THE MOST POPULAR WAY OF INTELLECTUAL PROPERTIES RIGHT PROTECTION

REGISTRATION FOR PROTECTION OF IP RIGHTS IN MANY COUNTRIES

The PCT is an international application under the Patent Cooperation Treaty for an invention in all countries that are Contracting Parties to the PCT (153 countries as of October 2021).

When using the PCT system:

– The applicant files only one application within the priority year (ie. within 12 months from filing the national application);

– The application has effect in all PCT Contracting States;

– The application may be identical as to both language and form with the applicant’s own nationa application;

– The applicant gains time to explore the commercial potential of the invention.

The members of the PCT are listed in appendix IV.

REGISTRATION FOR TRADEMARK PROTECTION IN MANY COUNTRIES

International applications under the Madrid System

A mark may be the subject of an international application only if it has already been registered (or, where the international application is governed exclusively by the Protocol, if registration has been applied for) in the trademark office of the contracting party with which the applicant has the necessary connection-referred to as the office of origin.

The principal advantages of using the Madrid System are that the trademark owner can protect the trademark in a number of different countries/members of the Madrid System, by filing a single application; in one language (either English or French, although the office of origin may restrict the applicant’s choice to only one of these languages); subject to one set of fees t one currency Thereafter, the changes to the international registration and the renewal of the registration may be made in a single procedural step, which takes effect in all designated contracting parties.

Protection for the mark can be obtained in any country that is party to the same treaty (Agreement or Protocol) as the State whose office is the office of origin. The countries where protection is sought must be designated in the international polication and further countries may be designated subsequently.

Fees under the Madrid System:

– A basic fee;

– A standard designation fee is fixed by the country concerned for each designated country;

– A supplementary fee for each class of goods and services beyond the third.

The office of a designated country has the right to refuse protection of a mark in the territory of that country. Refusal may be made on any of the grounds on which an application for registration filed directly with that Office might be refused. Refusal is notified to the International Bureau and recorded in the International Register.

In principle, any refusal must be issued no later than 12 months from the date on which the office concerned was notified of the designation. However, where a country designated under the Protocol has made a declaration to that effect, the time limit is extended to 18 months. Such a country may also declare that a refusal based on an opposition may be issued after the expiry of the 18-month time limit, provided however that the office concerned has, within the 18-month period, notified the International Bureau of this possibility.

At the end of the applicable time limit, therefore, the holder of an international registration is in a position to know whether the mark has been accepted for protection in each of the designated countries, or whether protection has been refused in one country, or whether there is still a possibility of refusal on the basis of an opposition in a particular country. An international application is effective for 10 years. It may be renewed for unlimited numbers of further periods of 10 years on payment of the prescribed fees.

The members of the Madrid System are listed in appendix V.

REGISTRATION FOR INDUSTRIAL DESIGN PROTECTION IN MANY COUNTRIES

As a general rule, industrial design protection is limited to the territory of the country where protection is sought and granted. If protection is desired in several countries, separate national deposits must be made and different procedures must be complied with in each country.

The Hague Agreement Concerning the International Deposit of Industrial Designs, a multilateral treaty administered by WIPO, offers an alternative that simplifies these tasks enormously. It allows nationals and residents of, or companies established in, a State that is party to the Agreement, to obtain industrial design protection in a number of countries through the following procedure:

– A single ‘international’ deposit; 

– In one language (English or French);

– Payment of a single set of fees;

– In one currency;

Filed with one office (either directly with the International Bureau of WIPO or, under certain circumstances, through the national office of a contracting State).

An industrial design that is the subject of an international deposit enjoys, in each State concerned that has not refused protection, the same protection as is generally conferred on industrial designs by the law of that State, unless protection is expressly refused by a national office under prescribed circumstances. The international deposit is thus equivalent to a national right in terms of its scope of protection and enforcement. At the same time, the international deposit facilitates the maintenance of protection: there is a single deposit to renew and one simple procedure for recording any changes, e.g. in ownership or addresses.

The members of the Hague System are listed in appendix VI.