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Transcript of World Intellectual Property Organization THE INTERNATIONAL REGISTRATION SYSTEMS National Seminar for...
World Intellectual
Property Organization
THE INTERNATIONAL REGISTRATION SYSTEMS
National Seminar for Patent AttorneysMinsk, October 24 and 25, 2007
Federico Guicciardini Corsi SalviatiFederico Guicciardini Corsi Salviati
Officer-in-chargeOfficer-in-charge
Information and Promotion Division (IPD)Information and Promotion Division (IPD)
Sector of Trademarks, Industrial Designs and Geographical IndicationsSector of Trademarks, Industrial Designs and Geographical Indications
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Table of Contents
1. Introduction2. The Madrid System3. The Hague System4. Conclusions
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
(1) Introduction
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
International Systems
• Trademarks are distinctive signs, used to differentiate between identical or similar goods and services offered by different producers or services providers
• Industrial designs, also referred to simply as designs, concern the ornamental or aesthetic aspects of products
• Both are a type of industrial property, protected by intellectual property rights
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
International Systems
• The WIPO-administered Madrid System for the International Registration of Marks offers a route to trademark protection in multiple countries by filing a single application
• Similarly, the WIPO-administered Hague System for the International Registration of Industrial Designs facilitates industrial designs protection in multiple countries by filing a single application
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
(2) The Madrid System
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
One System – Two Treaties
Madrid Agreement(adopted in 1891 and in force since
1893)
Madrid Protocol (adopted in 1989 and in force since
1996)
Common Regulations (adopted in 1996)
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Objectives of the System
• International Registration of Trademarks
• Simplified access to foreign markets
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
National Route(with national Offices)
• different procedures
• different languages
• fees paid in local currency
• recording of changes:several operations
• (usually) througha local agent
VS International Route(with Office of origin WIPO)
• one procedure
• one language
• fees paid in Swiss francs only
• recording of changes:one operation
• local agent not compulsoryUsually when there is a refusal
Alternative to the National Route
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Effects
• Simpler, faster and very much affordable
• Simplified registration in one country with the possibility of many designations
• Simplified management of a trademark portfolio
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Registration and Administration
Registration and Administration of Trademarks in 81 Contracting Parties – through a single procedure– with a single administration– in a single language
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Closed System
• Attachment necessary– establishment (real and effective)– domicile– nationality
• Office of Origin
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
The Madrid System Procedure
• Role of the National Office
• Language
• Formal examination
• Registration
• Notification and publication
• Refusal (or not) by designated Contracting Parties
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Bundle of National Rights
• National (designated) Offices determine:– substantive conditions of protection
– applicable procedure if refusal
– scope of protection
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Central Administration
• Subsequent Designations• Assignments• Changes in Names and Addresses• Limitation, renunciation, cancellation• Renewal
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Basis of the International Application
• National registration (A)• National registration or application (P)• Language: French (A) - French, English or
Spanish (P)
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Refusal of Protection
• 12 months (A)
• 12 months or 18 months (P) - or more in the case of an opposition
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Fees
• A Fee Calculator is available at WIPO Website
• In 2006, applicants paid on average of 3,433 CHF for an international registration
• 55% or international registrations are less than 3,000 CHF
• 80% of registrations were less than 5,000 CHF
• Average of 11.5 designations per each registration
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Contracting Parties
• States (A)
• States and certain Intergovernmental Organizations (P)
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
To Sum Up
AGREEMENT PROTOCOLE
Accession States States plus Int. Organizations
Precondition Basic registration Basic application or registration
Languages French English, French and Spanish
Fees Supplementary and complementary
Possibility of individual fees
Refusal time 12 months 18 months or +
Dependency 5 years 5 years + transformation
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid Union (81 Members)
Agreement only: 7Protocol only: 24Agreement & Protocol: 50
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Recent Accessions: An Overview
• Viet Nam (to the Protocol): July 11, 2006• Botswana (to the Protocol): December 5, 2006• Uzbekistan (to the Protocol): December 27, 2006• Azerbaijan (to the Protocol): April 15, 2007• San Marino (to the Protocol): September 12, 2007• Oman (to the Protocol): October 16, 2007
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Trademarks Worldwide
• Over 2,000,000 trademark applications are filed worldwide annually
• Approximately 700,000 are international trademarks filings, from which:
• Over 300,000 are filed through the Madrid System (43%)
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
International Trademarks in force
• Some 471.325 registrations in force
• Over 5 million active designations
• More than 159,000 different trademark owners
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Registration by Category of Right-Holder by December 31, 2006
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Top Filer Members in 2006
Major filer countries in 2006 (shares within total filings in 2006 and growth rates as compared to 2005)
Country # Filing Share
Germany 6,552 18 %
France 3,896 10.7 %
USA 3,148 8.6 %
Italy 3,086 8.5 %
Benelux 2,784 7.6 %
Switzerland 2,468 6.6%
UK 1,489 4.1 %
China 1,328 3.6 %
Spain 1,215 3.3 %
Austria 1,197 3.3 %
Australia 1,100 3.0 %
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
International Registrations
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Renewals 2003 - 2006
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Number of Designations (2006)
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Fees per International Registration
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
International Applications 1996 - 2006
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Top filer Members in 2006
Top Filer (Percentage)
0%
5%
10%
15%
20%
25%
Ger
man
y
Fra
nce
Uni
ted
Sta
tes
Ital
y
Ben
elux
Eur
opea
nC
omm
unity
Sw
itzer
land
Chi
na
Uni
ted
Kin
gdom
Aus
tral
ia
Aus
tria
Japa
n
Oth
ers
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Some significant filing increases
in 2006 (as compared to 2005)
# Applications Growth
EU 2,523 65.5 %
Italy 3,086 25.5 %
Australia 1,100 29.1 %
Spain 1.215 17.2 %
USA 3.148 10.5 %
Other than the top 20
3,260 11.3 %
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Most Designated Contracting Parties in registrations + Subsequent Designations in
2006 Vs 2005Country # Designations Growth
China 15,801 16.4 %
Russia 14,432 12.7%
Switzerland 14,260 8.1%
USA 13,994 18.0%
Japan 11,844 17.3%
EU 10,640 68.7%
Australia 9,115 14.1%
Norway 9,102 7.8%
Ukraine 9,057 9.5%
Turkey 8,958 4.2%
Rep of Korea 8,334 16.4%
Germany 8,147 -11.0%
Romania 8,103 4.4%
France 7,495 - 12.7%
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Belarus and the Madrid System
• Agreement: December 25, 1991• Protocol: January 18, 2002• International registrations in 2007: 34• Subsequent designations in 2007: 7• Individual designations in 2007: 3736• Individual renewals in 2007: 2072• Subsequent designations in 2007: 631
September 2007
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International Registrations from Belarus
0
5
10
15
20
25
30
35
2002 2003 2004 2005 2006 2007
September 2007
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Subsequent Designations from Belarus
0
5
10
15
20
25
30
35
2002 2003 2004 2005 2006 2007
September 2007
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Designations of Belarus
0
500
1000
1500
2000
2500
3000
3500
4000
4500
5000
2002 2003 2004 2005 2006 2007
September 2007
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Designations of Belarus in Renewals
0
500
1000
1500
2000
2500
2002 2003 2004 2005 2006 2007
September 2007
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Belarus in Subsequent Designations
0
100
200
300
400
500
600
700
800
900
2002 2003 2004 2005 2006 2007
September 2007
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
The Madrid System Website
• The Madrid System• Filing Information• Madrid System Information Notices• Fees Calculator• Guides and Information Material• The WIPO Gazette of International Marks• Annual Statistics• Contacts
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
(3) The Hague System
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
The Hague Agreement
The Hague Agreement is a procedural filing system for the international registration and protection of industrial designs, administered by the International Bureau of WIPO in Geneva (Switzerland)
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Registration and management of Industrial Designs in up to 47 Contracting Parties by:
• A single procedure• With a single administration process (WIPO)• In one language (English or French)• On payment of a fee in a single currency
(CHF)
Objectives
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
The Hague System works on a purely procedural way. It does not determine:
• The conditions for protecting a design• The procedure to be applied in order to
decide whether a design may be protected• The rights which result from protection
These issues are governed by the national law of the designated countries
Protection by Domestic Law
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
The Hague Agreement was adopted in 1925 and entered into force in June 1928. It was by then revised by 3 Acts, namely:
• The 1934 Act (London Act) in force in 1939• The 1960 Act (Hague Act) in force in 1987• The 1999 Act (Geneva Act) in force in 2004
Common Regulations (latest revision September 2007) and the Administrative Instructions
Components
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
The Hague Union Members (47)
24 Geneva Act (1999)21 Hague Act (1960) 2 London Act (1934)
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Geneva Act: (24)Albania, Armenia, Botswana, Croatia, Egypt, Estonia, European Community, France, Georgia, Hungary, Iceland, Kyrgyzstan, Latvia, Liechtenstein, Namibia, Republic of Moldova, Romania, Singapore, Slovenia, Spain, Switzerland, The FYR of Macedonia, Turkey, Ukraine
Hague Act (21)
Belgium, Belize, Benin, Bulgaria, Côte d’Ivoire, D.P.R. of Korea, Gabon, Germany, Greece, Italy, Luxembourg, Mali, Monaco, Mongolia, Montenegro, Morocco, Netherlands, Niger, Senegal, Serbia, Suriname
London Act (2)Indonesia, Tunisia
The Hague Union Members (47)
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
• This is a closed system• Connection required between applicant and a
CP via establishment, domicile, habitual residence or nationality
• Filing either directly with WIPO or indirectly via the CP from which entitlement is derived
• Without the required entitlement in a CP it is not possible to file an international application under the Hague Agreement
Who May Use the Hague System
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• No prior national application or registration is required to fill an international application
• Filing directly with WIPO in either English or French
• It must contain a reproduction of the industrial designs concerned, along with the designation of the CPs
• It may include up to 100 designs (same class of Locarno)
The International Application
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
• The International Application is normally sent directly to WIPO by the applicant
• WIPO checks the formal requirements• WIPO does not appraise in any way the novelty
of the designs and therefore it is not entitled to reject an international application on this ground
• An application complying with the prescribed formal requirements is registered and published by the International Bureau in the International Designs Bulletin
• The holder is notified a certificate of international registration
Formal Examination by WIPO
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
• Each Office must identify in the Bulletin the registrations in which it is designated in order to proceed with the substantive examination provided by its domestic legislation
• An Office may refuse protection, in its territory, to an industrial design subject to international registration if it does not fulfil the conditions of protection at the national level
• 6 or 12 months refusal period (1960 - 1999)
Examination by Designated Office
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
• Same effect as a national application until the expiry of the refusal period of pending the outcome of the refusal procedure
• If no refusal, effect as a national registration from the date of its filing
Effects of the International Registration
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
• 5 years initial term from the date of the international registration
• Renewal up to 10 years (5+5) under the 1960 Act and up to 15 years (5+5+5) under the 1999 Act
• If the law of a designated CP provides for a longer duration (for instance 25 years), the IR can be renewed up to the same maximum duration
International Registration Management
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
SCHEDULE OF FEES (as in force on January 1, 2008)
I. International Applications Governed Exclusively or Partly by the 1960 Act or by the
1999 Act Swiss francs
1. Basic fee 1.1 For one design 397 1.2 For each additional design included in the
same international application 19 2. Publication fee
2.1 For each reproduction to be published 17 2.2 For each page, in addition to the first,
on which one or more reproductions are shown (where the reproductions are submitted on paper) 150
3. Additional fee where the description exceeds
100 words per word exceeding 100 words 2
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
4. Standard designation fee 4.1 Where level one applies:
4.1.1 For one design 42 4.1.2 For each additional design included in
the same international application 2 4.2 Where level two applies:
4.2.1 For one design 60 4.2.2 For each additional design included in
the same international application 20 4.3 Where level three applies:
4.3.1 For one design 90 4.3.2 For each additional design included in the same international application 50
5. Individual designation fee (the amount of the individual designation fee is fixed by each Contracting Party concerned)
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To Sum Up
1960 Act 1999 Act
Accession States States plus Int. Organizations
Languages French English, French
Refusal time 6 months 12 months option
Additional Requirement
Not possible Identity of creator, brief description, claim
Min. duration 10 years 15 years
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
International Registrations in 2006by Contracting Party of the Owner
Sw itzerland35.64%
Germany24.87%
Turkey2.36%
Italy4.03%
Benelux9.11%
Other Countries4.47%France
19.53%
Registrations by Country in 2006
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Most Designated Countries in 2006
1334
895
600
482
84
456
0 200 400 600 800 1000 1200 1400
Spain
Italy
Benelux
Switzerland
France
Germany
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Registrations as of December, 31 2006
• 28,955 international registrations (from 9,349 different holders)
• 292,389 designations• 1,260,164 designs
During the year 2006
• International registrations: 1,143• Average number of designs: 5• Renewals: 3,889• Average fee: 1,761 CHF• All fees: 96% are below 5,000 CHF
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Classes of Goods 2006
10 Clocks and watches and other measuring instruments, checking and signalling instruments
22%
9 Packages and containers for the transport or handling of goods
11%
6 Furnishing 8%
7 Household goods, not elsewhere specified 6%
11 Articles of adornment 6%
23 Fluid distribution equipment, sanitary, heating, ventilation and air-conditioning equipment, solid fuel
5%
14 Recording, communication or information retrieval equipment 5%
26 Lighting apparatus 4%
19 Stationery and office equipment, artists' and teaching materials
4%
12 Means of transport or hoisting 4%
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Some Top Users
Swatch (CH); DaimlerChrysler (DE); Interior's (FR); Sony Overseas (CH); Unilever (NL); BMW (DE); Hermes Sellier (FR); SEB (FR); Sara Lee (NL); Phillips Electronics (NL); Porsche (DE); Braun (DE); Nokia (DE); Hansgrohe (DE); Tefal (FR); Société Elmar Wolf (FR); WTG Westfälische Textil-Ges. Klingenthal & Co. (DE); Seb (FR); Volkswagen (DE); Siemens (DE); Swarovski (LI); Interior’s (FR); Fiat (IT); Calor (FR); Leifheit (DE); Koziol Geschenkartikel (DE); Richmont (CH); Fonkel Meublemarketing (NL); Mainetti (DE); Guy Degrenne (FR); Cartier (FR); Salomon (FR); Grohe Water Technology (DE); Societe Des Verres des Verres de Securite (FR); Vitra Patente (CH); Grosfillex Sarl Arbent Oyonnax (FR); ITM Enterprises (FR); Chaumet International (FR); Henkel Kommanditgesellschaft auf Aktien Henkelstrasse (DE); Chopard International (CH); Goodyear Tire & Rubber Company (DE); WMF (DE); Groupe Bercher (FR).
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Why Protecting Designs in the EC
• 70% Prevent copying• 23.4% Company policy• 20.3% Get ahead competition• 10.1% Prestige• 6.5%Prevent people think “I copy”• 5.8%Other
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Legal Texts and Guide
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
The Hague System Website
• The Hague System• Filing Information• Fees Calculator• Guides and Information Material• The International Designs Bulletin• The Hague Express Database• Annual Statistics• Contacts
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(4) Conclusions
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Conclusions for both Systems
• Administrative efficiency and flexibility• Portfolio management (savings on costs) • Business asset increasing commercial
value of a company and its products• Registered design may be licensed (or
sold)• Encourages fair competition and honest
trade practices
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Conclusions for both Systems
• International protection with a minimum of formalities and expense
• The right to prevent unauthorized copying or imitation by third parties
• Exclude all others making, offering, importing, exporting or selling product with the design
• Overall management by WIPO• Simplified access to new markets• Saving on costs
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
• Making a Mark
(Trademarks)• Looking Good
(Designs)• Inventing the
Future • (Patents)• Creative Expression
(Copyright)
IP for Business Seriesby the SMEs Division of WIPO
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Useful Internet Links at WIPO
• WIPO Administered Treaties• The SMEs Division of WIPO• Resources for Business• Calendar of Meetings• WIPO Electronic Bookshop• E-Newsletters