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UNVEILING THE BENEFITS AND PITFALLS OF
THE MADRID & HAGUE SYSTEMS
Introduction
Rob S. Katz
Banner & Witcoff, USA
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STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY
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Robert S. Katz
Banner & Witcoff (US)
Lena Shen
Dakun IP (CN)
Iván L. Sempere
Padima (ES)
Overview
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Robert Katz
Banner Witcoff, U.S.
5
General Process of these WIPO Tools –
Trademarks/Design
WIPO
Region 1
Region 3
Region 1
Region 2
Region 2
Region 3
Applicant
Applicant
6
•
Money savings
o
Bypasses local counsel
•
Administrative simplicity
o
Not always, but usually
o
Can limit flexibility
What’s the Upside
7
•
Law and practices are not the same
o
Basics
o
Cutting edge opportunities
•
Pitfalls and traps exist
•
Don’t always learn about issues early
•
Bypass local counsel can come at a price
•
Users should be as smart as local counsel
Considerations
Trademarks via Madrid
Lena Shen
Dakun IP, P.R. China
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115 members with 131 countries
Coverage of Madrid System
Madrid registration process at a glance
Possible Examination Outcomes
no news by 12/18m:
protection is granted
statement of grant of protection:
protection is
granted
Notification of provisional refusal:
local agent to
involve if needed to further proceed
Madrid System V. National TM
Madrid system
National TM
coverage
131
200+
cost
generally speaking, lower
1. basic fee
2. designation fee
3. agent fee in the original country
1. official fee of each office
2. agent fee in the original country
3. agent fee of the local attorney
4. possible fees for notarization, legalization and postage
examination
time
refusal period: 12 or 18 months
vary
certificate
normally no registration certificate from
designated countries
yes
basic TM
required?
yes
No
legal effect
The same (theoretically speaking)
valid term
10 years from international registration date
vary
document
requirements
simple
complex in some countries (even required notarized and
legalized documents)
priority
the same (6 months)
subsequent
designation
possible
not available
other
procedures
simple for renewal/change/transfer (one act to
cover all designated jurisdictions)
complex (to proceed in each jurisdiction)
low c
os
t
simpl
e
B
ig
ge
st a
dv
an
ta
ge
w
ith
M
ad
rid
Cost estimate example: a CN applicant filing TM for 4 jurisdictions
Madrid (CHF)
National TMs (designation official
fees & normal attorney fees)(CHF)
Basic fee 653
--
Japan
266
850
USA
460
1200
EU
789
1200
Vietnam
100
480
Total
2002
3730
registration; (post registration) change, transfer, renewal
Madrid system: one filing, one fee, one deadline
National registration: multiple filings, separate fees and payments,
different deadlines
basic mark requirement and central attack
Article 2 of the Madrid Protocol requires the owner of a mark to file a basic application or
obtain a basic registration (basic mark) in the home country before filing an international
application, and Article 6 mandates that the resulting international registration and all
extensions of protection are dependent on that basic mark for five years from the date of
the international registration.
Biggest issue and risk of using Madrid system
Some proposals to modernize the system
1. to maintain the basic mark requirement BUT reduce the
dependency period from five to three years;
2. to eliminate the basic mark and dependency requirements.
Madrid-
Pro and Cons for CN filing and rights
Cost saving
Slow in examination
Easier and simpler in
management
No registration certificates &
slow/failure in data update
Pros and Cons for CN filing through Madrid
More tolerant in
goods/service description
examination
Document delivery
problem
No review & simple issue
turned into complex procedure
IR: 12/18 months
National: 4+3 months (maximum 9+3 months)
CNIPA directly mails notifications to
international registrant, sometimes
lost or delay in receiving which may
cause the loss of the right.
Solution:
to
involve local
agency in some
procedure so it
will be copied
for future notice
Pls see examples on
next slide
CNIPA very slow and
even
reluctant
in
correcting or updating
its online data.
Solution for no
certificate:
to
apply for a certified
copy of registration
with CNIPA
Goods example in IR
Goods example in national TM
class 9
(0910, 0913,
0914, 0916…)
electrical, pneumatic, hydraulic and
thermal apparatus for controlling, tuning,
switching and measuring as well as
accessories therefor
temperature indicator; barometer; electric regulating device; transformer (electrical); sensors; thermostat; thermal regulation device;
humidity meter; temperature sensor; pressure sensor; liquid level sensor; oil level sensor
class 11
(1101,
1105~1108…)
apparatus for lighting, heating, steam
generating, cooking, refrigerating, drying,
ventilating, water supply and sanitary
purposes
lighting fixtures and devices; cooling equipment and devices; water cooling device; air conditioning equipment; device for wetting air
device; air dryer; air cooling device; ventilation equipment and devices (air conditioning); air disinfection device; drying equipment and
devices; air purifier; thermostatic valve (heating device component); electric heating device; water supply equipment; hot air flow
regulator; hot air device; heat pump; gas valve for steam heating system; radiators for central heating systems;
More tolerant in goods/service description examination,
advantage or disadvantage?
Possible disadvantage:
more risk of being refused, more uncertain in enforcement
No review & simple issue turned into complex procedure (review of refusal)
If it is a national TM,
some can have been solved before filing or by replying to a Notification of Amendment, cheaper & quicker.
issues
Examples
Accepted after amendment
Unacceptable
goods/services
35: Retail/wholesale services
Distribution for others; providing online markets of goods and services for the sellers and
buyers
9: smart watches
smart watches (data processing)
9: digital storage media, particularly digital collectibles,
digital tokens, non-fungible tokens (NFTs) and digital art
digital storage media, particularly digital collectibles
Lack of
documents
Where the applicant for extension of an IR in China requires to protect a 3-D mark, color combination mark and sound mark or requires to protect a collective
or certification mark, it shall, within 3 months after the international registration, submit the relevant materials to the Trademark Office of CNIPA through a
legally established Chinese trademark agency. If it fails to submit the relevant materials within the aforesaid time limit, the Trademark Office shall reject such
an IR.
Obvious refusal
ground
Applicant:
a Sweden company
Refusal ground:
The graph, comprised in the sign, which is similar to the National Flag of the United States, shall not be used as a trademark without the
permission of the United States government. “LEXINGTON” in the sign is likely to mislead the public as to the origin of the designated goods
CHEAPER & EASIER
INTERESTING FOR CONVERSION
CASES
FILING IR IN THE EU
PROS
CONS
SLOWER PROCESS
DIFFERENT PROCEDURE STEPS
NO CERTIFICATE OF REGISTRATION
POTENTIAL EUIPO NOTIFICATIONS
TO APPLICANTS IN OPPOSITIONS
PROCEEDINGS
Objections arise almost equally, being IRs slightly in the lead for the
following reasons:
Description of goods and services
Not having selected a second language of proceeding
FILING IR IN THE EU: OBJECTIONS
Can an EUTM or IR designating the EU be refused or granted only
for some of the EU member states?
Can an EUTM or IR designating the EU be assigned partially to
some of the EU member states?
Does Seniority apply to an IR designating the EU?
FILING IR IN THE EU: USUAL CONCERNS
FILING IR IN THE EU: STATISTICS
LOW DISTINCTIVE TRADEMARKS
FORMAL OBJECTIONS
DIFFERENT CLASIFICATION CRITERIA
EXTENDING EUTM THROUGH THE MADRID SYSTEM
23
•
Lower price at least early in the process
o
May be exempt from planned USPTO fee increases in 2025.
•
Administrative efficiency - One application that can cover several
countries (including CTMs) that can be filed in English and in one single
currency (Swiss Francs).
•
Applicants can use TEAS for filing, so it is a good last minute priority
filing tool.
•
In some countries, Madrid applications are unofficially reviewed more
leniently than national applications.
•
The decision to grant or extension request must be made within 18
months of the International Registration date.
Observations from the United States
Benefits
24
•
Although cheaper at the outset, can be expensive and messy later
o
Office Actions from countries require fees and foreign associate assistance,
which increases overall costs.
•
For a 5-year period, the protection afforded by an International Registration
is dependent upon the issuance of a registration in the trademark owner’s
home country. Thus, if the home registration is limited or cancelled for any
reason during this 5-year period,
all
of the protection afforded by the
International Registration will be limited or invalidated.
o
In these cases, keep in mind that you can convert a Madrid registration to a
national registration; however, the process is costly in time and money.
o
Three-dimensional marks and non-traditional marks (e.g. sound marks) may
have a high risk of rejection in the country of origin.
Observations from the United States
Drawbacks Part 1
25
•
Allows for a central attack by third parties
o
Creates a strategy to kill the rights everywhere by killing the base application.
o
Central attacks rose from 200 total or partial cancellations in 1996 to 7,000
cancellations in 2017.
o
Even just the threat of central attack provides leverage
•
If an applicant files a Madrid application and later assigns the mark to an
entity (related or unrelated to the applicant) located in a non-member
country, the Madrid application or registration will be invalidated.
Observations from the United States
Drawbacks Part 2
26
Additional Issues We See in US Inbound Cases
•
Why is this number so high?
•
Many are done without a proper US clearance
search having been performed. A search can
help identify potential conflicts with other
trademarks pre-filing. This allows adjustments
to be made to an application to try to avoid a
refusal due to a conflict.
•
Many are done without a proper
understanding of USPTO rules. In most cases,
the language used to describe a client's goods
and/or services in the trademark application
is found to be improper by the USPTO. If a US
attorney was engaged to clean up the
language pre-filing, such a refusal can be
avoided.
27
•
Cannot change classifications.
•
Applications filed in the US through the Madrid Protocol cannot be
amended to the Supplemental Register in U.S.
•
Positive: Responses to Office Actions inbound to the US get 6 months
free
(i.e., an additional 3 months without EOT fees)
Additional Issues We See in US Inbound Cases
28
•
U.S. based applications are restricted to the goods/services listing
required by the USPTO, which is generally narrower than other Madrid
member countries.
o
Makes the designation of goods/services in a more generic category
impossible when seeking protection outside the US
o
Certification/Collective Membership marks (e.g., Classes A, B, and 200)
must be reclassified (because the USPTO is unique) resulting in a different
and potentially less desirable right.
•
Slow and often inaccurate communication between the USPTO and IB
can often lead to mistakes in the Madrid registration and difficulties
updating the information (such as the owner address).
Additional Issues We See in Outbound Madrid Cases
Designs via the Hague
Ivan Sempere Massa
Padima, Spain
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Up to 100 designs in 97 countries
Multiple jurisdictions - Centralized operation
Last members
Adopted in 1925
OVERVIEW OF THE HAGUE SYSTEM
Online filling eHague
Formal examination
Publication
Substantive examination if contemplated in local law
5 years renewable
OVERVIEW OF THE HAGUE SYSTEM: THE REGISTRATION PROCESS
Source: ‘Hague yearly review 2024’ avalaible at
OVERVIEW OF THE HAGUE SYSTEM: THE REGISTRATION PROCESS
One application in one language
Up to 100 designs
Fees in a single currency
Centralised through WIPO
Cheaper Renewals?
Registration may be granted for some designated territories
OVERVIEW OF THE HAGUE SYSTEM: PROS
HOWEVER
Not everything is rosy
Graphic representations
The scope of protection
Formal examination may take long
Publication options management
Different criteria in key jurisdictions
Hague data base is not always clear
OVERVIEW OF THE HAGUE SYSTEM: CONS
Number of designs in
the same application
Total number of
views (7/designs)
TOTAL FILING FEES HAGUE
DESIGNATING EM (€)
TOTAL FILING FEES
EUIPO (€) [2025 fees]
Hague increase
vs EUIPO
1
7
539,93
350
+54%
10
70
2466,75
1475
+67%
20
140
4607,67
2725
+69%
50
350
11030,43
6600
+67%
EU PERSPECTIVE
International Designs don’t appear in EUIPO database
EUIPO platform
Smart &user friendly
Direct support through EUIPO chat
EU PERSPECTIVE
HAGUE SYSTEM
COMMUNITYDESIGN
Maximum number of designs per
application
100
Unity class requirement
Unlimited [2024]
50 [New regulation 2025, but unity
class requirement abolished]
Formal examination duration
1 month
3-5 days
Publication
12 months from filing [inmediate/selected
publication date upon request]
3-5 days
Deferment
30 months from filing/ priority date in
general, governed by domestic law of the
Contracting party,
It must be requested for
all the designs contained in the
application. Not possible to lift deferment
only for some of the designs, nor to publish
them in different dates.
30 months from filing –
It is possible
to apply for deferment only for some
of the designs contained in the
application, as well as choosing the
publication date for each design
after filing the application.
EU PERSPECTIVE
o
8.566 International Design Applications, 4.981 of them
designating EU
o
95.926 Community designs filed
Direct filing through EUIPO is the preferred way for protecting in the EU [x20]
EU PERSPECTIVE
Hague-
Pro and Cons for CN filing and rights
Design-
Pro and Cons for CN filing and rights
Cost saving?
Simple
management
Different requirement
and possible refusal
Hague System official fee
China national filing official fee
Filing
1 design
(CHF)
1 additional
design (CHF)
9 additional
designs (CHF)
Basic fee
397
50
50*9
Publication of each
reproduction
17
17
17*9
(China) Individual
designation fee
497
0
0
Filing
1 design
(CHF)
1 additional
design (CHF)
9 additional
designs (CHF)
Application
60
0
0
Publication fee
0
0
0
Renewal
(CHF)
Basic fee for renewal
200
Each additional design
17
(China) First renewal
922
(China) Second renewal
1820
Renewal
(CHF)
1
st
-3
rd
years, per annum
72
4-5
th
years, per annum
108
6-8
th
years, per annum
144
9-10
th
years, per annum
240
11-15
th
years, per annum
360
Hague system cheaper?
1 design filing & renewal by 5
th
year: 60+72*2+108*2=420 (CHF)
6-10
th
renewal: 144*3+240*2=912 (CHF)
11-15
th
renewal: 360*5=1800 (CHF)
Chinese firm’s normal service fee for a Chinese national design
filing: CHF 450-550 (first design); renewal: CHF 50-100/annuity payment
Hague
China
Maximum amount of
designs in one application
100
10 (shall abandon or divide for
more than 10 designs)
Requirements on
reproduction
Various in
different
countries
submitting sectional views or
perspective views to represent
relief or contours of surfaces of
the product concretely is a more
preferable way than providing
shading, hatching, etc. in the
representation.
Renewal (annuity payment)
every 5 years national design, to pay annuity
every year
Different provisions on
“unity of design” for
multiple design application
same class of
Locarno
Classification
★
similar designs of a same
product;
★
designs of products in set
Hague System V. China National Design
X
√
Examples
Unity of design
(1) Different designs for different products
X
(2) Different designs for the same product
X
(3) A design for a set of articles presented in multiple views of a single
design
X
(4) Difference in proportion
◎
(5) Difference in minor details
◎
(6) Identical designs with different claimed part
○
(7) Difference in color
○
(8) Difference in non-essential surface ornamentation
○
(9) Difference in quantity of repeating elements
○
(10) Designs identical in shape but in different graphic
representations
○
(11) A design for a set of articles presented in multiple designs
○
Note:
◎
: May be accepted
○
: Depending on the case X: Refusal expected
Acceptability of multiple designs in a single application in China
47
•
A cost effective way to get protection of designs in many countries most
applications would otherwise not
•
Can have administrative benefits
•
Can include many designs in a collective
•
WIPO and its people have been great
What is Good about using the Hague
Not so good - Baseline
48
•
Hague is a one drawing set must
fit all… but best practices aren’t
•
Different requirements in many
jurisdictions
•
Result in more objections
•
More expensive to fix than to do it
right the first go around
•
Hague is a one drawing set must fit
all… but best practices aren’t
•
Best practices can vary by jurisdiction
•
Important to maximize rights
•
Important to minimize challenges for
enforcement
•
Result in design patents/registrations
not in accordance with best local
practices
•
Impact on enforcement is a wild card
and country and issue specific
Not so good - Best Practices
49
•
Shading vs. No Shading vs.
Optional
•
Color and Photos
•
Grace Periods (Declarations)
•
Number of Views
o
Maximum
o
Minimum
•
Portion Practice
•
Multiple Embodiments/Unity
•
Priority details
•
Statement of novelty
•
Description of design
•
Title strategies
•
Functionality and hidden-in-use
•
Duty of disclosure
•
Timing (expedite/defer)
•
Tests for infringement & validity
•
Tricks of the trade
Examples of Differing Laws and Practices
Just a few examples…….
50
•
Law and Practices are not the same
o
Basics and cutting edge opportunities
•
Pitfalls and traps exist
o
Multiple embodiments/restriction
•
Estoppel may apply
o
Higher bar for definiteness
•
Shading or additional views may be helpful
•
Sometimes fatally flawed – sometimes required to disclaim desired features
o
Duty of disclosure
•
Can lead to unenforceability/more expensive to enforce
o
Subject matter and title
•
Especially screen designs
o
Fixing post-filing is more limited because of new matter
•
Not taking advantage of next level strategies
o
Appendix
o
Exploiting specification abilities (contrasts/color/broken line
types/boundaries/indeterminate length)
•
Bypassing local counsel can come at a price
U.S. Issues We See in Inbound Cases
51
•
Users should be as smart as local counsel in every jurisdiction you
designate – some are not
•
Some practitioners do not get priority practices
•
Title inconsistencies arising more than they should
•
Occasional rogue countries (ex. 50 designs rejected for lacing novelty
without any references or explanation)
•
Some countries frequently want a more detailed description of how the
article works/is used
•
Some countries 30 days to respond – timing can be challenging
•
Some administrative benefits not always as easy to achieve
U.S. Issues We See in Outbound Cases
52
•
Think of Hague as a tool (not a single solution)
•
Do not use it if you don’t know the local laws
•
Where is protection desired? and work backwards
•
Other factors
o
Has it been disclosed and other timing factors?
o
What are the essences of the design (portions)
o
Subject matter (GUI)
•
Discuss procedures
Summary
STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY
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Final Takeaways
For both Madrid and Hague
1. These WIPO tools never obtain better rights. Always consider using a
local attorney. Feedback and second eye review can save money and
sometimes save the day.
2. If you want to use these tools, you should have a mastery of the
laws/practices in all planned designated countries.
3. If you don’t, using these WIPO tools come with significant drawbacks
4. Advise applicants of the pros and cons
5. Cost savings can be real, but fixing objections might be more costly
6. When the rights are tricky or important and when in doubt, file
directly via local attorney
54
Questions?
FICPI // Events 2025
55
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12-18 October 2025
Naples, Italy
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