands), Philip Morris (Switzerland), Merck (Germany) and KRKA (Slovenia).
Top designated contracting parties (table 2)
When submitting an international application, applicants must designate those contracting parties in which they want their mark to be protected. Applicants can also extend the effects of an international registration to other members by filing a subsequent designation at any time during the term of an international registration. In this way, the holder of an international registration can expand the geographical scope of the protection of a mark in line with evolving business needs and export strategies.
The number of designations in new international registrations and subsequent designations in 2011 was 323,855, an increase of 8.1% over 2010.
The top 10 most frequently designated members in 2011 remained the same as in 2010, namely China (18,724 designations), the EU, the United States of America, the Russian Federation, Switzerland, Japan, Australia, Republic of Korea, Turkey, and Ukraine.
The other 40 most designated contracting parties were unchanged with the exception of Israel which was included for the first time in 24th position, Kyrgyzstan in 39th position and Uzbekistan in 40th position.
Most popular classes of goods and services
In submitting a trademark application, an applicant is required to specify the goods or services to be protected for the trademark in accordance with an international classification system known as the “Nice Classification”. The most popular classes of goods and services in international registrations recorded in 2011 were Class 9 (covering, for example, computer hardware and software) representing 8.9% of the total, Class 35 (covering services such as office functions, advertising and business management) which represented 7.3% of the total, Class 42 (covering services provided by for example, scientific, industrial or technological engineers and computer specialists) which represented 5.3% of the total, Class 25 (covering clothing, footwear and headgear) which represented 5.2% of the total, Class 41 (covering services in the area of education, training, entertainment, sporting and cultural activities) which represented 4.5% of the total and Class 5 (covering mainly pharmaceuticals and other preparations for medical purposes) which represented 4.5% of the total.
In addition to the 5.7% increase in international design applications in 2011, international registrations recorded by WIPO reached 2,363 (containing 12,033 designs), or a 6.6% growth compared to the previous year. The largest increases in the number of designs filed came from applicants in Germany (+47%), Switzerland (+18%), Norway (+112%), Croatia (+1087%), Liechtenstein (+50%), and Denmark (+216%) (table 3).
Among major users, applicants in Germany ranked first, with 3,395 designs or 28.2% of the total. They were followed by Switzerland (2,787 designs or 23.2%), the United States of America (1,287 designs or 10.7%), France (912 designs or 7.6%), Netherlands (656 designs or 5.5%) and Italy (634 designs or 5.3%). Turkey, Austria, Belgium and Spain were also among the top ten, each with more than 150 individual designs. (table 4)
The international design system also allows an applicant who does not reside in a contracting party of the Hague system to apply for protection so long as applicants have a connection to a member country – be it a state or an intergovernmental organization. This was notably the case of applicants from the United States of America.
The European Union (EU) was the most designated contracting party in terms of the number of designs for which protection was requested. Designations of the EU contained 8,440 designs (76.2% of the total number of designs). The next most designated were Switzerland with 7,593 designs (68.5%), Turkey with 4,631 designs (41.8%) and Ukraine with 2,550 designs (23 %) (table 5)
Procter & Gamble (USA) topped the list of largest users with 167 design applications received by WIPO in 2011. Procter & Gamble was followed by Swatch Group (Switzerland), Philips (Netherlands), Gillette Company (USA), Daimler AG (Germany), Nestlé (Switzerland), Vestel (Turkey), Volkswagen (Germany), LIDL (Germany) and Braun (Germany).
Packaging (mostly for foodstuff and cosmetics) and the containers for the transport and handling of goods, such as plastic bottles accounted for 13.2% of the international registrations. This was followed by clocks and watches (9.6%) and furnishing (7.3%) (table 6).
The WIPO-administered Madrid system offers a trademark owner the possibility of having a mark protected in up to 85 countries by filing one application, in one language (English, French or Spanish), with one set of fees, in one currency (Swiss Francs).
Applicants wishing to use the 85-member Madrid system must apply for trademark protection in a relevant national or regional trademark office before seeking international protection. An international registration under the Madrid system produces the same effects as an application for registration of the mark in each of the contracting parties designated in the international registration. If protection is not refused by the trademark office of a designated contracting party, or any refusal issued is overcome, the status of the mark is the same as if it had been registered by that office. Thereafter, the international registration can be maintained and renewed through a single procedure. Thus, the system provides a cost-effective and efficient way for trademark holders to secure and maintain protection for their marks in multiple countries.
The oldest international trademark registration which is still in effect belongs to Swiss watchmaker Longines. This trademark was first registered in 1893. The International Register is located at WIPO’s Geneva headquarters.
Trademarks are a key component of any successful business marketing strategy as they allow companies to identify and distinguish their marks from those of their competitors, to promote and license their goods or services in the marketplace and to cement customer loyalty.
In today’s global and electronic marketplace, a trademark is often the only way for customers to identify a company’s goods and services. Trademark protection hinders attempts to “free ride” on the goodwill of a company by using similar distinctive signs to market inferior or similar products or services. Loss, dilution or infringement of a high-value trademark could prove harmful to a business.
The Hague system offers users a cost-effective and user-friendly means of obtaining protection for an industrial design by filing a single application with up to 100 individual designs and one or more designated contracting parties. Without the system, and because industrial design protection is limited to the territory where protection is sought, a designer would have to file separate applications in each of those territories in which protection is sought, and, in some cases, multiple applications in any one territory. Under the system, a single application is made for as many members as selected by the applicant. Members’ offices then have a limited period of time to examine whether a new international registration can be granted protection in their territory. After this, the effects of the international registration are the same as if all the designs contained therein had been registered directly with each of the offices concerned.
The system thus offers both immediate and long-term advantages, particularly with respect to cost. For example, an average application made for five designs and covering the whole of the European Union plus a handful of neighboring states such as Switzerland, Turkey, Croatia and Norway would cost between three and four times less in filing fees alone than if national or regional applications were made individually with each office. Moreover, additional savings would be realized in terms of legal and related services given the preparation and prosecution of a single application in a single language dealing with a single set of requirements. Finally, considerable long-term savings would be realized with respect to the centralized maintenance and management of a single international registration for all designs in all territories.
The Hague system rests on three different versions of the Hague Agreement, which are referred to as “Acts”, and each having its own membership. Recently, efforts have stepped up to simplify use of the Hague system by focusing on the Geneva Act of 1999. Following a decision by the Assembly of the Hague Union, the freezing of the application of the 1934 Act came into operation on January 1, 2010, thus simplifying the legal framework. During 2011, the geographical scope of the Union expanded with Finland, Monaco and Rwanda joining the Geneva Act.
Number of international applications filed by Contracting Party - Shares within total filings in 2011 and growth rates as compared to 2010
Number of designations by designated Contracting Party (Includes designations in new registrations and subsequent designations) - Growth rates as compared to 2010.
Table 3 - Hague System - Number of Designs Contained in International Applications by Contracting Party of Entitlement
Shares of total filings in 2011 and growth rates compared to 2010
|Contracting Party of Entitlement||2007||2008||2009||2010||2011||Share||Growth|
|23||The former Yugoslav Republic of Macedonia||0||22||0||0||4||0.0%||-|
|25||Bosnia and Herzegovina||0||0||0||6||2||0.0%||-66.7%|
|26||African Intellectual Property Organization||0||0||7||2||1||0.0%||-50.0%|
|29||Republic of Moldova||0||32||18||22||1||0.0%||-95.5%|
|37||Bonaire, Saint Eustatius et Saba||0||0||0||0||0||0.0%||-|
Table 4 - Hague System - Number of Designs Contained in International Applications by Country of Address of the Applicant
Shares of total filings in 2011 and growth rates compared to 2010
|Country of address of the applicant||2007||2008||2009||2010||2011||Share||Growth|
|3||United States of America||0||491||983||842||1287||10.7%||52.9%|
|32||China,Hong Kong Special Administrative Region||0||0||0||0||8||0.1%||-|
|38||The former Yugoslav Republic of Macedonia||0||22||0||0||4||0.0%||-|
|39||Bosnia and Herzegovina||0||0||0||5||2||0.0%||-|
Number of Designs Recorded in the International Register by Designated Contracting Party - Growth rates compared to 2010 and designation rate in 2011
|Designated Contracting Party||2007||2008||2009||2010||2011||Growth||Designation|
|11||The former Yugoslav Republic of Macedonia||1,838||1,846||1,310||1,189||1,316||10.7%||11.9%|
|15||Bosnia and Herzegovina||0||0||304||874||1,041||19.1%||9.4%|
|21||Republic of Moldova||1,017||1,087||875||790||897||13.5%||8.1%|
|25||African Intellectual Property Organization||0||11||132||256||595||132.4%||5.4%|
|34||Democratic People's Republic of Korea||1,139||911||306||206||311||51.0%||2.8%|
|36||Syrian Arab Republic||0||187||423||193||200||3.6%||1.8%|
Registrations by class in 2011, shares of total and growth compared to 2010
Products and Services
|Class 9||Packages and containers for the transport or handling of goods.||252||313||13.2%||24.2%|
|Class 10||Clocks and watches and other measuring instruments, checking and signaling instruments.||202||226||9.6%||11.9%|
|Class 7||Household goods, not elsewhere specified.||137||165||7.0%||20.4%|
|Class 12||Means of transport or hoisting||121||141||6.0%||16.5%|
|Class 23||Fluid distribution equipment, sanitary, heating, ventilation and air-conditioning equipment, solid fuel||142||141||6.0%||-0.7%|
|Class 32||Graphic symbols and logos, surface patterns, ornamentation||103||138||5.8%||34.0%|
|Class 11||Articles of adornment||96||103||4.4%||7.3%|
|Class 26||Lighting apparatus||130||96||4.1%||-26.2%|
|Class 8||Tools and Hardware||70||82||3.5%||17.1%|
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