World Intellectual

Property Organization

Trademarks and BrandsThe Role of WIPO

Martha Parra FriedliAlicante, June 5 and 6, 2008

International Protectionof Marks

• Paris Convention for the Protection of Industrial Property

• Madrid System Concerning the International Registration of Marks

• Recent and Current Work in the area of Marks

The Paris Convention (PC)

• Historically at the origin of the most important international agreements administered by WIPO

• Established on March 20, 1883• Revised in 1900, 1911, 1925, 1934,

1958 and 1967• Amended in 1979• Members: 173

Recent Accessions (PC)

• Saudi Arabia March 2004• Andorra June 2004• Pakistan July 2004• Comoros April 2005• Montenegro June 2006• Yemen February 2007• Angola December 2007• Thailand August 2008

Madrid System

• The WIPO-administered Madrid System for the International Registration of Marks

• offers a worldwide oriented route to trademark protection in multiple countries by filing a single application

Madrid System

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)

82 Members

Recent Accessions

• EU October 2004• Bahrain December 2005• Botswana December 2006• Montenegro June 2006• Viet Nam July 2006• Uzbekistan December 2006• Oman October 2007• Madagascar April 2008

The system provides

• One single filing and affordable procedure in up to 82 Contracting Parties

• Central administration of all changes subsequent to the international registration

• Simpler, faster and very much affordable• Simplified management of a trademark

portfolio

Major User CPs (Jan – Jul 2007)Country No. Filing Growth Share

Germany 3,388 7.0% 14.6%France 2,308 6.9% 10.0%US 2,045 10.6% 8.8%EC 1,896 41.7% 8.2%Switzerland 1,573 13.6% 6.8%Italy 1,538 - 9.6% 6.6%Benelux 1,537 0% 6.6%China 1,009 20.7% 4.3%UK 681 18.0% 2.9%Austria 665 - 2.5% 2.8%Australia 615 - 2.8% 2.7%Japan 604 19.8% 2.6%

In 2007

• WIPO received 40,000 applications (9.5% growth over 2006)

• Applicants paid on average 3,549 CHF for an international registration

• 81% of registrations were less than 5,000 CHF

• An average of 8.4 designations were made per each registration

more information at:

www.wipo.int/export/sites/www/madrid/en/statistics/pdf/summary2007.pdf

Recent Work

WIPO Standing Committee on the Law of Trademarks, Industrial Designs and

Geographical Indications (SCT)

(international norm-setting)

The Singapore Treaty on the Law of Trademarks

adopted on March 27, 2006

The Singapore Treaty

• Revised Trademark Law Treaty (1994)

• Objective: harmonization and simplification of administrative requirements relating to the registration of marks

• Mostly procedural aspects

Procedures covered

• application for registration• appointment of a representative• changes in name or addresses• correction of mistakes• transfer of ownership• renewal of registration• relief measures• recording of licenses

Ongoing Work

• Results of a survey: “Questionnaire on Trademark Law and Practice”

• Replies received from 73 Member States and three intergovernmental organizations

• Document WIPO/Strad/INF/1, available at : www.wipo.int/sct/en

Ongoing Work

• Since November 2006• Non-Traditional Marks (“graphic”

representation)• Trademark Opposition Procedures

(possible areas of convergence)• Improvements in the Administration of

Article 6ter PC- Database- Communication Procedures

Thank you!martha.friedli@wipo.int