Madrid System for the International Registration of Marks Lilian Liu TM Dept. Lehman, Lee & Xu July 31, 2008 [email protected] .

Madrid System for

the International Registration of Marks

Lilian Liu TM Dept.

Lehman, Lee & Xu

July 31, 2008

[email protected]

www.lehmanlaw.com

Basic Ways of Overseas Trademark Registration

• 1. International organizations registration

Madrid System European Community Trademark System African Intellectual Property Organization African Regional Intellectual Property Organization

• 2. National registration

Filed separate trademark applications based on the regional characteristics of trademark protection in each country

Outline

• 1. Brief Introduction• 2. Why we apply for International

Registration of Mark under Madrid

System• 3. How to register an International

Registration of mark under Madrid

System

What is Madrid System?

The Madrid system for the international registration of marks (the Madrid system) established in 1891 functions under the Madrid Agreement (1891), and the Madrid Protocol (1989).

It is administered by the International Bureau of WIPO located in Geneva, Switzerland. 

Madrid System

• International registration system• Madrid Union

– Madrid Agreement (1891) – Madrid Protocol (1989) (1996)

– Common Regulations

• System administered by WIPO

• Only for States Party to the Madrid Union

Parties to the Madrid Union 马德里联盟的缔约国

Agreement only 8Protocol only 23Agreement and Protocol 49

Members of the Madrid Union• Albania (A&P)• Algeria (A)• Antigua and Barbuda (P)• Armenia (A&P)• Australia (P)• Austria (A&P)• Azerbaijan (A&P)• Bahrain (P)• Belarus (A&P)• Belgium* (A&P)• Bhutan (A&P)• Bosnia and Herzegovina

(A)• Botswana (P)• Bulgaria (A&P)• China (A&P)• Croatia (A&P)• Cuba (A&P)• Cyprus (A&P)• Czech Republic (A&P)• Democratic People’s• Republic of Korea (A&P)

Denmark (P) Egypt (A)Estonia (P)European Community (P)Finland (P)France (A&P)Georgia (P)Germany (A&P)Greece (P)Hungary (A&P)Iceland (P)Iran (Islamic Republic of) (A&P)Ireland (P)Italy (A&P)Japan (P)Kazakhstan (A)Kenya (A&P)Kyrgyzstan (A&P)Latvia (A&P)Lesotho (A&P)Liberia (A)Liechtenstein (A&P)

(A): only the Agreement applies (8)(P): only the Protocol applies (23)(A&P): both the Agreement and Protocol apply (49)

Members of the Madrid Union• Lithuania (P)• Luxembourg* (A&P)• Moldova (A&P)• Monaco (A&P)• Mongolia (A&P)• Montenegro (A&P)• Morocco (A&P)• Mozambique (A&P)• Namibia (A&P)• Netherlands:• – Territory in Europe*

(A&P)• – Antilles** (P)• Norway (P)• Poland (A&P)• Portugal (A&P)• Republic of Korea (P)• Romania (A&P)• Russian Federation

(A&P)• San Marino (A)• Serbia (A&P)

Sierra Leone (A&P)Singapore (P)Slovakia (A&P)Slovenia (A&P)Spain (A&P)Sudan (A)Swaziland (A&P)Sweden (P)Switzerland (A&P)Syrian Arab Republic (A&P)Tajikistan (A)The former Yugoslav Republic of Macedonia (A&P)Turkey (P)Turkmenistan (P)Ukraine (A&P)United Kingdom (P)United States of America (P)Uzbekistan (A&P)Viet Nam (A&P)Zambia (P)

(A): only the Agreement applies (8)(P): only the Protocol applies (23)(A&P): both the Agreement and Protocol apply (49)

Recent developments

• The accession of the United States to the Madrid Protocol on 2 November 2003

• The accession of European Union to the Madrid Protocol on 1 October 2004

Some terms of Madrid System

Contracting Parties - States party to the Agreement and/or the Protocol and organizations party to the Protocol are referred to collectively as Contracting Parties

Office of origin - Trademark Office of the Contracting Party with which the applicant has the necessary connection through establishment, domicile or nationality.

WIPO - World Intellectual Property Organization

Some terms of Madrid System

Basic Registration or Basic Application - an existing trademark application or registration owned by the

Applicant in the Office of Origin

Extension of Designation (extension of designation and Subsequent extension of designation) - An international application must designate the Contracting Parties in which the mark is to be protected

Madrid Agreement and Madrid Protocol Madrid AgreementAdopted in 1891, entered into force in 1892

Any State which is a party to the Paris Convention for the Protection of Industrial Property

Basic registration

French

Basic fee + supplementary fee

12 months

Can not be transformed into a series of applications in each designated jurisdictions

Madrid Protocol Adopted in 1989, came into operation on April 1, 1996

Any State which is a party to the Paris Convention for the Protection of Industrial Property + intergovernmental organization

Basic registration or application

French, English or Spanish

Basic fee + supplementary fee + individual fee

12 or 18 months

Can be transformed into a series of applications in each designated jurisdictions

Who may use the Madrid System

a natural person or a legal entity which has a real and effective industrial or commercial establishment in, or is domiciled in, or is a national of, a country which is party to the Madrid Agreement or the Madrid Protocol, or who has such an establishment in, or is domiciled in, the territory of an intergovernmental organization which is a party to the Protocol, or is a national of a Member State of such an organization.

Three Kinds of International Application

• an international application governed exclusively by the Agreement;

• an international application governed exclusively by the Protocol;

• an international application governed by both the Agreement and the Protocol.

Effects of the International Registrations

• An international registration is equivalent to a bundle of national registrations

• Effective from the date of the international registration or the date of subsequent designation

Duration of Registration/Renewal

• effective for 10 years

• may be renewed in respect of all the designated Contracting Parties or in respect of only some of them

Why we apply for International Registration of Marks under Madrid System

• 1. it facilitates the obtaining of protection for marks

• 2. it is flexible enough to accommodate the changes subsequent to registration

Advantages

NATIONAL ROUTE

Different proceduresDifferent procedures Different languagesDifferent languages

Fees in local currencyFees in local currency

Through a local agentThrough a local agent

Recording changes: several Recording changes: several operationsoperations

MADRID ROUTE

One procedureOne procedure

One language (English/FrenchOne language (English/French/Spanish/Spanish))

Fees in Swiss francsFees in Swiss francs

Local agency only if there is a refusalLocal agency only if there is a refusal Recording changes: one operationRecording changes: one operation

disadvatanges

• ○ Limitation of protected country

• ○ On the premise of basic registration or

basic application

• ○ Instability——“Central Attack"

Central Attack

• Attacking the basic application or basic registration would lead to the same effect of the International Registration

Procedure

Precondition

basic registration orbasic application

Internationalapplication

Office of Origin

Checks correspondence with basic application/registration

checks formalities records in International Registerpublishes International Gazettenotifies the designated CP´s

Office of Designated CP

Substantive exam

Refusal

no refusal (national reg)

International Bureau

Madrid Trademark Search

• http://www.wipo.int/ipdl/en/search/madrid/search-struct.jsp

The End.Thank You!

[email protected]

Lilian Liu TM Dept.