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WIPO Launches On-Line Tool For International Trademark System

by Ulrika Lomas, LawAndTax-News.com, Brussels

24 December 2010


The World Intellectual Property Organization (WIPO) has launched an on-line tool - the Madrid System Goods & Services Manager (G&S Manager) - that will help trademark applicants in compiling the list of goods and services that must be submitted when filing an international application under the Madrid system for the international registration of marks.

The Madrid system functions under the Madrid Agreement of 1891, and the Madrid Protocol of 1989. It is administered by the International Bureau of the WIPO located in Geneva, Switzerland.

The Madrid Protocol is a filing treaty, and not a substantive harmonization treaty. However, thanks to the international procedural mechanism and with almost 100 countries adhering to the protocol, the Madrid system does offer a trademark owner the possibility to have his trademark protected in several countries by simply filing one application directly with his own national or regional trademark office. An international mark so registered is equivalent to an application or a registration of the same mark effected directly in each of the countries designated by the applicant.

While an international registration may be issued, it remains the right of each country or contracting party designated for protection to determine whether or not protection for a mark may be granted. Nevertheless, once the trademark office in a designated country grants protection, the mark is protected in that country just as if that office had registered it.

In addition, if the trademark office of a designated country does not refuse protection within a specified period, the protection of the mark is the same as if it had been registered by that office. The Madrid system also simplifies greatly the subsequent management of the mark, since it is possible to record subsequent changes or to renew the registration through a single procedural step.

Within the Madrid system, the G&S Manager gives access to thousands of standard terms classified in accordance with the 9th edition of the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification). Applicants using the G&S Manager can select the terms that best describe the goods and services relating to the mark.

Users of the Madrid system must ensure that they provide the correct description and classification of the goods and services for which the mark will be used. By selecting terms from the G&S Manager, applicants can be confident that no irregularity notice will be issued with respect to the classification or indication of those goods and services.

The G&S Manager is available in the three working languages of the Madrid system, namely English, French and Spanish, and gives access to some 30,000 terms in English and their equivalents in French and Spanish.

A Russian interface of the G&S Manager is also available on the WIPO website. This Russian interface gives access to some 16,000 terms that have been translated into Russian by the Federal Institute of Industrial Property of the Federal Service for Intellectual Property, Patents and Trademarks of the Russian Federation. Using this interface, a Russian-speaking applicant can compose a list of goods and services in Russian and then have the list translated automatically into any of the Madrid system working languages (English, French or Spanish), before finalizing and submitting an international application to WIPO.

TAGS: business | trademarks | law | intellectual property | agreements | standards | regulation | trade

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