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Overview of the Madrid System

Overview of the Madrid System. USPTO GIPA 23 October 2013. Alan Datri Senior Counsellor Slide updated 10/25/13. Madrid System for the International Registration of Marks. Madrid Agreement (1891) Madrid Protocol (1989) As amended on October 3, 2006, and on November 12, 2007

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Overview of the Madrid System

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  1. Overview of the Madrid System USPTO GIPA23 October 2013 • Alan Datri • Senior Counsellor • Slide updated 10/25/13.

  2. Madrid Systemfor the International Registration of Marks • Madrid Agreement(1891) • Madrid Protocol(1989) • As amended on October 3, 2006, and on November 12, 2007 • Common Regulations • Administrative Instructions • National Laws and Regulations www.wipo.int/madrid

  3. 1 Agreement only37 Protocol only (including EU)54 Agreement and Protocol 92 Members Contracting Parties

  4. Centralization • Centralized system for the acquisition, maintenance and management of trademark rights by filing a single international application for a single international registration in which one or more Contracting Parties are designated. • Allows right holders to target national, regional or global markets with respect to particular goods and services. • Cost-effective and efficient, thereby creating opportunities that would not otherwise exist for any enterprise with a limited legal budget, be it small, medium or large.

  5. Centralization National/Regional Route International Route Applicant Applicant Office A Office B Office C Territory A Territory B Territory C Territory A Territory B Territory C

  6. Centralization National/Regional Route International Route • • many Offices for filing • • many languages • many currencies • • many registrations • • many renewals* • • many modifications* • • foreign attorney or agentfirst needed at filing • • one Office for filing • • one language • one currency • • one int. registration • • one renewal* • • one modification* • • foreign attorney or agentfirst needed if refused * Maintenance (renewal) and management (requests for modification such as change of name and address; transfer of ownership; limitation, renunciation or cancellation of goods and services or designs; appointment of representative, etc.).

  7. Acquisition Basic Mark International Application OFFICE OF ORIGIN CERTIFICATION FORMALITIES EXAMINATION International Register Certificate of International Registration Publication Notification INTERNATIONALBUREAU OFFICE OFDESIGNATEDCONTRACTINGPARTY OFFICE OFDESIGNATEDCONTRACTINGPARTY SUBSTANTIVE EXAMINATION

  8. Maintenance and Management • Renewal (10-year) – MM11 • Subsequent designation – MM4 • Subsequent designation from conversion (EU) – MM16 • Record change in ownership – MM5 • Limit G&S in one or more designated Contracting Parties – MM6 • Renounce all G&S in one or more designated Contracting Parties – MM7 • Cancel G&S – MM8 • Change of name and/or address of holder – MM9 • Change of name and/or address of representative – MM10 • Appointment of a domestic representative – MM12 • Record license – MM13 • Record restriction on right of ownership – MM19 • Slide updated 10/25/13.

  9. Additional Features • Dependency; Ceasing of Effect; Independence Article 6; Rule 22 • Transformation Article 9quinquies • Replacement Article 4bis; Rule 21 • Slide updated 10/25/13.

  10. Keeping it in Perspective • Simple in concept • Accommodates business models that need to reduce costs not only in the initial filing, but also in the maintenance and management of a right • Can be complex in implementation and use • Not surprising in what it seeks to accomplish, namely, to provide centralized access to different national and regional design systems • Practitioners, Practitioners, Practitioners • Proper functioning system depends on the advice of a knowledgeable practitioner, whether legal or paralegal or in house or outside counsel • Slide updated 10/25/13.

  11. Thank You Alan M. DatriSenior CounsellorOffice of the Deputy Director Generalalan.datri@wipo.int

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