WIPO’s Activities in the ASEAN :
Focus on the Madrid Protocol
Denis CROZE
Director,
WIPO Office in Singapore
AIPA Annual Conference
March 28, 2015
WIPO Office in Singapore
Opened in 2005
Service Center in the region,
promoting WIPO’s Global IP
services as well as the WIPO
Arbitration and Mediation Center
Focus on the ASEAN by
assisting the implementation of
the ASEAN IP Action Plan (20112015) with its various Initiatives,
requested by the ASEAN
Working Group on Intellectual
Property Cooperation (AWGIPC)
Enhances capacity and
knowledge of policy makers,
government officials, IP
professionals and practitioners,
IP owners and the user
community
WIPO Website:
http://www.wipo.int/portal/index.html.en
WIPO Singapore Office (WSO):
http://www.wipo.int/singapore/
Basics about
the Madrid System
How to protect your trademark
abroad?
The national route: application with the Trademark
Office of each country in which protection of the mark
is sought
The regional route: Application with the regional Office
with effect in all the Member States which are
members of a regional trademark registration system
The international route (Madrid Protocol): one central
procedure to apply, maintain and manage an
international registration with effects in all territories
designated
Go National or International/Madrid Route ?
National Route
Many Offices for filing
Many application forms
Many languages
Many currencies
Many registrations
Many renewals
Many modifications
Many foreign attorneys needed
from filing stage
Madrid Route
One Office for filing
One single application form
One language (E/F/S)
One currency (Swiss francs)
One international registration
One renewal
One modification
Foreign attorney first needed in
case of refusal
Objectives of the Madrid System
A simple, low-cost and effective system to facilitate
trademark protection in export markets through:
one central filing and registration procedure
producing effects in one or more territories bound
by the system
one central procedure to maintain and manage an
international registration with effects in all territories
concerned
Advantages of the Madrid System
Its coverage (95 Contracting Parties)
Fixed time limit for granting or refusing protection (12 or
18 months)
Formal examination by WIPO , substantive examination
by the Offices of the designated Contracting Parties
Flexibility of the system (Tailoring the list of goods and
services for the different markets)
Centralized management of portfolio (renewals, changes
concerning the mark, etc.)
Subsequent designation of other contracting parties is
possible
Madrid Union
1 Agreement only
40 Protocol only (including EU and OAPI)
54 Agreement and Protocol
95 Members
Accessions
2012: Colombia, Mexico, New Zealand and Philippines
2013: India, Rwanda and Tunisia
2014: OAPI and Zimbabwe
2015: Cambodia (enter into force on June 5, 2015)
Future accessions:
ASEAN countries by 2015
Canada
Caribbean countries
African countries
Latin American countries?
Benefits for Trademark Owners
Simplicity
A single set of simple formalities
A single filing Office
Cost Savings
Low registration fees
No need to pay foreign agents for filings
No need to pay translation of the paperwork into several languages
Effectiveness
A single international application produces simultaneously the
same legal effect in many designates CPs
A fixed deadline for confirmation or refusal of the legal effect in
each designated CP concerned
All subsequent changes to the international registration may be
recorded and have effect through one single procedure
Benefits for Trademark Owners
Flexibility
Choice among the CPs in which protection is sought
Possibility of limitation of the scope of protection, renunciation
or cancellation of the IR
User-Friendliness
Strong focus on a customer-oriented policy
Availability of different free of charge online tools and services
supporting trademark holders in registering and managing their
IRs
Continuous automation of the procedures under the Madrid
System
Benefits for local agents
The Madrid Protocol is optional and it does not replace
the direct filing route
Applicants would need the services of local agents at
filing stage or at post-registration stage
Increased designations will create more business
opportunities (substantive work), like searches, refusals,
oppositions, request for cancellations, dispute
settlements, license and assignments contracts, and
enforcement
Post-registration activity may compensate for any
reduction in local filing activity
Expanding of services: Management of TM portfolios
Trademarks in force – 2014
Trademarks
by right-holder
Right-holders
(198,027)

1-2 marks
3-10 marks
11-100 marks
101-500 marks
> 500 marks
157,235
33,669
6,794
297
32
79.40%
17.00%
3.43%
0.15%
0.02%
All
198,027
100.00%
101-500 marks
9%
Registrations
in force
(594,477)
Number of
right-holders
> 500 marks
6%
1-2 marks
32%

11-100 marks
27%
3-10 marks
26%
Available online tools
http://www.wipo.int/madrid/en/services/
Madrid Goods and Services Manager (MGS): To use
correct specifications of goods and services
Madrid Real-Time Status (MRS): To inform of the status of
an international application/registration
Madrid Portfolio Manager (MPM): To allow the holders and
representatives to view and modify their portfolio
Madrid Electronic Alerts (MEA): To allow users to submit
a list of IRs for the IB to monitor and inform of changes
Image-based search tool http://www.wipo.int/branddb/en/
Fee Calculator:
http://www.wipo.int/madrid/en/fees/calculator.jsp
E-subsequent designation is now available
The Madrid Protocol
in the ASEAN
ASEAN IP Action Plan 2011 – 2015
28 Initiatives
INITIATIVE: 1. Reduction of average turnaround time (from filing to
registration) for the registration of trademarks without
objections/opposition to 6 months by 2015
INITIATIVE: 5. Capacity building for trademark and industrial design
attorneys/professionals
INITIATIVE: 14. Accession to Protocol Relating to the Madrid Agreement
Concerning the International Registration of Marks by AMSs by 2015
INITIATIVE: 15. Accession to the Hague Agreement Concerning the
International Registration of Industrial Designs by at least 7 AMSs by
2015
NITIATIVE: 17. Establishment of a regional network of patent libraries
within schools and universities in AMSs to increase access to global
scientific and technology information for research and development
INITIATIVE: 27. Capacity building for industrial design and trademark
examiners
INITIATIVE: 28. Infrastructure Modernization of ASEAN IP Office
16
WIPO Assistance in the ASEAN on
Madrid Protocol
Extensive technical assistance (Legislative advice,
drafting of an accession roadmap, seminars, training of
examiners, etc.)
Joint activities in cooperation with other IP donors
(AANZFTA, OHIM/ECAP III, USPTO, etc.)
Most of the acceding legislations are ready and waiting
for the national Parliaments to pass it – Most of the
countries say they will accede before the end of the year
Myanmar is requiring more time to accede.
Madrid Protocol in the ASEAN
Singapore - 2000
Vietnam - 1949 (A) – 2006 (P)
Philippines – 2012
Cambodia (June 2015)
Acceding Countries (expected in 2015): Brunei,
Indonesia, Lao, Malaysia, Thailand
Other Members in the Region
China (1995), Japan (2000), Australia (2001), Republic of Korea (2003), New Zealand
(2012), India (2013)
Madrid Statistics in ASEAN (2013)
Number of international registrations by holders domiciled in
Singapore: 221
Vietnam: 76
Philippines: 43
Number of designations from holders domiciled in
Singapore: 1259
Vietnam: 566
Philippines: 290
Number of designations from holders domiciled in other
Madrid CP
Singapore: 7354
Vietnam: 4853
Philippines: 3121
Fee Calculator (in Swiss francs)
Philippines
Singapore
Vietnam
Basic fee (no color)
653
653
653
Individual fee
95
272
101
Total
748
925
754
Thank you!
[email protected]
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