The latest development at WIPO
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1 The latest development at WIPO The Madrid System and Africa Debbie Roenning Director, Legal Division Madrid Registry September 14, 2017
2 WIPO MISSION: To lead the development of a balanced and effective international intellectual property (IP) system that enables innovation and creativity for the benefit of all MEMBER STATES: 190 OBSERVERS: 350+ (NGOs, IGOs, industry groups, etc.) STAFF: 1,300 from 120 countries ADMINISTERED TREATIES: 26
3 Russia New York Geneva HQ Algeria China Japan Nigeria Singapore Brazil Where we are
4 What we do We help governments, businesses and individuals make intellectual property work for innovation and creativity
5 Significant growth in global IP Systems PCT o 152 States o 233,000 international applications o +7.3% over 2015 Madrid System o 99 Members, covering 115 countries o 52,550 applications o +7.2% over 2015 Hague System o 65 Members, covering 83 countries o 5,562 applications o +35.3% over 2015
6 The Madrid System offers broad coverage Currently: 115 countries covered by the 99 members Markets that represent more than 80% of world trade Recent accessions include: 2013: India, Rwanda and Tunisia 2014: OAPI and Zimbabwe 2015: Algeria, Cambodia, The Gambia and Lao People s Democratic Republic 2016: Brunei Darussalam 2017: Thailand (Nov. 7, 2017)
7 Members of the Madrid System *All are party to the Protocol, the governing treaty, while 55 are also party to the Agreement 99 members* (including EU and OAPI) covering 115 countries
8 Accession outlook: 2017 to 2019 Africa: Malawi, Mauritius, South Africa Arab region: Jordan, Saudi Arabia Asia: Indonesia, Malaysia, Sri Lanka Europe: Malta Latin America and the Caribbean: Barbados, Brazil, El Salvador, Jamaica, Trinidad & Tobago North America: Canada
9 How the Madrid System works The International Trademark Registration Process Video:
10 Main features (1) The Madrid System is a closed system Entitlement: must be a connection between the holder and that CP (establishment, domicile, or nationality) Basic mark is needed: an application filed with or registration by that CP, which is the Office of origin International application filed through Office of origin in E/F/S One application one registration covering multiple territories International application must designate at least one CP Cannot be the CP of origin WIPO examines only for formalities and the designated CPs examine according to their domestic legislation
11 Main features (2) Fixed time limit for the Office of designated CP to refuse protection (12 18 months +) Possible to later expand protection to new export markets (subsequent designation) Possible to tailor the list of goods and services for the different markets International registration depends on fate of basic mark for five years (dependency central attack transformation) 10-year period of protection, renewable for similar periods Centralized management of IR direct with WIPOu
12 Fees for using the Madrid System Fees payable to WIPO in Swiss francs Basic fee* includes 3 classes of goods/services 653 Swiss francs - black/white reproduction of mark 903 Swiss francs - color reproduction of mark Fees for designating CPs: Standard fees: Complementary (100 Swiss francs per DCP and supplementary (100 Swiss francs per class beyond 3) OR Individual fees where this is declared No local attorney fees are included * Applicants from LDCs benefit from 90% reduction of the basic fee
13 Use of the Madrid System
14 Top Ten Filing Origins
15 Top Designated Contracting Parties Designations in applications ,444 Growth rate (%) 21,747 21,276 14,855 14,696 14,122 13,130 11,271 11,263 9,208 China EU U.S. Russian Federation Japan Switzerland Australia Rep. of Korea India Mexico Madrid member
16 in numbers Activity 52,550 applications 44,726 registrations 29,546 renewals +550,000 decisions 109,439 Provisional refusals 219,195 Statements of grant of protection The Register 641,587 registrations 5.71 million designations About 200,000 holders
17 The Madrid System in Africa (1) FACTS 20 African countries are members of the Madrid System + OAPI covering 17 countries Algeria, Botswana, Egypt, The Gambia, Ghana, Kenya, Lesotho, Liberia, Madagascar, Morocco, Mozambique, Namibia, Rwanda, Sao Tome and Principe, Sierra Leone, Swaziland, Sudan, Tunisia, Zambia, and Zimbabwe Recent members: The Gambia, OAPI and Zimbabwe
18 The Madrid System in Africa (2) POSSIBLE IMPROVEMENTS For potential members, WIPO assist the Offices with preparation for a future accession (Malawi, Mauritius and South Africa) For current members, WIPO offers assistance with the implementation of the Protocol and training in processing international applications and designations (Botswana, Ghana, The Gambia, Mozambique, OAPI, Rwanda and Zimbabwe)
19 Designations of African members
20 Examples from South Africa CARDBLACK JOURNEY S END CORDON BLEU WHAT DOES GOOD LOOK LIKE?
21 Online Resources and E-Services The Madrid Website provides information on how to search before filing, file an application and how to monitor and manage your registration. Madrid E-Services are available to assist you at each stage of your mark s lifecycle:
22 Online Resources and E-Services Global Brand Database search existing marks from national & international sources trademarks, appellations of origin and emblems Madrid Goods & Services Manager compile a list of approved goods & services terms in 18 languages Member Profiles Database Fee Calculator Madrid Monitor track real-time status of registration watch competitors marks e-alerts consult the WIPO Gazette Madrid Portfolio Manager access documents request changes designate, modify & renew pay fees obtain extracts
23 Recent and upcoming developments Freezing of the Webinars Legal changes: July 1, 2017: introducing or changing indication of legal nature where the holder is a legal entity November 1, 2017: voluntary description of the mark (not in standard characters) February 1, 2019: Division of an international registration
24 24 Keep updated on the Madrid System Visit the Madrid Website Subscribe to Madrid Notices, our regular legal and news updates Sign up for Madrid Highlights, our quarterly newsletter
25 Thank you for your attention
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