A record 39,945 international trademark applications were received in 2007 by the World Intellectual Property Organization (WIPO) under the Madrid system for the international registration of trademarks, representing a 9.5% increase on figures for 2006. Applicants from Germany, for the 15th consecutive year, led the list of top filers, followed by users in France, the United States of America (USA) and the European Community (EC).  China remained the most designated country in international trademark applications reflecting increasing levels of trading activity by foreign companies in China.

WIPO Director General, Dr. Kamil Idris, welcomed the growing use of the "Madrid system", a user-friendly and cost-effective service that enables individuals and companies to acquire and maintain trademark protection in export markets.  "The Madrid system has earned the trust and confidence of the business community as a reliable option for brands seeking export markets," he said. Dr. Idris pointed out that "Brand value is one of the most important assets that a business holds. From a legal perspective, brand creation and management translates into trademark protection. Trademarks are a key means by which businesses are able to add value to their day-to-day commercial operations and thereby secure their long-term financial viability. WIPO will continue to enhance its services to the private sector to enable companies to obtain and maintain trademark protection in a timely and cost-effective way."

The largest share of the 39,945 international trademark applications received by WIPO in 2007 was filed by companies in Germany (6,090 applications or 15.2% of the total).  These were followed by companies in France, which accounted for 3,930 applications or 9.8% of the total.  Users in the USA ranked third with 3,741 or 9.4% of the total, only 4 years after the USA joined the Madrid system. Those filing their international applications through the EC's regional Trademark Office (OHIM) were fourth, only 3 years after the EC acceded (with 3,371 applications or 8.4% of the total). They were followed by Italy (2,664 or 6.7%), Switzerland (2,657 or 6.7%), Benelux (2,510 or 6.3%), China  (1,444 or 3.6%), the United Kingdom (1,178 or 2.9%) and Australia (1,169 or 2.9%).

Since October 2004, applicants from the EC have the option to file their international applications either through their national trademark office or through the EC's regional trademark office (OHIM) in Alicante.  In 2007, the third full year of the EC as a member of the Madrid system, the number of international applications filed by applicants from the EC through OHIM rose by 37.9%. The 27 countries of the European Union (EU) together accounted for 26,026 applications in 2007.  These figures include both the international applications filed through the national trademark offices of the countries concerned and those filed through OHIM (3,371).

A number of countries experienced significant growth in the number of international trademark filings in 2007.  The USA, for instance, enjoyed an 18.8% increase enabling it to strengthen its 3rd position in the ranking of top filer countries.  Other countries included, inter alia, the United Kingdom (+11.8%) now ranking 9th (previously 11th), Japan (+16.2%) now ranking 12th (formerly 13th), Russian Federation (+42.9%) now 13th (formerly 15th), Denmark (+19.6%) now 16th (formerly 17th), Sweden (+19.5%) now 18th (formerly 19th) and Hungary (+101.8%) now 19th (formerly 25th).

Developing countries accounted for 2,108 filings in 2007, representing 5.3% of total filings and a 10.5% growth over 2006. The developing country that witnessed the most significant growth in international trademark filings in 2007 is the Republic of Korea with 330 applications (+73.7%).

Mr. Ernesto Rubio, Assistant Director General of WIPO responsible for trademark questions, expressed his hope that the coming year would witness a further growth in the number of member countries to ensure an ever wider geographical spread of the Madrid system, thereby making it an even more attractive option. Mr. Rubio pointed out that the Madrid system has changed significantly – in the past five years alone, 19 new members have joined the Madrid Protocol – most recently Madagascar, on January 28, 2008 – and the number of applications has nearly doubled from 23,000 international applications in 2002 to almost 40,000 in 2007. He noted "Discussions aimed at simplifying procedures and making the system even more responsive to users are ongoing among member states."

Top Holders and Top Applicants

Henkel from Germany is holder of the largest number of international trademark registrations under the Madrid system: 2,567.  The top twenty holders, by the end of 2007, were: Henkel (Germany), Janssen Pharmaceutica (Belgium), Novartis (Switzerland), L'Oréal (France), Unilever (Netherlands), Nestlé (Switzerland), Sanofi-Aventis (France), Siemens (Germany), BASF (Germany), ITM Entreprises (France), Bayer (Germany), Biofarma (France), Richter Gedeon (Hungary), Lidl (Germany), Kraft Foods (Switzerland), Philips (Netherlands), Boehringer Ingelheim (Germany), Syngenta (Switzerland), Ecolab (Germany), Merck (Germany).

With 278 international trademark applications, Richter Gedeon from Hungary was the largest filer in 2007. The top twenty filers in 2007 were: Richter Gedeon (Hungary), Novartis (Switzerland), Henkel (Germany), Lidl (Germany), Toyo Boseki (Japan), Glaxo (UK), Biofarma (France), Janssen Pharmaceutica (Belgium), Nestlé (Switzerland), Brillux (Germany), L'Oréal (France), Zhejiang Elegant Prosper Garment (China), Boehringer Ingelheim (Germany), BMW (Germany), Plus (Germany), Siemens (Germany), Beiersdorf (Germany), Krka (Slovenia), Sanofi-Aventis (France), Hofer (Austria).

The top filers from developing countries include, apart from Zhejiang Elegant Prosper Garment (China) mentioned above, also the following companies from China: Shanghai Vanwa Industrial, Ningbo South Electronical Appliance Co., Beijing Posh Furniture Co., Jiangsu Sunshine Garment Co., Guangzhou Panyu South Star Co., China Tea Co. and Shandong Jinyu Tyre Co. The list further includes E.Land Ltd (Republic of Korea).

Top Designated Countries

A record 370,234 new designations of Madrid Union member countries were notified in 2007, representing a 1.5% increase over 2006 and reflecting commercial activity by foreign companies in the designated country.  When submitting an international trademark application, applicants must designate those member countries in which they want their mark to be protected. Applicants can also extend the effects of an international registration to other members at a later date by filing a subsequent designation.  In this way, the holder of an international registration can expand the geographical scope of the protection of a mark in line with evolving business needs.

For the third consecutive year, China was the most designated country.  With 16,676 designations, it accounted for 4.5% of the total number of new designations and enjoyed a 5.5% increase in such designations over 2006.  The second most designated country in 2007 was the Russian Federation with 15,455 designations (+7.1%), followed by the United States of America with 14,618 designations (+4.5%), Switzerland with 14,528 designations (+1.9%), EC with 12,744 designations (+19.8%) and Japan with 12,296 designations (+3.8%).

The EC continues to be a favorite target market for designations. Having received 12,744 designations in 2007 (+19.8%), the EC has moved from the 6th to the 5th position in the ranking of most designated members of the Madrid Union;  the majority of these designations, i.e., 7,529 (59%), were made in applications or subsequent designations originating in an EC member state. Other countries which moved up in the ranking of most designated countries compared to 2006 are USA (from 4th to 3rd position), the Ukraine (from 9th to 8th place), Turkey (from 10th to 9th place), Croatia (from 18th to 13th place) and Singapore (from 21st to 14th place).

Profile and Costs of Registrations Recorded in 2007

In 2007, on average, 8.4 member countries were designated per registration by applicants seeking international trademark protection under the Madrid system and 58% of the registrations recorded in 2007 contained one to five designations.

In submitting a trademark application, an applicant has to specify the goods or services to which the trademark will be applied in accordance with an international classification system known as the "Nice Classification".  The most popular classes of goods and services in international trademark registrations recorded in 2007 were Class 9 (which covers, e.g., computer hardware and software and other electrical or electronic apparatus of a scientific nature) representing 8.5% of the total, Class 35 (which covers services such as office functions, advertising and business management) which represented 6.4% of the total, Class 25 (covering clothing, footwear and headgear), or 5.3% of the total, Class 42 (covering services provided by, e.g. scientific, industrial or technological engineers and computer specialists) or 5.2% of the total and Class 5 (which covers, e.g., pharmaceuticals and other preparations for medical purposes), or 4.7% of the total.

In 2007, applicants paid on average a fee of 3,549 Swiss Francs (CHF) for an international registration.  For 81% of the registrations recorded in 2007, the fees paid were less than 5,000 CHF and for 54% less than 3,000 CHF.

International Registrations in Force at the End of 2007

By the end of 2007, there were 483,210 international trademark registrations in force in the international register.  They contained some 5.4 million active designations and belonged to 159,420 different trademark holders (of which many are small and medium-sized enterprises (SMEs)).  In the course of 2007, 17,478 of these were renewed for an additional ten-year period of protection (i.e. some 46% of the total number of international registrations with a term of protection that was coming to an end in 2007).

The Madrid system also allows for the central administration of an international trademark portfolio, as it provides for procedures which enable trademark holders to record modifications to international registrations (for example, changes of ownership, changes in name or address of the holder or changes in the appointment of the representative of the holder) through the submission of a single request at WIPO.  Modifications recorded in 2007 totaled 85,244, representing a 20.6% increase over 2006. The number of decisions by designated contracting parties (including grants of protection, provisional refusals, extensions of the limit for refusal based on an opposition, final decisions following a refusal and invalidations) recorded in the international register was 267,733, representing a 25.7% increase over 2006.

Information Technology and Electronic Communication: Latest Developments

WIPO's commitment to generating efficiency gains in the administration of its international trademark operations is producing tangible benefits for applicants who are increasingly taking advantage of the ability to transmit their international applications electronically. Of the total number of international applications filed in 2007, 34% were transmitted to WIPO electronically (as compared to 33% in 2006); the transmitting trademark offices were those of Australia, Benelux, EC, Republic of Korea, Switzerland and USA. Electronic communication is also used by a number of trademark offices for the transmission of refusals (EC, Japan, the Russian Federation and USA), statements of grant of protection (EC and Japan) and modifications (Australia, Benelux, EC and USA).

In 2007, the number of offices of Madrid members to which WIPO sends Madrid notifications electronically has increased from 43 to 48 (the five offices that started receiving notifications electronically in 2007 were those of Bahrain, Botswana, Cyprus, Egypt and Monaco). By the end of the year, the number of offices that had agreed to receive these notifications exclusively by electronic means was six (Australia, EC, Monaco, Russian Federation, United Kingdom and USA).

WIPO and its member states reaffirmed their commitment to enhancing the quality and efficiency of the international trademark system in November 2007 when the Madrid Union Assembly also approved the implementation of a four-year investment program (2008-2011). The plan is designed to generate further efficiencies by modernizing the information technology (IT) infrastructure of the Madrid system. The investment program is aimed to facilitate the creation of tools that enhance the interaction between WIPO and national or regional trademark offices under the international procedures of the Madrid system and the development of additional services for the benefit of the users of the Madrid system, such as e-billing (for extracts from the international register) and e-payment (for other transactions) and a tool that allows applicants and holders to monitor the status of their applications, registrations and communications conveyed to WIPO under the procedures of the Madrid system.

Legal Development of the Madrid System

Legal development of the Madrid system gathered pace in 2007 following a number of decisions by the Assembly of the Madrid Union in 2007 which will fundamentally change the structure of the Madrid system. Most notably, members approved the repeal of the "safeguard clause."   As from September 1, 2008, for states bound by both the Madrid Agreement and the Madrid Protocol — the two treaties which govern the Madrid system (see below) —only the provisions of the Protocol, the most recent and flexible of the two treaties, will apply. Consequently, from that date, international trademark registrations will be governed by the Madrid Protocol only in all member countries which are party to the Protocol (currently 75), i.e. also in those which are party to both the Protocol and the Agreement (currently 49).  The Agreement will only remain applicable in relations with the member countries bound solely by the Agreement (currently 7).  The Protocol relaxes certain provisions of the Agreement, in order to allow adherence by countries and intergovernmental organizations (IGOs) whose trademark registration systems do not match with the provisions of the Agreement, in particular in respect of the fees to be paid by applicants, the choice of working languages and the applicable time-limits.

To ensure the continued enhancement of the Madrid system, members also decided to give the Working Group on the Legal Development of the Madrid system an ongoing mandate to consider other issues of emerging relevance.

Background

The WIPO-administered Madrid System for the international registration of trademarks offers a trademark owner the possibility of having a mark protected in up to 80 countries by filing one application, in one language (English, French or Spanish), with one set of fees, in one currency (Swiss Francs).  Applicants wishing to use the Madrid system must apply for trademark protection in a relevant national or regional trademark office before seeking international protection. An international registration under the Madrid system produces the same effects as an application for registration of the mark in each of the contracting parties designated by the applicant.  If protection is not refused by the trademark office of a designated contracting party, the status of the mark is the same as if it had been registered by that office.  Thereafter, the international registration can be maintained and renewed through a single procedure.  Thus, the system provides a cost-effective and efficient way for trademark holders to secure and maintain protection for their marks in multiple countries.

The system is governed by two international treaties, namely the Madrid Agreement and the Madrid Protocol.  The grouping of both agreements is referred to as the Madrid system.  The Madrid Protocol which became operational in 1996 introduced several features including the ability to submit applications in English and to extend the period for notification of a refusal. Spanish was introduced as a working language in 2004.  These features made the system more flexible and attractive to a larger number of countries.  The total number of countries party to the Protocol is 75 and the overall current membership of the Madrid system is 82 (81 countries plus the EC).

The first international trademark registration dates from 1893 and belonged at that time to Swiss chocolate producer Russ Suchard et Cie, but is no longer in effect.  The oldest international trademark registration which is still in effect as a result of multiple renewals, belongs to Swiss watchmaker Longines. This trademark was also first registered in 1893.  In August 2006, WIPO recorded the 900,000th international trademark registration, a milestone which underlines the growing use of the Madrid system by companies around the world. The 1,000,000th registration is expected in the course of 2009. The international register is located at WIPO's Geneva headquarters.

Trademarks are a key component of any successful business marketing strategy as they allow them to identify, promote and license their goods or services in the marketplace and to distinguish these from those of their competitors, thereby cementing customer loyalty. A trademark symbolizes the promise of a quality product and in today's global and increasingly electronic marketplace, a trademark is often the only way for customers to identify a company's products and services. Trademark protection hinders moves to "free ride" on the goodwill of a company by using similar distinctive signs to market inferior or similar products or services. Loss, dilution or infringement of a high-value trademark could prove devastating to a business.

(www.wipo.int)

2013-07-17