1. Krakow, Gliwice, Wroclaw January 23 to 25, 2018
Global Intellectual Property Systems Madrid System for the International Registration of Marks Hague System for the International Registration of Industrial Designs
Krakow, Gliwice, Wroclaw January 23 to 25, 2018
Tetyana Badoud Senior Legal Officer
WIPO

2. MADRID SYSTEM

3. Outline The Madrid System: key benefits
Geographical scope and accession outlook
Users of the System
How the System works
Use of the System
Website/ new and improved e-services
Recent developments
Focus: Classification Guidelines, WIPO Current Account, Payments
Keep updated on the Madrid System: new webinars
To be updated accordingly

4. It begins with a trademark and a plan to export…

5. Protection Options
…Then a choice must be made regarding the best way to protect your trademark/s abroad:
The national route - file trademark application/s with the IP Office of each country in which you want protection
The regional route - apply through a regional trademark registration system with effect in all member states (ARIPO, Benelux Office for IP, EUIPO and OAPI)
The international route - file through the Madrid System
The trademark owner, or representative, must then make a choice regarding the best way to protect marks abroad.
There are three main options:
The National Route, which involves filing separate applications with the IP Office of each country in which protection is sought. OR
The Regional Route, which involves applying for protection through a regional trademark registration system with legal effect in all member states. This includes applying for protection through the European Union Intellectual Property Office, and the African Intellectual Property Organization. OR
The International Route, which involves filing through the Madrid System.
The most appropriate option depends on a firm’s business strategy, including its financial resources, and the markets and the timeframes in which protection is sought.

6. The International Route
The international route through the Madrid System may be the preferred option when you:
Seek protection in multiple markets, particularly if these are in different regions
Want flexibility to add new markets as your export plans develop
Have limited budget and/or time to spend on registration and management of your trademarks

7. The Madrid System is Convenient
Access a centralized filing and management procedure
File one application, in one language and pay one set of fees for protection in multiple markets
Expand protection to new markets as your business strategy evolves

8. The Madrid System is Cost-Effective
File an international application, which is the equivalent of a bundle of national applications, effectively saving time and money
Avoid paying for translations into multiple languages or working through the administrative procedures of multiple IP Offices
Saving in currency exchange rate costs

9. The Madrid System is Global
Currently: 116 countries covered by the 100 members
Markets that represent more than 80% of world trade
Recent accessions include:
2014: OAPI and Zimbabwe
2015: Algeria, Cambodia, The Gambia and
Lao People’s Democratic Republic
2016: Brunei Darussalam
2017: Thailand, Indonesia
Protect your trademark/s simultaneously in the 116 countries covered by the 100 members of the System
Access markets that represent in excess of 80% of world trade, with potential for expansion as membership grows
Recent accessions include – (see slide)
ALGERIA: In July 31, 2015, the Government of the People’s Democratic Republic of Algeria deposited its instrument of accession to the Madrid Protocol. The Protocol entered into force with respect to Algeria on October 31, Signatory to the Madrid Agreement since July 5, 1972, the country was the last of the 95 members of the Madrid System which was not party the Protocol.
This represented a milestone for the Madrid System and its users. In practical terms, the Madrid System now operate as a single treaty system, with the Protocol governing all transactions between or in respect of Contracting Parties and users. See

10. Accession Outlook – 2017/19
Africa: Ethiopia, Malawi, Mauritius, South Africa
Arab region: Jordan, Saudi Arabia
Asia: Malaysia, Papua New Guinea, Samoa, Sri Lanka
Europe: Malta
Latin America and the Caribbean: Barbados, Brazil, Costa Rica, El Salvador, Jamaica, Trinidad and Tobago
North America: Canada
South Africa: mid 2018
Canada: 2019

11. Members 100 members* (including EU and OAPI) covering 116 countries
*All are party to the Protocol, the governing treaty, while 55 are also party to the Agreement
*All members are bound by the Protocol, the governing treaty, and 55 are also bound by the Agreement.
The Madrid Union Map gives us a good overall picture of the System’s geographic coverage.
Indonesia becomes the 100th member of the Madrid System in October 2017.

12. Legal Framework Madrid Agreement (1891) Madrid Protocol (1989)
Common Regulations
Administrative Instructions
Laws and Regulations of each Contracting Party
See
The Madrid Agreement is no longer in «operations» (i.e. no more registrations under the agreement) but certain general provisions for the Madrid Union still apply.
The Madrid Union Assembly made a decision to freeze the application of Article 14(1) and (2)(a) of the Agreement. With this freeze, from October 11, 2016, it is no longer be possible to accede to the Agreement only.

13. Madrid System Users: Business Sectors
Madrid System users come from all corners of the globe and represent a broad cross-section of industries

14. Top Five Classes To be updated in March 2018
Top Five Classes (total international applications by class), Most specified classes in international registrations and growth rate
Source: WIPO press release, March 15, 2017 and Madrid Yearly Review WIPO publication No. 940
This table lists the ranking and distribution of the top five individual classes most specified in international applications in 2016 (Nice Classification) together with their respective percentage changes from the previous year.
For more than a decade, the most specified class has been class 9, which includes computer hardware and software and other electrical or electronic apparatus of a scientific nature. In 2016, class 9 accounted for 9.4% of all classes specified in applications filed. The other most specified classes were: class 35 (7.6% of the total), which covers services such as office functions, advertising and business management; class 42 (6%), which includes services provided by, for example, scientific, industrial or technological engineering and computer specialists; class 41 (4.6%), which mainly covers services in the area of education, training, entertainment, sporting and cultural activities; class 25 (4.4%), which includes clothing, and; class 5 (4.3%), which covers pharmaceuticals. Three of these six most specified classes are services classes.
Almost one-third (32.7%) of all classes specified in international applications in 2016 were for services.

15. Madrid System Users: Business Size
Individual entrepreneurs, small and large businesses find the Madrid System to be a convenient and cost-effective means to protect marks in key markets throughout the world

16. How the Madrid System Works
The International Trademark Registration Process
At a high-level, the International Trademark Registration Process can be divided into three stages:
Stage 1 - Application through a National or Regional IP Office (known as the Office of origin)
Stage 2 - Formal Examination by WIPO
Stage 3 – Substantive Examination by IP Offices (individually know as an Office of the designated Contracting Party)

17. Stage 1 Application through your Office of origin
To be entitled to use the Madrid System, you must:
Have a real and effective industrial or commercial establishment in, or
Be domiciled in, or
Be a national of a member of the Madrid System
Before filing an international application, you need to have registered or filed an application (basic mark) in your Office of origin
Submit an international application through this same IP Office, which will certify and forward it to WIPO

18. Stage 2 Formal examination by WIPO
WIPO conducts a formalities examination
Once requirements have been met, the mark is recorded in the International Register
WIPO sends a certificate of international registration to the holder and notifies the IP Offices, of the designated Contracting Parties (dCP), in which protection is sought
The scope of protection is not known at this stage. It is only determined after substantive examination and decision by the IP Offices, as outlined in Stage 3

19. Stage 3 Substantive examination by IP Offices (Office of the dCP)
IP Offices make a decision within 12 or 18 months in accordance with their legislation. WIPO records the decisions and notifies you
If an IP Office refuses to protect your mark, it will not affect the decisions of other offices. You can contest a refusal decision before the IP Office concerned
If an IP Office accepts to protect your mark, it will issue statement of grant of protection
The international registration is valid for 10 years. Renew directly with WIPO with effect in the dCPs

20. Costs Fees are payable to WIPO in Swiss francs
Basic fee*, which includes 3 classes of goods/services
653 Swiss francs – b/w reproduction of mark
903 Swiss francs – color reproduction of mark
Fees for designated Contracting Parties (dCP)
Standard fees – complementary (100 Swiss francs per dCP) and supplementary (100 Swiss francs per class beyond 3) OR
Individual fees where this is declared
* Applicants from Least Developed Countries benefit from a 90% reduction in the basic fee

21. Timeline The International Trademark Registration Process
Basic application or registration
Date of International Registration
Substantive examination
IRN Certificate
Recorded at WIPO and communicated
Office of Origin
WIPO
Designated Office
Decision of designated Office: Grant or Refusal
Time limit for provisional refusal
12 or 18 months
2 months
2 – 3 months
10 years
Maintenance:Renewal every 10 years
The International Trademark Registration Process
Blue/grey blue colors: WIPO (International Bureau)
Burgundy/pink colors: Office of Contracting Parties (Office of Origin or designated Contracting Parties)

22. Website and E-Services
The Madrid Website provides information on how to search before filing, file an application, monitor and manage registrations, and how to pay fees.
Madrid E-Services are available to assist users at each stage of their mark’s lifecycle.
In summary, these resources include…
Madrid Website
Top level navigation and messaging of the Madrid web site was revamped.  It provides clear paths for our users (trademark owners, representatives and IP offices) to meet their information and transactional requirements.
- For prospective users: We have introductory pages including user requirements, costs, benefits, how the System works and FAQs.
- For new users: We have designed several “how to” pages to assist users to search before filing, file an application and manage an international registration.
- For regular users: We have grouped on the landing page e-services, according to the lifecycle of their mark: search, file, monitor and manage.
- For IP Offices: we have gathered information for current members and future members and on the working group.
Legal and additional resources are also provided under the resources section of the landing page.
All these webpages are available in the six official UN languages and Japanese.
Fees
Need information about fee payments under the Madrid System? Browse our new webpages:
How to calculate fees (Use the Fee Calculator), How to pay fees, request refunds or cancellation, Payment Methods, Guide to the WIPO Current Account (updated terms and conditions) and How to locate a WIPO reference number.
Updated terms and conditions for the WIPO Current Account:
- No minimum number of transactions
- Initial payment of CHF 2,000
- Minimum balance – notification sent to users if balance is less than CHF 200
- A form to open the account available on the website
- address required
- Account statement sent by only
These changes to the WIPO Current Account make this method of payment more attractive to smaller entities.

23. Recent Developments Rules Changes in the Common Regulations
Classification Guidelines
WIPO Current Account
Madrid Monitor – integrates ROMARIN, the WIPO Gazette, Madrid E-Alert and Real-time Status
Member Profiles Database
New Contact Madrid service
To be updated accordingly
Legal Developments
Topic covered in slides #32-34 “Legal Developments”
WIPO Classification Guidelines (This topic can be covered in the slide #35 “Classification Guidelines”)
WIPO has published Examination Guidelines Concerning the Classification of Goods and Services in International Applications on the Madrid website in March 2017.
PDF:
The guidelines detail the principles applied by WIPO examiners concerning indications of goods and services. Used in conjunction with the updated Madrid Goods & Services Manager, this information should assist Madrid applicants to minimize the chance of classification irregularities.
=>News item A Look Inside WIPO’s Classification Practices, Mar 30, 2017
WIPO Current Account
Topic covered in slides #36 “NEW – WIPO Current Account Changes” and 37 “NEW – Payment Resources”
Need information about fee payments under the Madrid System? Browse our new webpages:
How to calculate fees (Use the Fee Calculator), How to pay fees, request refunds or cancellation, Payment Methods, Guide to the WIPO Current Account (updated terms and conditions) and How to locate a WIPO reference number.
Updated terms and conditions for the WIPO Current Account:
- No minimum number of transactions
- Initial payment of CHF 2,000
- Minimum balance – notification sent to users if balance is less than CHF 200
- A form to open the account available on the website
- address required
- Account statement sent by only
These changes to the WIPO Current Account make this method of payment more attractive to smaller entities.
Madrid Monitor
A major step towards integration of E-Services was taken this year with the deployment of Madrid Monitor, which integrates in one application the functionalities and information accessible through ROMARIN, the WIPO Gazette of International Marks, Madrid E-Alert and Real-Time Status.
Madrid Monitor makes it easier to stay up-to-date with the latest developments on applications for international registration and all trademarks registered through the Madrid System.
Learn how to use and demonstrate Madrid Monitor with the PDF Madrid Monitor Quick Start Guide.
!!!: Starting late 2017, ROMARIN, Madrid E-Alert and Madrid Real-Time Status will no longer be available on the WIPO website. Madrid Monitor integrates the functions and content of these tools, which will be discontinued later this year.
=> News item Introducing the New Madrid Monitor, May 31, 2017
=>News item Make the Most of Madrid Monitor with All-New Video Tutorials, Oct 2, 2017
Madrid Member Profiles database
This also includes a new database of procedures before member offices - the Madrid Member Profiles database . This service provides a search system to enable users to access a wide range of information on procedures in Madrid Member IP Offices related to the international registration of marks.
Use the new tool to uncover the rules and procedures for filing international applications through the Office of origin. Learn about the time limits for examination, cancellation, refusals, oppositions, third party observations and more with the new Member Profiles Database.
Download the PDF Member Profiles Quick Start Guide to get started today.
=> New item, Introducing the Madrid Member Profiles Database, Jun 14, 2017
Communication with WIPO: New Contact Madrid service
Madrid System user support continues to improve with the all-new Contact Madrid online communication service (online form). Transmit questions, notifications and documents directly to the relevant WIPO professional, using this efficient and targeted contact form.New Contact Madrid service (online form) – November 1, 2017
The new Contact Madrid service is accessible under the “Contacts” section of the Madrid homepage or visit to access the form directly.
To ask a question, submit a form or response to an irregularity letter
Replace (as of November 1, 2017) and Madrid Team s (as of December 1, 2017)
By telephone: +41 (0) , Monday to Friday, 9.00 a.m. – 6.00 p.m. (Geneva time)
Available in English, French and Spanish
=>News item Customer Support at your Fingertips with New Contact Madrid Service, Sep 29, 2017

24. Classification Guidelines
Purpose - to decrease irregularities
Describes WIPO classification practices
Divided into three sections:
General information - Nice Classification and Madrid
Classification principles applied by WIPO
Practical information on the acceptable format to list indications of goods and services
OPTIONAL SLIDE
WIPO has published Examination Guidelines Concerning the Classification of Goods and Services in International Applications on the Madrid website in March 2017.
PDF:
The guidelines detail the principles applied by WIPO examiners concerning indications of goods and services. Used in conjunction with the updated Madrid Goods & Services Manager, this information should assist Madrid applicants to minimize the chance of classification irregularities.
=>News item A Look Inside WIPO’s Classification Practices, Mar 30, 2017

25. NEW – WIPO Current Account Changes
No minimum number of transactions
Initial payment of CHF 2,000
Minimum balance – notification sent to users if balance is less than CHF 200
A form to open the account available on the website
address required
Account statement sent by only
OPTIONAL SLIDE
Changes to the WIPO Current Account, which makes this method of payment more attractive to smaller entities.
WIPO Current Account: Overview webpage:
This topic can also be covered in the slide #22 “Website and E-Services” (see speaking notes) and slide #37 “NEW – Payment Resources”.

26. NEW – Payment Resources
Need information about fee payments under the Madrid System? Browse our new webpages:
How to calculate fees
How to pay fees and request refunds or cancellation.
Payment Methods
Guide to the WIPO Current Account (updated terms and conditions)
How to locate a WIPO reference number
OPTIONAL SLIDE
To be updated accordingly

27. Keep Updated on the Madrid System
Visit the Madrid Website
Register to all-new
and free Madrid Webinars
Subscribe to Madrid Notices,
our legal and news updates
Sign up for Madrid Highlights
Madrid Website
Top level navigation and messaging of the Madrid web site was revamped. 
- For prospective users: We have introductory pages including user requirements, costs, benefits, how the System works and FAQs.
- For new users: We have designed several “how to” pages to assist users to search before filing, file an application and manage an international registration.
- For regular users: We have grouped on the landing page e-services, according to the lifecycle of their mark: search, file, monitor and manage.
- For IP Offices: we have gathered information for current members and future members and on the working group.
Legal and additional resources are also provided under the resources section of the landing page.
New Madrid web pages (key/basic information and resources) and Madrid news items available in Arabic, Chinese, Russian and Japanese, in addition to English, French and Spanish.
NEW - Madrid Webinars for new and experienced users (June 2017)
New Madrid System webinars offer practical information on a wide range of topics related to filing an international application and managing your international trademark registration, directly accessible from your desktop. 
Programs are broadcasted live in English, providing the opportunity to interact directly with presenters (WIPO experts and private sector practitioners). Webinar registrants also receive presentation materials and are given direct access to an online reference journal and video archive following the webinar. Webinars are free of charge.
To follow a webinar, simply register online and log-on during the scheduled date and time to access the sessions or watch the videos on a later date. Program of upcoming sessions is published on the Madrid website. Subscribe now to Madrid Notices to stay informed.
=>New item New this Month: Madrid System Webinars, Jun 8, 2017
=> News item Starting September 27: New Madrid System Webinars in Chinese and English, Sep 19, 2017
Madrid News and Madrid Highlights
WIPO e-newsletter distribution platform to subscribe to Madrid Notices and Madrid Highlights.
Madrid Highlights received in English, French and Spanish. Online version now available in Arabic, Chinese and Russian.

28. HAGUE SYSTEM

29. Industrial Designs
DM/ DM/ DM/081900

30. Independent filings vs. Hague Route
Direct/Paris Route
The Hague System

31. Hague System: a simple but timeless concept
The centralized acquisition and maintenance of industrial design rights by filing a single international application for a single international registration with effect in one or more designated Contracting Parties

32. General Overview of the Hague System
Basic features and advantages
Legal framework
Going global – geographical scope
Some statistics
Latest developments and
upcoming features

33. Basic Features and Advantages
of the Hague System

34. What is the Hague System?
One to many relationships
File a single international application for a single international registration in which one or more Contracting Parties are designated
“Bundle of rights”
If no refusal, the resulting international registration has the effect of a grant of protection in each designated Contracting Party

35. Who Can Use the System? Nationality Domicile Habitual residence
Real and effective industrial/commercial establishment
Habitual residence
Geneva (1999) Act only
Attachment to a Contracting Party

36. The International Application
In English, French or Spanish
May be filed directly with the International Bureau through the E-filing interface but also on paper
May comprise several different designs up to a maximum of 100 if they belong to the same class of the International Classification (Locarno)
One set of fees (in CHF) is to be paid

37. The Hague System Procedure: Role of the International Bureau
Formal examination
Recording in the International Register
Sending the certificate to the holder
Publication in the International Designs Bulletin
Notification to members through the publication in the Bulletin
If the International Bureau finds that the international application does not fulfill the applicable requirements, it invites the applicant to make the required corrections within three months from the date of invitation sent by the International Bureau.
International registration has the same effect as a regularly-filed application in all designated Contracting Parties.

38. The Hague System Procedure (II)
Refusal by a designated Contracting Party
on same substantive grounds as for national/regional filings
must be communicated within time limit
effect limited to territory of the member that has refused
International registration (where not refused)
no refusal = same rights as a local design registration
a bundle of independent national/regional rights
advantages of central management

39. The Hague System Procedure (III)
Longer renewal period, if allowed by the law of the designated Contracting Party
Renewable at least once (1960 Act) or twice (1999 Act)
Duration of protection: five years

40. General Advantages of the Hague System
Hague System (international route)
one Office for filing
one language
one currency
one international registration
one renewal
one modification
foreign attorney or agent
(first needed if refused)
National/regional route
many Offices for filing
many languages
many currencies
many registrations
many renewals
many modifications
(first needed at filing)

41. Key benefits of the Hague System
Simplicity
The Hague System enables holders to obtain protection for their designs with a minimum of formality
Cost-effectiveness
Payment of a single set of fees in one currency
Efficiency
Considerable facilitation of the subsequent management of the registration
Flexibility Right holders have more opportunities in targeting national, regional or global markets

42. Legal Framework

43. Hague Agreement Hague Act (1960) Geneva Act (1999)
Common Regulations (1996), last revised: January 1, 2017 (in force)
Administrative Instructions (2002), last revised: July 1, 2014
National Laws and Regulations

44. The Hague System is a Procedural Arrangement
Issues such as: are governed by the law of each Contracting Party designated in an international registration
the conditions for protection
the refusal procedure to be applied when deciding whether a design may be protected
the rights which result from protection

45. Going Global – Geographical Scope of the Hague System

46. Hague Union 53* Geneva Act (1999) (including EU and OAPI)
14 Hague Act (1960)
67 Contracting Parties
* The Geneva (1999) Act of the Hague Agreement Concerning the International Registration of Industrial Designs will come into force in respect of the Russian Federation on February 28, 2018.

47. Hague Union Members according to the most recent applicable Act
African Intellectual Property Organization, Albania, Armenia, Azerbaijan, Bosnia and Herzegovina, Botswana, Brunei Darussalam, Bulgaria, Cambodia, Croatia, D.P.R. of Korea, Denmark, Egypt, Estonia, European Union, Finland, France, Georgia, Germany, Ghana, Hungary, Iceland, Japan, Kyrgyzstan, Latvia, Liechtenstein, Lithuania, Monaco, Mongolia, Montenegro, Namibia, Norway, Oman, Poland, Republic of Korea, Republic of Moldova, Romania, Russian Federation, Rwanda, Sao Tome and Principe, Serbia, Singapore, Slovenia, Spain, Syrian Arab Republic, Switzerland, Tajikistan, the former Y.R. of Macedonia, Tunisia, Turkey, Turkmenistan, Ukraine and the United States of America (52)
Geneva Act (1999)
Belgium, Belize, Benin, Côte d’Ivoire, Gabon, Greece, Italy, Luxembourg, Mali, Morocco, Netherlands, Niger, Senegal and Suriname (14)
Hague Act (1960) *
The Geneva (1999) Act of the Hague Agreement Concerning the International Registration of Industrial Designs will come into force in respect of the Russian Federation on February 28, 2018.

48. Geneva Act (1999) Recent Accessions Potential Accessions China
The Kingdom of Cambodia
(November 25, 2016)
D.P.R. of Korea
(June 13, 2016)
Russian Federation
(November 30, 2017)
United States of America
(February 13, 2015)
Japan
Republic of Korea
(March 31, 2014)
China
United Kingdom
Morocco
ASEAN countries
Israel
Canada
Mexico
Madagascar

49. Some Statistics

50. Hague Membership Status as of December 31, 2017 (by most recent Act)

51. International Registrations Recorded 2010-2017
2216
2363
2440
2734
2703
3581
5233
5041
Growth
11.7%
6.6%
3.3%
12.0%
-1.1%
32.5%
46.1%
-3.7%

52. International Applications - 2017
5,213 international applications were received containing 19,429 designs (max. 100 designs / application)
6.27 % decrease compared to the respective period in 2016 in the number of applications
3.8% growth compared to the respective period in 2016 in the number of designs

53. International Registrations - 2017
5,041 international registrations were inscribed
containing 19,241 designs
3.66% decrease compared to the respective period in 2016 in the number of registrations
9.3% increase compared to the respective period in 2016 in the number of designs

54. 2017 - Five Most Popular Classes in International Registrations
Clocks and watches and other measuring instruments, checking and signaling instruments
363 registrations (7.2%)
Class 6
Furnishing
368 registrations (7.3%)
Class 12
Means of transport or hoisting
451 registrations (9.0%)
Class 26
Lighting apparatus
326 registrations (6.5%)
Class 14
Recording, communication or information retrieval equipment
579 registrations (11.5%)

55. Latest Developments and Upcoming Features

56. Latest Developments
Regularization of international applications online (since March 2016)
Guidance on reproductions*
New Hague Express Database since January 2015
Global Design Database launched in 2015
Improvement of E-filing interface
Developments in the legal framework

57. http://www.wipo.int/madrid/en/ www.wipo.int/hague/en