Global Financial Crisis Hits International Trademark Filings in 2009

Geneva, March 18, 2010
PR/2010/634

Video of the press conference, Audio of the press conference (MP3)

International trademark filings under WIPO’s Madrid System for the International Registration of Marks (“the Madrid system”) dropped by 16% in 2009 as a result of the global economic downturn, though increases were observed among some major users of the system, notably the European Union (EU) (3.1%) and Japan (2.7%), as well as in the Republic of Korea (ROK) (+33.9%), Singapore (+20.5%), Croatia (+17.5%) and Hungary (+14.5%). 

WIPO received 35,195 international applications under the 84-member Madrid system compared to 42,075 in 2008.  Similarly, international trademark registrations were down 12% on 2008 with a total 35,925 international registrations in 2009.  Trademark registrations reflect the introduction of new products and services to the market and are sensitive to business cycles.  The comparatively smaller decrease (-1.2%) in the renewal of international trademark registrations, compared to 2008, reflects the value of established brands at a time when consumers opt for goods that are tried and trusted.  In 2009, 19,234 international trademark renewals were recorded.

“International trademark filings took a hit in 2009,” said WIPO Director General Francis Gurry, “this is not surprising given the difficult financial conditions and restrained consumer demand facing companies around the world.  While trademark protection is sound business practice in good times and bad, companies are more cautious about bringing new products to market when economic uncertainty is high.  That said, trademarks and the brands they underpin play a key role in value creation and provide the basis for business expansion when the economy recovers.”

Mr. Gurry noted “Historically, we know that demand for intellectual property rights declines in periods of recession.  These downturns are more strongly and rapidly felt in the area of trademarks which are more closely tied to market conditions.  Demand for intellectual property rights, however, had reached unprecedented levels prior to the crisis and we have every reason to believe that international trademark activity will pick up as economic growth solidifies and broadens.”

Regional and National Filing Trends

The EU accounted for over half of the international applications received – some 21,824 - in 2009.  This includes international applications filed through national trademark offices of the countries concerned and those filed through the Office of Harmonization for the Internal Market (OHIM) – applicants from the EU may opt to file through their national office or through OHIM.  Some 3,710 international applications were filed through OHIM in 2009 representing a 3.1% increase on figures for 2008. 

Marked declines in the filing of international trademark applications were evident in a number of countries in 2009, including the Czech Republic (-34.6%), Sweden (-34%), Italy (‑32.2%), Spain (‑29.9%), Denmark (-27.1%), Benelux (-26.2%), and Germany (-22.9%). Significant decreases were also recorded in international applications received from France (-16.5%), Austria (-15.7%), China (‑14.3%), the United Kingdom (-13.3%), the United States of America (USA) (-13.1%) and the Russian Federation (-10.3%).  

However, the filing of international trademark applications rose in a number of countries in 2009 including the EU with a 3.1% increase and Japan with a 2.7% increase.  Significant increases were also recorded by the Republic of Korea (+33.9%), Singapore (+20.5%), Croatia (+17.5%) and Hungary (+14.5%).

Among major users, applicants in Germany filed 4,793 international applications, representing 13.6% of the total down 22.9% on 2008.  OHIM ranked second with 3,710 international applications reflecting a 3.1% increase on 2008 figures.  Applicants in France accounted for 3,523 international applications, representing 10.5% of the total and a decrease of 16.5% compared to 2008.  Businesses in the USA filed the fourth largest number of applications, with 3,201 applications or 9.1% of the total and a 13.1 % decrease compared to 2008.  Switzerland held its 5th ranking with 2,671 international applications, and a decrease of 7.4 %, followed by the Benelux countries (Belgium, Luxembourg and the Netherlands) with 1,968 international applications representing a decrease of 26.2% compared to 2008. 

In 2009, the EU moved up two places to become the second largest user of the Madrid system.  Norway moved from 21st to 19th position, the ROK moved from 30th to 23rd position, Hungary from 27th to 25th position, and Singapore from 33rd to 28th position.

Developing countries accounted for 1,973 filings representing 5.6% of the total.  Within this category, the highest growth rates were seen in the ROK with a 33.9% increase, and Singapore with a 20.5% growth rate.

Top Holders and Top Applicants

With 136 international trademark applications, Novartis (Switzerland) was the largest filer in 2009 followed by Lidl (Germany), Henkel (Germany), Zhejiang Medicine Company (China), Shimano (Japan), KRKA (Slovenia), Richter Gedeon (Hungary), L’Oréal (France), BSH Bosch und Siemens (Germany), Egis Gyógyszergyár (Hungary), Pfizer (Switzerland), Janssen Pharmaceutica (Belgium), Bayer (Germany), Glaxo Group (UK), Boehringer Ingelheim (Germany), Nestlé (Switzerland), Sanofi Aventis (France), Callaway Golf Company (USA) and Siemens (Germany).

In May 2009, the number of international trademark registrations topped one million when Austrian “eco” company Grüne Erde, which specializes in natural wood, textile and cosmetic products, registered its mark.  

Henkel (Germany), with a total of 2,815, holds the largest number of international trademark registrations under the Madrid system.  The top twenty holders by the end of 2009 were: Henkel (Germany), Novartis (Switzerland), Janssen Pharmaceutica (Belgium), l’Oréal (France), Nestlé (Switzerland), Unilever (Netherlands), ITM Enterprises (France), BASF (Germany), Sanofi-Aventis (France), Siemens (Germany), Lidl (Germany), Bayer (Germany), Biofarma (France), Boehringer Ingelheim (Germany), Richter Gedeon (Hungary), Syngenta (Switzerland), Philips (Netherlands), Ecolab (Germany), Merck (Germany), Hofer  (Austria) and Deutsche Telekom (Germany).

Top Designated Countries

Madrid Union members were notified of 303,344 new designations (contained in new registrations or territorial extensions) in 2009, representing a 20% decrease compared to 2008 again reflecting the generally flat global economic conditions.  When submitting an international trademark application, applicants must designate those member states in which they want their mark to be protected.  Applicants can also extend the effects of an international registration to other members at a later date by filing a subsequent designation.  In this way, the holder of an international registration can expand the geographical scope of the protection of a mark in line with evolving business needs.

The top six in the ranking of most designated member states remained unchanged.  China (with 14,766 designations) continues to be the most designated country, followed by the Russian Federation, USA, Switzerland, the European Union and Japan.

The number of designations fell in all designated contracting parties, although a number of countries moved up the list of 40 most designated contracting parties.  For example, Viet Nam moved from 24th to 21st position, Bosnia and Herzegovina from 33rd to 26th position, Azerbaijan from 36th to 32nd position, Georgia (from 35th to 33rd position) and Albania (from 40th to 35th position).  Two countries entered the top 40 most designated countries in 2009, namely, Iran (37th) and Egypt (39th).

Profile and Costs of Registrations Recorded in 2009

In 2009, on average, about seven Madrid Union members were designated per registration by applicants seeking international trademark protection under the Madrid system. More than half (62%) of these registrations sought protection in five or less export markets.

In submitting a trademark application, an applicant has to specify the goods or services to which the trademark will be applied in accordance with an international classification system known as the “Nice Classification”.  The most popular classes of goods and services in international trademark registrations recorded in 2009 were Class 9 (covering, for example, computer hardware and software) representing 8.3% of the total, Class 35 (covering services such as office functions, advertising and business management) which represented 7.1% of the total, Class 42 (covering services provided by for example, scientific, industrial or technological engineers and computer specialists) which represented 5.6% of the total;  Class 5 (covering mainly pharmaceuticals and other preparations for medical purposes), Class 25 (covering clothing, footwear and headgear) and Class 41 (covering services in the area of education, training, entertainment, sporting and cultural activities) each represented 4.7% of the total.

In 2009, applicants paid on average 3,408 Swiss francs for an international registration; for 57% of registrations the fees paid were less than 3,000 Swiss francs.

The Madrid system allows for the central administration of an international trademark portfolio, as it provides for procedures which enable trademark holders to record modifications to international registrations (for example, changes of ownership, changes in name or address of the holder or changes in the appointment of the representative of the holder) through the submission of a single request to WIPO.  Modifications recorded in 2009 totaled 90,136 representing a 1.3% decrease over 2008. 

Active International Registrations

Over half a million (515,562) international registrations were active in the International Register at the end of 2009, containing some 5.6 million active designations and representing a 2.4% increase relative to 2008.  These registrations belong to 169,939 right holders who are mostly small and medium-sized enterprises.

Membership of the Madrid System

The total number of member states of the Madrid system (governed by the Madrid Agreement (1891) and the Madrid Protocol (1989)) remains 84. After the ratification of the Madrid Protocol by Egypt, and the accession to the Protocol by Liberia and Sudan, the number of contracting parties of the Protocol has risen to 81.  This means that now only three countries are bound by the Madrid Agreement only.  An expanding membership and an ever wider geographical spread of the system make it a more attractive option for businesses operating in international markets. 

Of the total number of international applications filed in 2009, 35.7% were transmitted to WIPO electronically;  the transmitting trademark offices were those of Australia, Benelux, EU, Republic of Korea, Switzerland and the USA.

Background

The WIPO-administered Madrid System for the International Registration of Marks offers a trademark owner the possibility of having a mark protected in up to 84 countries by filing one application, in one language (English, French or Spanish), with one set of fees, in one currency (Swiss Francs).  Applicants wishing to use the Madrid system must apply for trademark protection in a relevant national or regional trademark office before seeking international protection. An international registration under the Madrid system produces the same effects as an application for registration of the mark in each of the contracting parties designated by the applicant.  If protection is not refused by the trademark office of a designated contracting party, the status of the mark is the same as if it had been registered by that office.  Thereafter, the international registration can be maintained and renewed through a single procedure.  Thus, the system provides a cost-effective and efficient way for trademark holders to secure and maintain protection for their marks in multiple countries.

The first international trademark registration dates from 1893 and belonged at that time to Swiss chocolate producer Russ Suchard et Cie, but is no longer in effect.  The oldest international trademark registration which is still in effect as a result of multiple renewals, belongs to Swiss watchmaker Longines. This trademark was also first registered in 1893.   The international register is located at WIPO’s Geneva headquarters.

Trademarks are a key component of any successful business marketing strategy as they allow companies to identify, promote and license their goods or services in the marketplace and to distinguish them from those of their competitors, and cement customer loyalty. A trademark symbolizes the promise of a quality product and in today’s global and increasingly electronic marketplace, a trademark is often the only way for customers to identify a company’s products and services. Trademark protection hinders moves to “free ride” on the goodwill of a company by using similar distinctive signs to market inferior or similar products or services. Loss, dilution or infringement of a high-value trademark could prove devastating to a business.

Major Filing Contracting Parties (2009)

Number of applications filed by Contracting Party

Shares within total filings in 2009 and growth rates as compared to 2008

Most Designated Contracting Parties (2009)

Number of designations by designated Contracting Party (Includes designations in new registrations and subsequent designations)

Growth rates as compared to 2008

List of Members of the Madrid Union (84)

(A):  indicates a party to the Agreement (56)
(P):  indicates a party to the Protocol (81)

Trademarks in Force in the International Register (by December 31, 2009)

* Belgium, Luxembourg and the territory of the Kingdom of the Netherlands in Europe have a unified legislation on trademarks and a common Office for the registration of trademarks under that legislation (Benelux Office).
Under the Madrid system, protection shall be requested as if they were one country (Benelux).
Their designation shall be subject to payment of a single complementary or individual fee.

** The Netherlands Antilles is a territory of the Kingdom of the Netherlands to which Benelux
Trademark law does not apply, but which has its own trademark law and its own Office for the
registration of trademarks under that law.  Protection in respect of the Netherlands Antilles shall be requested
through a specific designation under the Protocol, distinct from that of the Benelux.

*** The Madrid Protocol will enter into force, with respect to Sudan, on February 16, 2010.