Germany Holds its Lead in a Year that sees Record Number of International Trademark Filings
March 15, 2007
A record 36,471 international trademark applications [PDF] were received in 2006 by the World Intellectual Property Organization (WIPO) under the Madrid system for the international registration of trademarks. This represents an 8.6% increase on figures for 2005. Applicants from Germany, for the 14th consecutive year, led the list of top filers, followed by users in France, and the United States of America (USA). China was the most designated country in international trademark applications reflecting increasing levels of trading activity by foreign companies in China. The "Madrid system" is a user-friendly and cost-effective service that enables individuals and companies to acquire and maintain trademark protection in export markets. "Increasingly, the business community is recognizing the advantages of the Madrid system as an efficient way to obtain trademark protection in multiple countries. This is borne out by the healthy growth rates enjoyed by the system in recent years", said Dr. Kamil Idris, Director General of WIPO. "It is our hope and expectation that more countries will embrace the Madrid system as a cost-effective and reliable service for brand owners seeking to protect their commercial interests in new export markets", the Director General added.
German-based companies accounted for the largest share of the 36,471 international trademark applications received by WIPO in 2006 accounting for 6,552 applications or 18.0% of the total. These were followed by French-based companies which accounted for 3,896 applications or 10.7% of the total. After only 3 years as a member of the Madrid system, users in the USA ranked third with 3,148 or 8.6% of the total; followed by Italy 3,086 (8.5%), Benelux 2,784 (7.6%), Switzerland 2,468 (6.8%), United Kingdom 1,489 (4.1%), China 1,328 (3.6%), Spain 1,215 (3.3%) and Austria 1,197 (3.3%).
Mr. Ernesto Rubio, Assistant Director General of WIPO responsible for trademark questions, noted that a number of countries had experienced significant growth in the number of international trademark filings. Italy, for instance, enjoyed a 25.5% increase enabling it to inch from 5th to 4th position in the ranking of top filer countries. Applications originating in Spain rose by 17.2% moving Spain from 10th to 9th place in the rankings. Australia accounted for a 29.1% increase with 1,100 applications and moved from 12th to 11th place. And Norway entered the top twenty in 2006 with 312 applications representing a 32.8% increase.
Also, a number of developing countries witnessed significant growth in international trademark filings in 2006, in particular the Republic of Korea with 190 applications (+28.4%), Singapore with 161 applications (+16.7%) and Morocco with 119 applications (+80.3%).
The 25 countries of the European Union together accounted for 23,916 applications in 2006. These figures include both the international applications filed through the national trademark offices of the countries concerned and those filed through the European Community regional office (OHIM) in Alicante (2,445). Since October 2004, applicants from the European Community (EC) have the option to file their international applications either through their national trademark office or through the EC’s regional Trademark Office (OHIM). In 2006, the second full year of the EC as a member of the Madrid system, the number of international applications filed by applicants from the EC through OHIM, rose by 32.0%.
The top twenty filers of international trademark applications under the Madrid system in 2006 were Lidl (Germany), Novartis (Switzerland), Janssen Pharmaceutica (Belgium), Henkel (Germany), Nestlé (Switzerland), Siemens (Germany), Aldi (Germany), Unilever (Netherlands), Bosch (Germany), Plus (Germany), Beiersdorf (Germany), TUI (Germany), Biofarma (France), L’Oréal (France), Philips (Netherlands), Sony Ericsson Mobile Communications (Sweden) , Boehringer Ingelheim (Germany), Abercrombie & Fitch Trading Co. (USA) (the first American company to ever feature in the top 20), Coscentra (Netherlands) and Hofer (Austria).
The top filers from developing countries included the China Network Communications Group Corporation (China), Shanghai Tyre & Rubber Co. (China), Xiamen Xingyatai Plastic Industry Co. (China), ESTsoft Corp. (Republic of Korea), TMAX SOFT Co. (Republic of Korea), Maroc Telecom (Morocco), Asia Pacific Breweries (Singapore), Société de Promotion Pharmaceutique du Maghreb "Promopharm " (Morocco), INGELEC (Morocco) and the Office National de Commercialisation des Produits Viti-Vinicoles (Algeria).
Top Designated Countries
A record 364,725 new designations of Madrid Union member countries [PDF] were notified in 2006, representing a 1.7% increase over 2005 and reflecting commercial activity by foreign companies in the designated country. When submitting an international trademark application, applicants must designate those member countries 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.
For the second consecutive year, China was the most designated country. With 15,801 designations, it enjoyed a 16.4% increase in designations over 2005. The second most designated country in 2006 was the Russian Federation with 14,432 designations (+12.7%), followed by Switzerland with 14,260 designations (+8.1%), the United States of America with 13,994 designations (+18.0%) and Japan with 11,844 designations (+17.3%).
The EC, in its second full year as a member of the Madrid Union, became a favorite target market for designations and shot from 22nd to 6th position in the ranking of most designated members of the Madrid Union with 10,640 designations recorded in 2006 (+68.7% as compared to 2005). Increasingly, applicants are opting to designate the EC as a whole for trademark protection rather than individual EC countries. Other countries that attracted an increased number of designations in 2006 include Australia which saw a 14.1% increase enabling it to move from 14th to 7th position in most designated country rankings. Norway attracted a 7.8% increase in designations moving it from 10th to 8th position; Ukraine moved from 13th to 9th place with a 9.5% increase in designations and the Republic of Korea which enjoyed a 16.4% increase moved from the 18th to the 11th most designated country.
Profile and Costs of Registrations Recorded in 2006
In 2006, on average, 8.5 member countries were designated per registration by applicants seeking international trademark protection under the Madrid system.
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 2006 were Class 9 (which covers, e.g., computer hardware and software and other electrical or electronic apparatus of a scientific nature) representing 8.9% of the total, Class 35 (which covers services such as office functions, advertising and business management) which represented 6.3% of the total , Class 25 (covering clothing, footwear and headgear), or 5.4% of the total, Class 42 (covering services provided by, e.g. scientific, industrial or technological engineers and computer specialists) or 5.4% of the total and Class 5 (which covers, e.g., pharmaceuticals and other preparations for medical purposes), or 4.5% of the total.
In 2006, applicants paid on average a fee of 3,433 Swiss Francs (ChF) for an international registration. For 80% of the registrations recorded in 2006, the fees paid were less than 5,000 ChF. On January 1, 2006, a fee reduction took effect for the benefit of applicants from least-developed countries (LDCs) filing applications for international trademark protection. As from that date, the basic fee payable to WIPO was brought down for these applicants to 10% of the current amounts of 653 or 903 ChF, i.e. 65 or 90 ChF, depending on whether the reproduction of the mark is in black and white or in color. At present, seven LDCs are party to the Madrid system, namely, Bhutan, Lesotho, Liberia, Mozambique, Sierra Leone, Sudan and Zambia.
International Registrations in Force at the End of 2006
By the end of 2006, there were 471,325 [PDF] international trademark registrations in force in the international register. They contained some 5.32 million active designations and belonged to some 159,075 different trademark holders (of which many are small and medium-sized enterprises (SMEs)). In the course of 2006, 15,205 of these were renewed for an additional ten-year period of protection (i.e. some 48 per cent of the total number of international registrations with a term of protection that was coming to an end in 2006).
The Madrid system also 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 at WIPO. Modifications recorded in 2006 totaled 70,687.
Improved Services and Electronic Communication
In 2006, WIPO continued to promote the use of electronic communication for the processing of international trademark applications. By the end of 2006, six trademark offices were regularly transmitting international applications electronically to WIPO, accounting for some 33% of the applications received in that year. Similarly, WIPO’s international trademark operations dispatched Madrid notifications electronically to some 43 trademark offices by the end of 2006 (four more than in 2005).
In April 2006, WIPO introduced a new on-line international trademark renewal service enabling users to maintain their trademark rights quickly and efficiently. About 22 per cent of the renewals recorded since then were requested electronically.
A number of new improvements, including new search facilities, were also introduced to the ROMARIN database which contains information regarding all international marks that are currently in force in the international trademark register. As from January 1, 2007, the ROMARIN data base was made available, free-of-charge, on the WIPO web site.
The WIPO-administered Madrid System for the international registration of trademarks offers a trademark owner the possibility of having a mark protected in up to 79 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 system is governed by two international treaties, namely the Madrid Agreement and the Madrid Protocol. The grouping of both agreements is referred to as the Madrid system. The Madrid Protocol which became operational in 1996 introduced several features including the ability to submit applications in English and to extend the period for notification of a refusal. Spanish was introduced as a working language in 2004. These features made the system more flexible and attractive to a larger number of countries. The total number of countries party to the Protocol is 72 and the overall current membership of the Madrid system is 80 (79 countries plus the European Community (EC)).
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. In August 2006, WIPO recorded the 900,000th international trademark registration, a milestone which underlines the growing use of the Madrid system by companies around the world. The 1,000,000th registration is expected in the course of 2009. The international register is located at WIPO’s Geneva headquarters.
Trademarks are a key component of any successful business marketing strategy as they allow them to identify, promote and license their goods or services in the marketplace and to distinguish these from those of their competitors, thereby cementing 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.
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