Novartis and Unilever use it, and so do Nestlé and Siemens. Henkel has used it the most, but Hungarian pharmaceutical company Richter Gedeon made more use of it last year than any other company. It is the Madrid system for the international registration of trademarks, which allows IP owners to seek protection in any of the 82 contracting parties to the system by simply filing one application directly with their own national or regional trademark office.
Last year WIPO, the international organization that administers the system, received a record 39,945 international trademark applications—a 9.5% upswing over 2006—which makes it increasingly likely that your company or client is either using the system or considering doing so. At the Madrid System Users Meeting, at 11am today, three senior officials from WIPO—assistant director-general Ernesto Rubio, José Graça-Aranha (director of the International Registrations Department) and senior counsellor Alan Datri—will discuss recent developments in the Madrid system, as well as introducing Wen Xue, a senior examiner at the Chinese Trademark Office, and Kyung-Ohk Kim, a trademark examiner at the Korean Intellectual Property office, who will give presentations about how the Madrid system is administered in their home countries.
“China and Korea are two of the most frequently designated countries, so if users of the system have any questions or concerns, this is an excellent opportunity for them to raise them with officials from the offices,” says Rubio.
WIPO officials will explain how new developments have helped make the system more user-friendly. These include the introduction of new technology to make the system more efficient. Since August last year, for example, IP owners have been able to receive notifications of refusals and irregularities by email. Now WIPO intends to introduce a scheme to allow applicants to pay filing fees by credit card, instead of through a bank transfer or via an account set up with the IP organization. Similarly, WIPO recently began to publish an online version of the official Gazette in the form of a pdf document. Now it plans to introduce an electronic version of the Gazette, which will make it easier for applicants to search and extract information. This is due to be launched in January 2009.
Another key proposal—endorsed by a meeting of the Working Group on the Legal Development of the Madrid System earlier this month—is a plan to require national IP offices in the contracting states to tell WIPO whether they plan to protect a trademark or not.
“At the moment, no news is good news—but the applicant has to wait for the end of 12 months or, in some cases, 18 months, the period stipulated in the Treaty to know whether they have protection or not,” says Rubio. “The plan is to make national offices communicate as soon as they have completed their internal procedures.”
This will be good news for users of the system. Although many offices notify the applicant directly, only 11 offices in the 82 contracting parties issue a formal statement of grant of protection. Making it mandatory for national examiners to inform WIPO of their intentions will ultimately enable applicants to access a single, central point of information on WIPO’s website that tells them the status of their application in each of the countries where they have sought protection. If the proposal is accepted by the General Assembly in September, it is set to be introduced by September 2009 (although those member states that request additional time may be given until January 1 2011).
Rubio and his colleagues will also update users with news of potential signatories to the Madrid system. Lists of the top users and the most frequently designated countries reveal some large geographical gaps: while applicants from Germany top the list of heaviest users, and China is the most frequently designated country, key markets such as India, Brazil, Argentina, Canada and New Zealand are missing from the lists.
Rubio said that the IP organization is still awaiting news from India, which has yet to pass a trademark law enabling accession to the Protocol despite an announcement from the government last year that it intends to do so. But WIPO officials were heartened by a public hearing on the Madrid Protocol held by the Brazilian Congress last month—taken by many as a sign that the country is moving closer to joining the trademark filing agreement.
The biggest users
Germany’s Henkel owns more international trademark registrations under the Madrid system than any other company (2,567, according to WIPO). Its nearest rivals, as at the end of 2007, are: Janssen Pharmaceutica (Belgium), Novartis (Switzerland), L’Oréal (France), Unilever (Netherlands), Nestlé (Switzerland), Sanofi-Aventis (France), Siemens (Germany), BASF (Germany) and ITM Entreprises (France).
But these stalwarts of the Madrid system are being joined by newer enthusiasts. In 2007, the biggest filer was Richter Gedeon from Hungary (with 278 international trademark applications). The top 10 list was rounded off by Novartis (Switzerland), Henkel (Germany), Lidl (Germany), Toyo Boseki (Japan), GlaxoSmithKline (UK), Biofarma (France), Janssen Pharmaceutica (Belgium), Nestlé (Switzerland) and Brillux (Germany).
