Flashcards in DL WIPO Administered Treaties Deck (31)
The international protection for trademarks,
industrial designs and appellations of origin is carried out through three
The Madrid System for trademarks,
the Hague System
for industrial designs,
and the Lisbon Agreement for the protection of
appellations of origin.
what is PCT ?
the Patent Cooperation
Treaty (PCT). This is the leading treaty administered by WIPO, in terms of
generated revenue, which facilitates the application for patents in different
How many different systems of international
registration does WIPO oversee?
There are actually three systems. There is what is known as the Madrid
system, which is for the international registration of trademarks and is
governed by two treaties which complement each other. They are the
Madrid Agreement and the Madrid Protocol. Then there is the
system of international registration or more correctly international deposit
of industrial designs, which is governed by the Hague Agreement. The
third is the system of international registration of appellations of origin,
under the Lisbon Agreement. The last-mentioned, however, does not
really affect private owners of industrial property rights, as appellations
are registered at the request of governments (this module does not
cover this Agreement). As a result, most of WIPO’s activities have to do
with the protection of trademarks and industrial designs and patents
through international registration.
What are the following international intellectual property
systems concerned with: the Hague System, the Madrid
System and the Lisbon System?
The Hague System covers the deposit of industrial designs, the Madrid
System the registration of trademarks and the Lisbon Agreement concerns the
registration of appellations of origin
What two treaties form the Madrid System?
The two treaties in the Madrid System are the Madrid Agreement
concerning the International Registration of Marks (1891) and the Madrid
Protocol relating to the Madrid Agreement (1989).
Can an applicant obtain an international trademark
from the Madrid System?
To answer that question, I should first explain how the international
system for the registration of trademarks works. Somebody files an
international application with the International Bureau of WIPO in
Geneva, and in it they designate the countries that are party to the
treaties in which they want the mark to be protected. We register the
mark and then pass it on to the countries that have been designated,
which then have the possibility of refusing protection. They would
normally examine it as though it were an application filed with them
directly and apply their normal national criteria accordingly. If they
refuse it, the refusal is notified to us and entered against the mark for
that country in the International Register. So in other words a person
does secure international registration, but whether or not it is protected
in a given country is determined by that country.
Can you describe the process of international registration for trademarks?
first step the applicant files for international registration with the International Bureau of WIPO in Geneva. Designates the countries in which they seek to protect it.
Second step the International Bureau registers the trademark and transmits to the designated countries.
Third step, the individual designated countries may refuse protection if the mark is not acceptable under their law. That is, they may carry out an examination for such things as distinctiveness, deceptiveness and or conflicts with existing trademarks.
The fourth step is decision communicated to International Bureau.
So the International Bureau has the role of
receiving international applications and then
passing them on to the designated countries.
Does it actually do any examination of the
the role of the International Bureau of WIPO is to receive applications for the protection of trademarks in a number of designated countries. WIPO checks to see if the application has been made in a correct manner and, if so, registers the mark, and forwards it to the designated countries. Examination as to substance may be done in the designated countries if their laws so prescribe.
Under the Madrid system, is it necessary for a person to register his trademark in, say, his home country before he can file an international application?
Yes, this is a fundamental requirement of the international system of registration. So you need to have a registration first at least at your country of origin or in the home country.
You use the international system by applying for a Madrid registration, but after you have filed your international application, the national one is
refused. What happens in that situation?
If the national application is refused, that will of course have the corresponding effect on the international registration. There is a dependent relationship between the national protection and the international protection for a period of five years. But in the case that you mention, where the national application is refused, presumably very soon after the international registration is applied for and therefore, within the five-year period, this would result in the international registration being cancelled. If the refusal at the national level is only partial, then the cancellation would be correspondingly partial.
ow long can you protect a trademark for?
10 years. after you need to renew it every 10 years.
How Madrid System is useful?
So the Madrid system is a useful way in which users of trademarks can apply for protection in a number of countries at the same time. However, the decision whether or not to refuse protection to a particular trademark in a particular country depends on the national system concerned. If protection is not refused, it can be extended indefinitely.
The system of international registration of marks offers several advantages for trademark owners. After registering the mark, or filing an application for registration, with the Office of origin, a trademark owner has only to file one application, in one language, to one office, and pay fees to one office. This is done instead of filing separate applications in trademark Offices in various countries, in different languages, and instead of paying a separate fee in each Office. Similar advantages exist when the registration has to be renewed or modified.
What deals the Hague System ?
deals with the international protection of industrial designs.”
Can you get worldwide protection for an Industrial Design?
it is limited to the country where protection is sought and granted. and if you are looking for more protection jurisdiction the Hague system will facilitate this process.
What is the aim of the international deposit of industrial designs?
the main purpose is to obtain the protection in several countries just by field single application with the IB with WIPO.
What are the advantages of the Hague System?
You able to obtain protection for industrial design in several countries, by filling just one application, in one language and paying one fee in (Swiss franc). Also, simplifies greatly the management of the industrial design, since it is possible to record changes or the renew the deposit through a simple single procedural step with IB of WIPO.
Can you summarize what advantages there are in acquiring industrial design protection?
you acquire the exclusive right to the use of the design.
to make and sell, in the same way as a person with a patent has the exclusive right to work that patent.
A patent lasts for a fixed period of time. Is it the same for an industrial design registration?
yes, but it is not yet uniform. periods of 15 and 20 years are common, the new European Community Directive sets a term of 25 years. (in EU it will be set for 25 years if those detectives will be implemented.
Is there such a thing as worldwide industrial design protection under the Hague Agreement?
It’s not exactly worldwide, but the grant of international registration does give you protection in a number of countries.
It works in the same way as the Madrid system in that you file an international application which is entered in the International Register, published by the International Bureau and notified to the countries concerned, who then have the right to grant or refuse protection. In fact, as far as the Hague Agreement is concerned, there are very few countries that actually examine applications, and consequently very, very few refusals. This is in sharp contrast to the position regarding trademarks.
Do you need to start to look for protection in the country of origin for Industrial design
you don’t need to start with protection in the country of origin under Hague agreement
Can protection be obtained in all the countries in the world by means of the Hague Agreement?
No, only in those that are member states of the Agreement.
Do you need to start to look for protection in the country of origin for trademark?
Yes you need to start your registration from the country of the origin.
What the Patent Cooperation Treaty (PCT) helps to overcome ?
The national patent system requires the filing of individual patent applications for each country for which patent protection is sought. In other words, the principle of territoriality will apply. The PCT helps us to obtain multiple protection in several countries.
What is the objective of The PCT?
to simplify, make more effective and economical, in the interests of the users of the patent system and the Offices that have the responsibility for administering it, the previous or traditional methods of applying for patent protection for inventions in several countries.
Could you explain to me, in general terms, the purpose and objectives of the Patent
The Patent Cooperation Treaty is a treaty that provides for the filing of applications with a view to obtaining patent protection in a large number of countries. It provides a simplified procedure for an inventor or applicant to apply for and eventually to obtain a patent. One of its other aims is to promote the exchange of technical information contained in patent documents among the countries concerned and also within the scientific community concerned, that is, the inventors and industry working in the relevant field.
Does that mean that the PCT actually grants a worldwide patent to an applicant
NO, not provide for the grant of worldwide patents. there are does not exist such things as worldwide patent protection. in fact the national offices should concerned, grants a patent based on the PCT application.
Could you give a typical example of the procedure that an applicant would go through using the Patent
1) to file an application in home country.
2) international phase, (1. the filling,2. international search. 3. international publication 4. international preliminary examination.
3) - Applicant selects amongst the designated countries those which are still of interest.
4) national phase
In the national phase, the applicant could actually process his or her international application before a national or regional patent Office.
The European Patent Office is a regional Office
You mentioned three or four steps in the international phase, which involve searches and
other things. Where does this actually happen? Is it done in Geneva?
No. Most of what happens in the PCT process starts somewhere else, and continues somewhere else again. First, the applicant would file the application with a so-called receiving Office. That is usually the office in the home country of the applicant. It can however be another national office or a regional office and it can also be the International Bureau in Geneva. So, it can happen that the International Bureau gets involved at this very early stage, but it is not very common. As for the second step, that is the international search, at present there are only 12 (updated to July 2004 ) offices specially appointed by the PCT Assembly that are entitled to carry out international searches. These offices, called International Search Authorities, have been selected according to certain criteria, and they render services to applicants under the PCT system, depending, in the case of some of them, on the language in which they work. So they are not all available to all PCT applicants who file PCT applications.
The next step, publication, is handled entirely by the International Bureau in Geneva. This is actually the only PCT function for which WIPO is exclusively responsible. The Organization publishes all PCT applications, wherever they come from and in whatever language they have been filed.
The fourth step is international preliminary examination, and for that WIPO would usually go back to the office that carried out the international search. I say usually because applicants can and in some cases do switch to another office, as they are given that amount of flexibility. And at the end of the international phase, or rather when moving into the national phase – and this is something else that the International Bureau is not involved in - the applicant has to approach each of the offices directly and provide the necessary documentation. One could say, however that the International Bureau has some behind- the-scenes involvement in the overall procedure, because it is responsible for making certain documents available to offices, to the applicant and so on, and for communicating certain documents at certain times under the provisions of the Treaty. So, even though the International Bureau does not actually carry out much of the substantive work, it is nonetheless involved somehow in this phase, whatever happens to the application. It relies on the offices concerned to provide it with the documents, and then acts on them as they come in.