The Use of International Systems of Registration of Intellectual Property Objects
Author: Olga Kreschenko, Senior Associate, Synergy IP Law Agency, Practice of International Registration of Intellectual Property Objects
Legal protection of intellectual property objects such as, for example a trademark or an industrial design, is limited by the territory of that country where they are registered. So, if you registered your trademark or industrial design in Ukraine, any other person is allowed to register the same mark or design in any other country. In order to prevent it and to protect properly your rights abroad it is necessary to pass registration procedures in one designated country you want or even in more than one foreign country, where you are planning to promote and sell products or services under certain name or in a certain form.
There are two main options of registration of intellectual property objects in other countries:
- under national procedures;
- under international systems of intellectual property objects registration.
The existing regional systems of registration should also be mentioned among other possible ways to obtain legal protection for intellectual property objects. But it is necessary to consider their peculiarities individually therefore regional registration systems fall outside the topic of this article.
The first option has significant shortcomings, among which are the following ones:
- the need to comply with the requirements and the terms specified by the legislation of each country;
- the need to address a patent attorney of the selected country in the language of that country with the purpose of filing an application for registration;
- the need to translate the materials in order to file each such application;
- the need to pay for the services of patent attorneys in each designated country.
In order to overcome these challenges, the international community has developed several user-friendly systems of registrations (the second option) administered by the International Bureau of the World Intellectual Property Organization. International registration of trademarks is conducted under the Madrid system, while international registration of industrial designs is conducted under Hague system.
The Madrid system is a convenient and cost-effective mechanism for registration and managing trademarks throughout the world. Filing a single application and payment of one set of the relevant fees allows an applicant to apply for legal protection for a trademark in 116 countries (as of January 2018). One centralized system аllows to modify a global trademark portfolio, as well as to renew and expand the trademark registration. Thus, under the Madrid system the support is provided throughout the lifecycle of your trademark.
Among the advantages of the Madrid system, in addition to the abovementioned ones, we should specify the following:
- recording of changes after registration (change of holder’s name or address, change in ownership (complete or partial), restriction of the list of goods and services) with regard to several designated countries through a single procedure and by payment of a single fee.
- a single registration for renewal and a single fixed date of registration expiry: the international registration of a mark is valid for 10 years and can be renewed at the end of each 10-year period directly with WIPO with effect in the designated Contracting Parties concerned provided that the relevant fee is paid.
- the opportunity of gradual adding of new priority countries to the international registration through subsequent designation; in case of provisional refusal of registration in certain country the opportunity of repeated designation of that country provided that the grounds for refusal have become irrelevant.
Below, you may get acquainted with the statistical information on the number of international applications filed under the Madrid system in 2017 that demonstrates the active use of the advantages of the existing system:
© WIPO, 2018
How does the Madrid system work?
The application for international registration (an international application) may be filed by a natural person or legal entity that is affiliated with one of the members of the Madrid Union through a genuine and valid industrial or commercial enterprise, place of residence or citizenship.
Before you can file an international application, you need to have already registered mark, or have filed an application, in the Office of the country of origin with which an applicant is affiliated as mentioned above. Such registration or application is known as the basic mark.
Regarding registration procedure:
- International application should be filed to the International Bureau through the Office of origin. An application that is filed by an applicant directly to the International Bureau shall not be considered as such and shall be returned to an applicant. The Office of origin shall examine an international application and in case of lack of formal observations shall forward it to WIPO.
- WIPO only conducts a formal examination of your international application. After that your mark is recorded in the International Register and published in the WIPO Gazette of International Marks. WIPO will then send you a certificate of your international registration and notify the IP Offices in all the territories where you wish to have your mark protected. It is important to note that the scope of protection of an international registration is not known at this stage in the process. It is only determined after substantive examination and decision by the IP Offices in the territories in which you seek protection.
- The IP Offices of the countries where you want to protect your mark should make a decision within the applicable time limit (12 or 18 months) in accordance with their legislation. After that WIPO will record the decisions of the IP Offices in the International Register and then notify an applicant. It should be noted that if IP Office refuses to protect a mark, this decision will not affect the decisions of other IP Offices. The refusal decision may be contested directly before the IP Office concerned in accordance with its national legislation.
Even after completion of registration the owners should remember about such feature of the Madrid system as dependence of the international registration on the basic mark within 5-year period from the date of registration.
If basic registration was terminated (completely or partially), the international registration shall not more enjoy the protection to the same extent. The Offices of origin must inform the International Bureau about facts and decisions made with regard to such termination.
Good news: if within three months after such termination the owner shall file an application for registration under the national procedure to the Office of the designated country, the application will be treated as if it was filed on the date of the international registration.
THE HAGUE SYSTEM
The Hague system of international registration of industrial designs also arose from a need for simplicity and economy of costs; it enables applicants to obtain protection for their designs with a minimum of formality in 68 countries (as of March 2018).
Among the advantages of the Hague system it is worth mentioning the following ones:
- in order to file an international application there is no need in prior national / regional application, or registration.
- applicants are relieved from the need to file separate applications in different national (or regional) Offices; it allows avoiding the complexities arising from different procedures which may differ from country to country, as well as from different languages.
- applicants do not have to constantly monitor the deadlines for renewal of a whole series of national registrations, also varying in different countries.
- applicants avoid the need to pay fees in different currencies in different countries.
The number of Contracting Parties to the Hague system is not such large in comparison with the Madrid system but the statistical data for 2017 provided below demonstrates the increasing demand in the system as well as its active development.
© WIPO, 2018
How does the Hague system work?
The application for international registration (an international application) may be filed by a natural person or legal entity that is affiliated with one of the members of the Hague system through a genuine and valid industrial or trading enterprise, place of residence or citizenship.
Up to 100 different industrial designs can be a subject of the international application but all of them should belong to the same class of the International (Locarno) Classification of Industrial Designs – international system that permits to classify goods for the purposes of the registration of industrial designs.
An international application should be sent (at the choice of an applicant) in English, French or Spanish languages in electronic form with the use of the E-filing interface (E-filing) at WIPO Website or official paper application form may be used with the further shipment by post.
An international application that complies with the prescribed formal requirements is recorded in the International Register by the International Bureau and then a certificate of international registration should be sent to the owner. Then, the International Bureau shall publish the relevant international registration in the International Designs Bulletin at WIPO Website after expiration of 6 months from the date of international registration unless an applicant has chosen an immediate publication or postponement of publication in its application. The publication contains all the relevant data concerning the international registration, including a reproduction of the industrial design.
It is necessary to remember that the International Bureau does not appraise or concern itself in any way with the novelty of the design and it is therefore not entitled to reject an international application on this or any other substantive ground. Upon publication of the Bulletin at WIPO Website the Office of each designated country can proceed with the substantive examination, if any, provided for by its own national legislation. One of the main features of the Hague system is that the Office of each designated country may refuse to protect an industrial design for its territory provided that it does not comply with the requirements for granting protection specified in its national legislation. However, an international registration may not be refused on grounds of non-compliance with formal requirements, since such requirements must be considered satisfied following the examination carried out by the International Bureau.
A refusal of protection, if any, must be notified to the International Bureau within 6-12 months from the date of publication of the international registration. The following countries have chosen longer period for notification about refusal of protection: Finland, Iceland, Japan, Lithuania, Republic of Korea, the Russian Federation, Spain, Republic of Turkey, the United States of America.
International registration is valid for an initial period of five years and may be renewed for one or more additional periods of five years. Six months before termination of international registration the International Bureau shall send informal notification reminding the exact date of termination. The International registration may be renewed electronically (E-renewal) or by filling in a paper form with further shipment by post to WIPO.
The minimal term of protection, in case of further renewal, is at least 15 years up to the expiry of the total duration of protection provided for in the national legislation. Thus, for example, the term of protection in the United States and Singapore is 15 years, in Japan and the Republic of Korea – 20 years, in the European Union and the Russian Federation – 25 years, in Monaco and Morocco – 50 years.
Due to the abovementioned international registration systems both transnational companies and individual entrepreneurs have an access to the fast, robust and cost-effective tool for legal protection of their trademarks or industrial designs in different countries.