The WIPO Newsletter on Marks, Industrial Designs and Geographical Indications
A Record Number of Registrations in 2005 |
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During the year 2005, the growth trend of the Madrid system observed in previous years was maintained and surpassed. Some 33,565 international trademark applications were filed, which represents a 13.9% growth compared to the year 2004. At the same time, 33,170 international registrations were recorded, which represents a 41.9% increase compared to 2004. This is by far the highest number of registrations ever recorded in one year under the Madrid system.
The largest share of the international trademark applications received by WIPO in 2005 was filed by users in Germany (5,802 or 17.3% of the total), followed by users in France with 3,497 international applications (10.4%), the United States of America 2,847 (8.5%), Benelux 2,426 (7.2%), Italy 2,340 (7%), Switzerland 2,235 (6.7%), the European Community 1,852 (5.5%) and China 1,334 (4%). These figures relate to international applications filed through the trademark offices of the members concerned.
It is interesting to note the significant rise (30.6%) in the level of trademark applications from developing country members of the system as compared to 2004. International trademark applications from developing countries represented 5.3% of the total number received in 2005. The top filers from developing countries were: China (1,334 applications), Republic of Korea (148), Singapore (137), Morocco (66), Viet Nam (34) and the Islamic Republic of Iran (31). China also unseated Switzerland as the most designated country in international trademark applications).
With respect to the ownership of international trademarks, the top 20 users of the Madrid system in 2005 were Hofer (Austria), Lidl Stiftung & Co (Germany), Janssen Pharmaceutica (Belgium), Deutsche Telekom AG (Germany), Henkel (Germany), Novartis (Switzerland), Aldi (Germany), Siemens (Germany), Nestlé (Switzerland), Bosch (Germany), Beiersdorf (Germany), Krka (Slovenia), Barilla (Italy), Unilever (Netherlands), Solvay (Belgium), LOréal (France), Plus Warenhandelsgesellschaft (Germany), Altana Pharma (Germany), ITM Entreprises (France) and Parfums Christian Dior (France).
New Accessions and Ratifications |
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On September 15, 2005, the Government of Bahrain deposited with the Director General of the World Intellectual Property Organization (WIPO) its instrument of accession to the Madrid Protocol Concerning the International Registration of Marks.
During 2005, Turkey (January 1, 2005) and Latvia (July 26, 2005) ratified the Geneva Act of The Hague Agreement, while Singapore acceded to the Geneva Act on April 17, 2005. The former Yugoslav Republic of Macedonia acceded to the Geneva Act of The Hague Agreement on March 22, 2006.
On February 16, 2005, the Government of Peru deposited with the Director General of WIPO its instrument of accession to the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration. The Government of the Islamic Republic of Iran deposited its instrument of accession to the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration.
All these accessions entered into force in respect of each of those countries three months after the deposit of their instruments of accession.
Reduction of Fees for International Applicantions Originating from Least Developed Countries |
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At its thirty-sixth session, held in Geneva in September 2005, the Assembly of the Madrid Union amended the Schedule of Fees annexed to the Common Regulations under the Madrid Agreement and Protocol. The purpose of the amendment is to reduce the amount of the basic fee payable in connection with the international registration of a mark under the Madrid system, for the benefit of applicants originating from Least Developed Countries (LDCs) members of the Madrid Union. At present, the list of LDCs comprises 50 States, of which seven are party to the Madrid system, namely: Bhutan, Lesotho, Liberia, Mozambique, Sierra Leone, Sudan and Zambia.
The fee reduction concerns only the basic fee payable to the International Bureau, which currently amounts to 653 Swiss francs or 903 Swiss francs, depending on whether the reproduction of the mark is in black and white, or in color. The fee reduction is to be offered to all applicants having a real and effective industrial or commercial establishment, or a domicile, in an LDC, or being a national of an LDC, and who utilize the trademark office of such LDC as the Office of origin when filing an international application. For such applicants, the basic fee will amount to 65 Swiss francs or 90 Swiss francs, depending on whether the reproduction of the mark is in black and white, or in color. The above amendment to the Schedule of Fees entered into force on January 1, 2006.
INTA 128th Annual Meeting |
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Each year, the Annual Meeting of the International Trademark Association (INTA) provides a unique opportunity to meet and network with trademark owners and agents from all around the world. This year, the128th Annual Meeting was held on May 6 to 10, in Toronto, Canada and a record number of 7,800 participants assisted to the meeting.
The WIPO team was headed by Assistant Director General, Mr. Ernesto Rubio. The team included legal experts from the Sector of Trademarks, Industrial Designs and Geographical Indications, the WIPO Arbitration and Mediation Center, the Copyright and Related Rights and Industry Relations Sector and the WIPO Coordination Office in New York.
The WIPO officials participated in the INTA program as moderators of table topic discussions, attended various INTA committee and subcommittee meetings with respect to programs and issues of mutual interest to INTA and WIPO, and had a stand in the Exhibition Hall where attendees were able to meet with the relevant WIPO officials.
Ad hoc Working Group on the Legal Development of the Madrid System for the International Registration of Marks |
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The Ad hoc Working Group on the Legal Development of the Madrid System for the International Registration of Marks will hold its second session of meetings in Geneva from June 12 to 16, 2006. The International Bureau of WIPO will issue several documents for the consideration of the delegations. The main topics of discussions will be the review of Article 5(2)(e) of the Madrid Protocol, the review of Article 9sexies(2) of the Madrid Protocol and the proposed amendments to the Common Regulations under the Madrid Agreement and Protocol. Other issues such as Model forms and Model provisions relating to replacement and transformation will also be discussed. The documents prepared by the International Bureau for this Working Group session are available on the WIPO website at the following address: http://www.wipo.int/madrid/en/meetings. The conclusions of the Working Group will be presented to the Madrid Union Assembly in September 2006.
Adoption of the Singapore Treaty on the Law of Trademarks |
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A new international treaty, known as the Singapore Treaty on the Law of Trademarks in recognition of the country that hosted the final round of negotiations, was adopted on March 28, 2006, by Member States of the World Intellectual Property Organization (WIPO). The new treaty concludes efforts by WIPOs Member States to update the 1994 Trademark Law Treaty (TLT) and bring it in line with the technological developments of the past decade.
Delegations representing 147 WIPO Member States as well as a number of intergovernmental organizations (IGOs) and non-governmental organizations (NGOs) participated in the Diplomatic Conference which led to the adoption of the Singapore Treaty. This Treaty, which deals mainly with procedural aspects of trademark registration and licensing, will help to ensure that brand owners using the trademark system benefit from greater flexibilities and efficiencies in the delivery of trademark registration services. It will also allow trademark offices and users to benefit more freely from the technological advances of the past decade.
The original TLT was concluded in 1994 with a view to streamlining and simplifying, on a worldwide basis, administrative procedures relating to national and regional trademark applications and the maintenance of trademark registrations. The TLT currently has 33 member countries. Companies seeking to clear and register trademarks or to license their brands must, as a first step, meet certain formal registration requirements in order to avoid rejection of their application and a consequent loss of rights. These formalities generally vary from one country to another and the TLT has successfully introduced standard requirements to be followed in procedures before trademark offices.
In order to keep pace with developments in telecommunications and to create an institutional framework allowing the adaptation of certain administrative details regulated under the treaty, the Singapore Treaty allows Contracting Parties to implement provisions on electronic filing of trademark applications and associated communications. Registration formalities on the representation of all types of marks, including visible signs (and certain sorts of "non-traditional" visible signs, such as hologram marks, color marks, position marks or motion marks) as well as non-visible signs, provisions on the recording of trademark licenses, relief measures when certain time limits have been missed, and the establishment of an assembly of the contracting parties are further new elements of the Singapore Treaty.
The adoption of the Singapore Treaty marks a major milestone for WIPO and for the international intellectual property community. In establishing the Treaty, henceforth known in history as the Singapore Treaty on the Law of Trademarks, the Governments of WIPOs Member States collectively send out a powerful message of confidence in the international trademark system to all sectors of society across the globe. The Singapore Treaty reaffirms the importance of trademarks, one of the major forms of intellectual property, in promoting domestic and international trade and in enhancing enterprise development and consumer confidence.
International Registrations May Now Be Renewed On-Line |
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An electronic interface for the renewal of international registrations on-line (e-renewal) is available since April 3, 2006, on the WIPO website at the following address: http://www.wipo.int/e-marks.
The WIPO e-renewal system is a simple and efficient way of renewing international registrations up to six months before the date on which the payment of the renewal fee is due ("the due date").
Users only need to enter the number of the international registration to be renewed. A screen then shows the name of the holder of that international registration, the name of the representative, if any, and the list of the Contracting Parties for which the international registration may be renewed. From that list, users select the Contracting Parties for which renewal is sought. The amount of the fees to be paid appears then automatically on the screen. Payment can be made either by credit card or through a current account opened with WIPO (payment by credit card is available only from three-months before the due date).
