Steady Growth in 2003 for International Trademark System

Geneva, March 1, 2004
Press Releases PR/2004/376

The World Intellectual Property Organization (WIPO) received 23,872 trademark applications in 2003 under a procedure that facilitates the process of seeking trademark protection in multiple countries, known as the Madrid System for the International Registration of Marks. This represents a 3% increase over 2002. The same year, 21,847 trademark registrations and 6,637 trademark renewals were recorded in the International Trademark Register. Germany topped the list of largest users for the eleventh year running with 4,999 international registrations (22.9%), followed by France (3,281 or 15%), Switzerland (2,204 or 10.1%) and countries of the Benelux—Belgium, Luxembourg, Netherlands (2,104 or 9.6%).

The International Trademark System, administered by WIPO, gives a trademark owner the possibility of having a mark protected in up to 74 countries by filing one application, in one language, with one set of fees, in one currency (Swiss francs). Thereafter, the international registration can be maintained and renewed through a single procedure. An international registration under the Madrid system produces the same effects as an application for registration of the mark made in each of the countries designated by the applicant. If protection is not refused by the trademark office of a designated country, the protection of the mark is the same as if it had been registered by that office. The system provides a cost-effective and efficient way for trademark holders to ensure protection for their marks in multiple countries through the filing of a single application.

The system is governed by two international treaties, namely the Madrid Agreement for the International Registration of Trademarks and the Madrid Protocol. The Madrid Protocol which became operational in 1996 introduced features, such as the ability to submit applications in English and extension of the period of notification of a refusal of trademark rights to 18 months, which made the system more flexible and attractive to a larger number of countries.

"In today's highly competitive marketplace, trademarks are an indispensable business tool which enables companies to effectively market and promote their products and services within both domestic and export markets" said Mr. Ernesto Rubio, WIPO Assistant Director General who oversees the International Trademark System. "WIPO's International Trademark Registration System is a cost-effective and efficient option for businesses seeking to protect their trademarks in multiple countries," he added.

Prospects for growth of the Madrid system are promising owing to recent developments. "The fact that the United States, the country with the largest trademark activity in the world, is now a member of the Madrid Protocol, the European Community's declared intention to join the system this year and the inclusion of Spanish as a working language means that many more businesses will reap the full benefits of this system," Mr. Rubio said.

The top twenty users of the Madrid System in 2003 were: Henkel (Germany), Novartis (Switzerland), Sanofi (France), Unilever (Netherlands), Janssen Pharmaceutica (Belgium), L'Oréal (France), Nestlé (Switzerland), Bayer (Germany), , Siemens (Germany), ITM (France), Boehringer (Germany), Biofarma (France), Philips Electronics (Netherlands), BASF (Germany), Merck (France), Syngenta (Switzerland), Fiat (Italy), Kodak (France) and Bongrain (France) and Migros (Switzerland).

The United States of America joined the Madrid Protocol on November 2, 2003. Three other countries, namely Cyprus, Iran and the Republic of Korea, also acceded to this treaty in 2003, and one more, Croatia, did so in January 2004, bringing the number of countries party to the Protocol to 62 and total current membership of the Madrid System to 74.

In 2003, the European Community announced its intention to accede to the Madrid Protocol and the Madrid Union Assembly adopted amendments to the Madrid Regulations allowing for a link between the Community Trade Mark System and the International Trademark System to operate once the European Community joins the Madrid System. This is expected later this year.

In 2003, the Madrid Union Assembly also adopted Spanish as a working language of the Madrid Protocol, making the system more attractive, especially for Latin American nations, which are largely absent from its membership today. Trademark owners will be allowed to file international applications under the Protocol in Spanish as from April 1, 2004.

By the end of 2003, some 412,000 international trademark registrations, belonging to over 134,000 different trademark holders, were in force in the International Register. Those international registrations represented the equivalent of some 4.9 million national registrations, taking into account that, as an average, each international registration extends its effects to some 12 designated countries.

Trademarks are a key component of any successful business marketing strategy. They are indispensable for businesses in the design of their marketing strategies allowing them to identify, promote and license their goods or services in the market place and to distinguish these goods or services 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 by unfair competitors to "free ride" on the goodwill of a company by using similar distinctive signs to market inferior or similar products or services. Conversely, loss, dilution or infringement of a high value trademark could prove devastating to a business.

The International Design System in 2003

The WIPO-administered International Design System governed by the Hague Agreement concerning the International Registration of Industrial Designs recorded 2,474 new deposits (each deposit can include up to 100 designs) and 3,463 renewals in 2003. The total number of industrial designs for which protection was sought under the Hague Agreement in 2003 was 13,512.

The International Design System (Hague System) offers owners of industrial designs a simplified, quick and cost-effective means of applying for protection in any of the member countries by filing a single international application, at a reduced cost.

Six countries (Belize, Estonia, Gabon, Georgia, Iceland and Kyrgyzstan) joined the Hague Agreement in 2003 and a seventh, Croatia, joined on February 12, 2004, bringing the total current membership up to 37 countries.

The top twenty users of the Hague System in 2003 were: Swatch (Switzerland), Interior's (France), Daimlerchrysler (Germany), Hermès (France), Unilever (Netherlands), Nokia (Finland), Hansgrohe (Germany), Salomon (France), Volkswagen (Germany), Philips Electronics (Netherlands), Villeroy and Boch (Germany), Rehau (Germany) Henkel (Germany), Stekelenburg (Netherlands), Braun (Germany), Sanford (Germany), Fonkel (Netherlands), Tefal (France), Robert Bosch (Germany) and Siemens (Germany).

By the end of 2003, the International Design Register showed some 35,208 deposits in force, which is the equivalent of some 400,000 national deposits.

The Geneva Act of the Hague Agreement, which entered into force on December 23, 2003, introduces a number of new features that make the system more attractive such as the possibility of deferring publication of a design for up to 30 months, and of filing samples of the design rather than photographs or other graphic reproductions. These features are of particular interest to the textile industry.

The Geneva Act, which will become operational on April 1, 2004, also provides for the possibility of establishing a link between the International System and regional systems such as the Registered Community Design System of the European Community, by providing that intergovernmental organizations may become party to that Act. So far, 13 countries have signed the Geneva Act.

An industrial design, which relates to the aesthetic or outward appearance of a good, adds value to a product by making it more attractive and appealing to customers. By protecting an industrial design through its registration at a national or regional intellectual property office, the owner obtains the right to prevent unauthorized copying or imitation by others. Given the importance of designs as a selling point for many products, the protection of industrial designs is a key element of the business strategy of many companies.

Since the Hague System began operations in 1928, some 2,000,000 designs have been deposited with the International Design Register.

For further information, contact the Media Relations & Public Affairs Section at WIPO: Tel: + 41 22 338 8161 or 338 95 47.