2015 Madrid Statistics | Goods and Services Manager Improved | FAQs
 
WIPO|MADRID
Madrid Highlights 1/2016
APRIL 4, 2016
 
Record Number of International Applications Filed in 2015
A record 49,273 international applications were filed in 2015 under the Madrid System for the International Registration of Marks. Applications rose by 2.9% over the previous year, with the United States of America and Australia accounting for 90% of that growth. Recently released figures also show that China, the United States of America and the European Union were the three most designated Madrid members last year, with recent new members, India and Mexico also included in the list of top ten designated members.
 
Swiss pharmaceutical company Novartis AG was the top filer in 2015, with 197 applications, followed by German retailer LIDL (152) and L’Oréal of France (130).
 
New Version of the Madrid Goods and Services Manager

The Madrid Goods and Services Manager, WIPO’s multilingual online tool that helps you compile an acceptable list of goods and services for an international application, was recently updated with new functionality and content. The range of new features introduced in the latest version includes: explanatory notes in all languages, which help to establish the correct classification of terms not found in the Alphabetical list of Goods and Services; similar group codes for the IP Offices of Japan (JPO) and the Republic of Korea (KIPO), which facilitate similarity searches before you file an international application; and, an option to search by Nice Classification indication basic number, which can be used to search Nice indications and to generate a list of synonymous indications.
 
Engage with WIPO Experts during the Annual INTA Meeting

We look forward to meeting participants at the upcoming Annual Meeting of the International Trademark Association (INTA), in Orlando, United States of America, to discuss recent Madrid and Hague System developments, as well as news from the WIPO Arbitration and Mediation Center. Opportunities to engage with WIPO experts and new Madrid Protocol Contracting Parties, Algeria and Lao People’s Democratic Republic, include: the Madrid System Users’ Meeting (May 22, 11:00-13:00); the WIPO booth (open from May 22 – 25); and Table Topic Sessions chaired by WIPO experts, Mr. Grégoire Bisson, Director of the Hague Registry, Ms. Asta Valdimarsdottir, Director of Operations Division, Madrid Registry, and Mr. Erik Wilbers, Director of Arbitration and Mediation Center, Global Issues Sector.
 
Use Requirements by Certain Members of the Madrid System

The Madrid System legal framework does not impose any obligation to demonstrate the use of a trademark to ensure its continued validity. However, users of the Madrid System should take note of such a requirement in the United States of America, the Philippines and Cambodia, where respective national legislation mandates procedures for the holder to declare actual use or non-use throughout the lifecycle of the trademark. As such, holders of an international registration designating any of these three members will need to submit declarations directly to each of the Offices concerned, taking into account differing requirements, procedures and time limits in each country. 
 
Madrid Registry Back Office IT Systems Upgraded

Over the period March 18 through March 23, 2016, the Madrid Registry back office IT systems were upgraded through the deployment of the new the Madrid International Registrations Information System (MIRIS). MIRIS is a modern IT platform, that will enable the Madrid Registry to modernize its internal procedures, and thereby reinforce its online service offerings to clients over the years to come. As communicated on the Madrid website, the technical transition to MIRIS had little or no effect on clients, although some clients would have noticed that some services were unavailable or had not been updated during the transition period.  All services are progressively returning to normal, with confirmations of the receipt of documents transmitted electronically during the transition period to the Madrid Registry being emailed to the clients from March 30, 2016. The Madrid Registry extends is appreciation to all its clients for their patience during this important transition.
 
Webpage for Future Members of the Madrid System
We invite countries considering accession to the Madrid System for the International Registration of Marks to visit the new Future Members Page for information on preparation required for becoming a member and assistance available from WIPO throughout the accession process. This page also provides a model Road Map, which may function as an implementation plan for future members on issues that need to be addressed prior to accession, and an Accession Kit, which lays out the main actions to be undertaken by Offices, as well as model provisions for implementation of the Madrid Protocol and information concerning declarations.
 
Optional MM21 Form Released

The new optional form MM21 is now available for Madrid System users to communicate their requests for corrections of errors under Rule 28(1) of the Common Regulations.
 
Amendments to the Common Regulations

Two new amendments to the Common Regulations will be in effect as of April 1, 2016. 

Rule 5 – Irregularities in Communications Sent Electronically details procedures and timelines to follow where interested parties need to be excused if a communication sent to the International Bureau electronically does not meet the required timeline.
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Rule 36 – Exemption From Fees has been amended to specifically state that certain changes in the applicant’s or holder’s contact details can now be recorded free of charge; such as changes in address of correspondence and email address.
 
Changes in the Amounts of the Individual Fee for Japan

From April 1, 2016, the new amount of 229 Swiss francs for each class of goods and services will apply to the second part of individual fees for Japan. The amount will apply to all payments made on or after April 1, 2016 in respect of the second part of the individual fee for Japan. This is incorporated in the Fee Calculator.
 
Clarification of Scope of International Registrations Designating the EU

If you are the holder of an international registration with an EU designation in force prior to June 22, 2012, and relied on a NICE Class heading to define the scope of protection, you can clarify this scope before the European Union Intellectual Property Office (EUIPO). You have until September 24, 2016 to clarify the goods and services that fall outside the literal meaning of a NICE Class heading, through a declaration submitted to EUIPO (formally OHIM). Not taking advantage of this opportunity may mean that your scope of protection in the EU will be limited to the literal meaning of the NICE Class heading only.
 
FREQUENTLY ASKED QUESTIONS
Class Headings, Double Designations & Color Fees

Class Heading
Question 1.1: Can I indicate the class heading in my international application?

Answer 1.1: Yes, WIPO accepts all terms contained in the class headings of the Nice Classification.  However, some designated Contracting Parties do not accept some or all of the class headings.

Question 1.2: How do I know if the class headings are acceptable for certain designated Contracting Parties?

Answer 1.2: You should use the Madrid Goods and Services Manager (MGS) which contains the function “Check acceptance by designated Contracting Party (dCP)”.

Question 1.3: If I use the class heading in my international application what will be covered?

Answer 1.3: It depends on the interpretation of the scope of the class heading by each designated Contracting Party.  If you wish to cover all goods and services in the alphabetical list of a particular class, we recommend that you indicate in the international application all the terms contained in the alphabetical list of a particular class or classes (e.g., EUIPO, see Information Notice No. 10/2016).


Double Designations
Question 2: Can I make a subsequent designation for a Contracting Party previously designated in my international registration?

Answer 2: Yes, even if the Contracting Party has been previously designated in the international registration for the same goods and services, WIPO will record it in the International Register and notify the said Office accordingly.


Color Fees
Question 3: If the reproduction of my mark is in black and white (including shades of gray), but I am claiming color (black, white and/or gray) as a distinctive feature of the mark, which basic fee should I pay?

Answer 3: If the reproduction of your mark is in black and white, regardless of any color claim set out in item 8 of the form MM2, you would need to pay the basic fee of 653 Swiss francs.  The amount to pay is determined by the reproduction of the mark in the application form; black and white or in color.
 
 
INFORMATION NOTICES
 
MEMBERS
The Madrid System is the one-stop solution to obtain and maintain protection for your mark in multiple markets around the world. The Madrid Union currently has 97 members, covering 113 countries, and membership is growing every year. Visit the Members of the Madrid Union page for information on Contracting Parties to the Madrid Agreement and the Madrid Protocol, their specific procedures and declarations made.
 
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