Madrid System for the International Registration of Marks

Madrid Online services: Updates

Prague, April 27, 2015

Normunds LAMSTERS Acting Coordinator, Processing Team 1, Operations Division, Madrid Registry

Content of the Presentation

Overview of Madrid Online Services

Madrid Goods and Services Manager (MGS)

E-Renewal

E-Subsequent Designation

Global Brand Database

Misleading invoices

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Abbreviations

CP – Contracting Party

dCP – Designated Contracting Party

G&S – Goods and Services

IB – International Bureau

IR – International Registration

OO – Office of Origin

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Overview of Madrid Online Services

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Development of Madrid Online Tools and Services

2003 - 2009 2010 - nowMadrid Fee Calculator Madrid Goods & Services - MGSROMARIN Madrid Real Time Status - MRSE-Renewal Madrid Portfolio Manager - MPMInternational Application Simulator Madrid Electronic Alert - MEAE-Payment E-Subsequent designationStatistics under the Madrid System Madrid Office Portal - MOPWIPO Gazette of International Marks

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E-Renewal

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E-Payment

Only for payment of fees mentioned in irregularity letters of new applications or modificationsPayment by credit card or current account with WIPO

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Madrid Goods & Services Manager (MGS)

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MGS – Main features

Online tool for compiling lists of goods and services

Launched in December 2010

Includes terms from the Nice Classification, frequent terms extracted from the Madrid International Register and terms from other databases

More than 50,000 English terms

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MGS Functions (1)

BROWSE to select goods and services from a “pick-list” of terms pre-accepted by WIPO

SEARCH acceptable terms using keywords

CHECK ACCEPTANCE of free-text terms:• by WIPO• by a designated Contracting Party (dCP)

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MGS Functions (2)

TRANSLATE into any of various available languages

• National filing: when an applicant does not speak the national language, e.g. French Turkish

• International filing: when the national language is not a Madrid-filing language, e.g. Korean English

PRINT lists in any chosen language

EXPORT / IMPORT lists of terms to save and re-use later, in any chosen language

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MGS - Languages

17 languages available as of February 2015:

- English, French, Spanish (Madrid System filing languages)

- Arabic, - Korean,- Chinese, - Norwegian,- Dutch, - Portuguese, - German, - Russian,- Hebrew, - Serbian - Italian, - Turkish- Japanese, - Ukrainian

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MGS – Exclusive featuresDisplay of Acceptance / Rejection

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MGS – Exclusive featuresDisplay of Acceptance / Rejection

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MGS - Exclusive featuresWarning on synonymous terms

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MGS - Exclusive featuresUser-friendliness

NICE indications are clearly identifiedOne-click limitation of results to NICE indicationsClear identification of all classes containing results One-click restriction of results to a selected classNo cumbersome paging to move through the resultsUser list always visibleFree-text terms can be typed with or without segmentation by semicolonsOne-click access to translationPrint or translate lists in a format directly usable for filing

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MGS - Future Developments

Extended functionalities:

Improved display:- Search by Nice basic number- Asian similar group codes (CN, JP, KR)

Extension of EXPORT function:- More formats (Excel, PDF, Word, TXT)- Direct to MM Form for international registration

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MGS - Advantages

Terms pre-accepted by WIPO and many IP offices

Alignment with the latest edition of the Nice Classification

Classification guidance for users

Exclusive information on terms rejected by some IP Offices

Translation into any MGS language (in total 17) for national and/or international filing

Fewer irregularity notices issued by the IB

Fewer provisional refusals from DCPs

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MGS – “Win-Win-Win” situation

Trademark applicants- User-friendly tool- Faster registration- Higher predictability as to the outcome of

examination in DCPs

National Offices- As Office of Origin- As Office of a designated Contracting Party

International Bureau- Faster examination and registration

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E-Renewal

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E-Renewal

Fees calculated using the default rules in the Common Regulations

For the classes in the registration, E-Renewal takes into account cancellations

For CPs with individual fees, E-Renewal takes the classes effectively protected following limitations, partial change in ownership, final and further decisions and invalidations

If the holder wants to renew for more classes than those protected, following final and further decisions, he needs to submit a form MM11

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TR in KR for 1 class

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E-Subsequent designation

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Global Brand Database

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Global Brand Database

Search over 17,830,000 records relating to internationally protected trademarks, appelations of origin, armorial bearings, flags and other state emblems, as well as names, abbreviations and emblems of intergovernmental organizations

Collections of 25 databases:International: Madrid Trademarks, Lisbon Appelations of Origin,Article 6ter emblemsNational e.g., Algeria, Australia, Canada, Denmark, Egypt, Estonia, Israel, Indonesia, Japan, Morocco, New Zealand, Philippines, Singapore, Switzerland, United States of America

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Misleading Invoices

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Misleading Invoices: Definition

Fake or misleading documents: unsolicitedcommunications received by users of the Madrid System

Holders, representatives and IP Offices report on communications received from service providers of various sources and origins

Documents invite payment of fees for services confusingly similar to those provided by WIPO

Generated by entities monitoring publicly-available registration details and contact information (WIPO Gazette, ROMARIN, etc.).

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Misleading Invoices: Current Situation

Number of fraudulent or misleading invoices increasing

At national, regional and international levels (CTM and Madrid System)

Renewals of international registration of trademarks, filings, publication and registration

Anti-Fraud Network, established by OHIM

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Misleading Invoices: Actions Taken

Activities:Information notice No. 6/2010, Madrid Highlights

No. 3 September 2014, warning on certificate of international registration

Web page – warning, reference list (PDF: name, date, origin), IP Office links

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Misleading Invoices: Facts & Figures

More than 250 documents collected in 2014

45 documents available on the online reference list for 2014, 130+ for 2009-2015

Origin of the senders (companies) – broad spectrum

Origin of the recipients (holders and representatives): United Kingdom, Germany, France, Canada, the United States of America, etc.

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Misleading Invoices: Guidance for Users

How to spot misleading invoice communications?

Indications identifying notices (invoices) from WIPO:Currency: CHFLanguages: one of the three official languages (EN, ES and FR) Contact details: WIPO address in Geneva

(34, Chemin des Colombettes) + website (www.wipo.int) Method of Payment: http://www.wipo.int/about-wipo/en/finance/madrid.htmlLogo

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Misleading Invoices: LogosWIPO Official Logos

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Misleading Invoices: Logos

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Swiss Francs

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Misleading Invoices: Contact us

Questions about an invoice received or about an example of misleading invoice not mentioned in the WIPO reference list?

Contact us at intreg.mail@wipo.int attaching a copy of the suspicious document

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Contact Us

General queries on the Madrid System Madrid Customer Service: +41 22 338 8686

intreg.mail@wipo.int

Specific queries on IA or IRmadrid.team1@wipo.int +41 22 338 750 1 (Czech Republic)madrid.team2@wipo.int +41 22 338 750 2madrid.team3@wipo.int +41 22 338 750 3

http://www.wipo.int/madrid/en/contact.html

For the electronic communication with IBe-marks@wipo.int

http://www.wipo.int/madrid/en/services/electronic_notification.html

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Thank you

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