The International Systems of Registration of Marks, Industrial Designs and Geographical Indications
N E W S L E T T E R - M A R C H 2005
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TABLE OF CONTENTSMember States of the Madrid Union and Accessions in 2004 Information Technology Services under the Madrid System and The Hague System Interest on the Madrid system Rising in Latin America
Article 6ter of the Paris Convention New Trademark Law Treaty to Come The Hague Agreement – Recent Developments and Accessions in 2004-2005 |
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Introduction |
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Business depends increasingly in an effective use and protection of industrial property assets, such as trademarks and industrial designs. Trademarks are key components of any successful business marketing strategy and they are used to obtain a competitive edge. They are indispensable for businesses in the crafting of their marketing strategies allowing them to identify, promote and license their goods or services in the marketplace and to distinguish them from those of their competitors, thereby cementing customer loyalty. A trademark symbolizes the promise of a quality product, and in today’s global and increasingly electronic marketplace a trademark is often the only way for customers to identify a company’s goods and services.
Trademark protection hinders moves by unfair competitors to “free ride” on the goodwill of a company by using similar distinctive signs to market competing goods or services. Conversely, loss, dilution or infringement of a high- value trademark could prove devastating to a business.
The Madrid system of international registration of marks offers trademark owners of contracting parties, the possibility to have their trademark protected in several countries by simply filing an application directly with their own national or regional trademark office, in one language only and paying a single set of fees.
Industrial designs make all sorts of products and consumer goods look attractive and appealing; hence, they add to the commercial value of a product and increase its marketability. Protecting industrial designs contribute to economic development, by encouraging creativity in the industrial and manufacturing sectors, as well as in traditional arts and crafts. They contribute to the expansion of commercial activities, the export of national products and help to ensure a fair return on investment. They can be applied to a wide variety of products of industry and handicraft: from technical and medical instruments to watches, jewelry, and other luxury items; from houseware and electrical appliances to vehicles and furniture; from textile designs to leisure goods.
An effective system of protection also benefits consumers and the public at large, by promoting fair competition and honest trade practices, encouraging creativity, and promoting more aesthetically attractive products.
The Hague Agreement Concerning the International Registration of Industrial Designs gives any "national" of one of the Contacting Parties to the Agreement the possibility of obtaining, by means of a single registration with the International Bureau of WIPO, protection for its industrial designs in the Contracting Parties for which it seeks protection.
Member States of the Madrid Union and Accessions in 2004 |
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The trend towards accession to the Madrid system is clearly continuing. During the course of the year 2004, four countries acceded to the Madrid Protocol, namely Croatia, Kyrgyzstan, Namibia and the Syrian Arab Republic1. On October 1, 2004, the European Community became the first intergovernmental organization, to accede to the Madrid Protocol. This brings the overall number of Madrid Union Contracting Parties to 77 (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 at: (http://www.wipo.int/madrid/en/members/).
All-Time Record - International Trademark Registrations in 2004 |
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In 2004 use of the international trademark registration system reached a record level with the receipt of 29,480 international trademark applications representing a 23.5% increase on figures for 2003. At the same time, 23,3802 international trademarks were recorded by WIPO, representing a 7% increase over the previous year. See also Press Release No. 402.
For the twelfth consecutive year Germany topped the list of biggest users with 5,393 international applications (18.3%), followed by France with 3,503 (11.9%), Italy 2,499 (8.5%), Benelux 2,482 (8.4%) and Switzerland 2,133 (7.2%). Within 12 months of signing up to the Madrid Protocol - one of two treaties that govern the system - the United States of America filed 1,734 (5.9%) international applications to rank sixth among the biggest users of the Madrid System representing a 109% increase in use of the system as compared to the previous year.
Statistics for 2004 also show a marked increase in the number of international trademark applications originating from countries such as China (+115%), Australia (+100.9%), Republic of Korea (+86.8%), Bulgaria (+82.5%), Japan (+75.6%), Slovenia (64.8%), Latvia (62.7%), Hungary (+47.4%), Austria (+36.8%), Turkey (+36.4%), United Kingdom (+36.1%), Italy (+30.5%), Norway (+29.8%), Slovakia (+27.7%), Singapore (+25.7%), Czech Republic (+24.7%), Sweden (+24.3%), Denmark (+17.9%) and Croatia (+15.4%).
Information Technology Services under the Madrid System and The Hague System |
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The International Bureau makes available to the public various information products relating to the international registration of marks for the benefit of the users. Madrid Express and Hague Express are freely-accessible electronic databases that include information on international registrations in force as well as international applications and subsequent designations recorded in the international registers. Madrid Express is available at: http://www.wipo.int/madrid/en/madrid_express.htm and Hague Express can be found at: http://www.wipo.int/hague/en/hague_express.htm
Furthermore, the IB is constantly updating and improving its information technology services. In this context, the new ROMARIN On-line, the update of the Madrid website and the CD-ROM version of the WIPO Gazette of International Marks, are noteworthy.
ROMARIN On-Line |
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The International Bureau maintains a database – ROMARIN- that contains detailed information regarding all international registrations of marks under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement that have been entered in the International Register kept by the International Bureau of WIPO and are currently in force. ROMARIN stands for "Read-Only - Memory of Madrid Active Registry INformation".
Parallel to its DVD-ROM version which is updated every four weeks, a new on-line version of ROMARIN is available now and it is updated daily. The ROMARIN on-line version is available for subscribers at (http://www.wipo.int/romarin). An on-line subscription service will be available shortly, while the DVD-ROM can be ordered through the WIPO Electronic Bookshop. The ROMARIN update files are available for downloading on the ftp site of the UN International Computing Centre (ICC). It is issued in the three working languages of the Madrid system, namely: English, French and Spanish.
Update of the websites of the Madrid System, the Hague system and the Lisbon system |
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In the context of the implementation of the amendments of the Madrid System Common Regulations and of the Geneva Act of the Hague Agreement, an important revision and update task has been accomplished on the Madrid and the Hague webpages. The Lisbon webpage (http://www.wipo.int/lisbon/en)has been updated as well. Furthermore, the Spanish version of the said websites has been improved and enhanced. The above mentioned websites are constantly updated, publishing and notifying recent developments and activities carried out in the framework of the registration systems. In particular the Madrid website E/F/S was revised in order to make it more dynamic and user- friendly in terms of contents, access, and display of documents. The revision of the other sites has been started following, as model, the improved Madrid website.
Gazette of International Marks |
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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.
Interest on the Madrid system Rising in Latin America |
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Article in MIP - "PUTTING BRAZIL ON THE MADRID MAP.- The US and the EU - two of the world's largest regions - have joined the Madrid Protocol. But a gaping hole stands out on the system's world map - Latin America. Natan Baril, legal counsel at the Boticário Group, gives Stéphanie Bodoni the view of one of the largest trade mark owners in Brazil”. Click here to find out more (http://www.managingip.com <http://www.managingip.com>). Note: the Managing Intellectual Property website is accessible to subscribers only, but non-subscribers can sign up for a 3-months free trial."
Article 6ter of the Paris Convention |
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Article 6ter of the Paris Convention prohibits the registration and use of trademarks that are identical or similar to armorial bearings, flags and other State emblems of the States party to the Paris Convention, as well as official signs and hallmarks indicating control and warranty adopted by them. It also serves the protection of armorial bearings, flags, other emblems, abbreviations and names of international intergovernmental organizations. Protection against the registration or use as trademarks, however, is not available for emblems of lower public bodies, such as emblems of provinces or municipalities. Emblems and names of non-governmental and national organizations are also excluded from the scope of Article 6ter.
An emblem or a sign eligible for protection under Article 6ter must first be communicated to the International Bureau of WIPO. The International Bureau will then forward such communications to the other States party to the Paris Convention. However, flags of States are protected per se and need not to be communicated. Any State receiving the communication may raise objections within a period of 12 months. So far, 242 communications were communicated through the intermediary of the International Bureau, containing 1260 symbols which gave rise to 55 objections. The WIPO homepage (http://www.wipo.int/article6ter/en/) provides detailed information on Article 6ter. The database containing the emblems and signs communicated under Article 6ter is available in the WIPO website at: http://www.wipo.int/ipdl.
New Trademark Law Treaty to Come |
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In October 2004, the WIPO General Assembly approved the convening of a Diplomatic Conference for the Adoption of a Revised Trademark Law Treaty, in Geneva, from March 13 to 31, 2006. In April of this year, the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) will finalize the work on a basic proposal to be presented to the 2006 Diplomatic Conference. The meeting of the SCT will be followed immediately by the Preparatory Meeting for the Conference.
The existing Trademark Law Treaty 1994 (TLT) which at present has 33 Contracting Parties, simplifies and harmonizes formal requirements for the filing of national or regional trademark applications. It standardizes the requirements that have to be met for the grant of a filing date, and the contents of requests for the recording of changes in trademark registers, as well as the renewal of trademark registrations. The draft Revised TLT that is currently under consideration by the SCT consists of 33 Articles accompanied by Regulations and Model International Forms. It develops the TLT by introducing greater freedom to implement the filing of communications in electronic form or by electronic means of transmittal, providing for relief measures in case of failure to comply with time limits, and harmonizing procedures relating to the recording of trademark licenses. Furthermore, it establishes a TLT Assembly, which will allow future developments of the Regulations under the Treaty. As a result of the harmonization of national trademark procedures, applicants benefit from easier access to worldwide trademark protection at a reduced cost. It also helps to reduce the administrative costs of offices, in both industrialized and developing countries. The text of the TLT 1994 and a list of Contracting Parties are available at: http://www.wipo.int/treaties/en/ip/tlt/index.html.
The Hague Agreement – Recent Developments and Accessions in 2004-2005 |
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A new Act of the Hague Agreement was adopted in July 1999 by a Diplomatic Conference convened in Geneva. The Geneva Act of the Hague Agreement entered into operation on April 1, 2004. The Geneva Act makes the Hague system compatible with the laws of certain countries that are not yet party to the Agreement, in particular, those countries that carry out substantive examination as to novelty. Besides, it provides for a link between the international system and regional systems for the registration of industrial designs. The aim of the Geneva Act is to increase the number of Contracting Parties, while at the same time retaining the present simplicity and economy of the Hague system, thereby making it even more attractive for actual and potential users. Four States acceded to the Geneva Act in 2005: Croatia, Egypt3, Hungary4 and Namibia. Since January 1, 2005 two more States have joined the Geneva Act: Turkey and Singapore5. The list of Contracting Parties, and other details on the Hague Agreement, are available at http://www.wipo.int/treaties/en/registration/hague/.
Worldwide Symposium on GI’s |
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The International Bureau of WIPO is organizing jointly with the Ministry of Productive Activities of Italy a Worldwide Symposium on GIs, that will be held in Parma, Italy on June 27 to 29, 2005. At present, much attention is paid to this subject, and the Symposium is intended to contribute to a better understanding of the economic, legal and political issues which form the background to the current debate on geographical indications. The Symposium should also provide a forum for national and international administrations, producers and all interested parties to present and discuss their views on geographical indications (GI). Among the issues to be discussed are the recent developments in this field in WIPO and in the World Trade Organization (WTO). The agenda also includes discussion on selected issues such as geographical indication protection for wines, spirits, food and non-food products from the point of view of industry; the international registration systems for geographical indications; options offered by existing legal systems and options not available under these systems; the experience of recently established national GI systems; as well as the topic of trademarks, geographical indications and generics.
Upcoming Events |
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- Seminar on the Madrid System of International Registration of Marks, Geneva, (in French), Switzerland, April 11 and 12, 2005;
- Seminar on the Hague System of International Registration of Industrial Designs (in English/French), Geneva, Switzerland, May 10, 2005;
- Seminar on the Hague System of International Registration of Industrial Designs (in English/French), Geneva, Switzerland, November 2, 2005;
- Seminar on the Madrid System of International Registration of Marks (in English) Geneva, Switzerland, November 3 and 4, 2005;
1 Namibia and the Syrian Arab Republic also joined the Madrid Agreement at the same time.
2 This figure comes second to the record for the number of trademarks registered by the International Bureau of WIPO in one year (which was in 2001, when 23, 985 international trademarks were registered).
3 Also bound by the London Act of the Hague Agreement.
4 Also bound by the London Act and the Hague Act of the Hague Agreement.
5 The Geneva Act of the Hague Agreement will enter into force with respect to Singapore on April 17, 2005.
