Selected Important News of the past weeks (Part 6)

Intellectual Properties

WIPO – Accession to the Madrid Protocol: Pakistan

On February 24, 2021, the Government of Pakistan deposited with WIPO its instrument of accession to the Madrid Protocol, containing:

•            the declaration extending the refusal period to 18 months and making it possible to notify refusals based on opposition after the expiry of that period (Article 5(2)(b) and (c) of the Madrid Protocol);

•            the declaration indicating that Pakistan wishes to receive an individual fee when it is designated in an international application, in a subsequent designation and in respect of the renewal of an international registration (Article 8(7)(a) of the Madrid Protocol). The amounts of that individual fee will be the subject of a separate information notice;

•            the notification indicating that Pakistan requires, when it is designated under the Madrid Protocol, a declaration of intention to use the mark (Rule 7(2) of the Regulations under the Madrid Protocol);

•            the notification indicating that the recording of licenses in the International Register shall have no effect in Pakistan (Rule 20bis(6)(b) of the Regulations under the Madrid Protocol); and

•            the notification indicating that the Office of Pakistan will not present to WIPO requests for the merger of international registrations resulting from division because the law of Pakistan does not provide for the merger of registrations of a mark (Rule 27ter(2)(b) of the Regulations under the Madrid Protocol).

The Madrid Protocol will enter into force, with respect to Pakistan, on May 24, 2021. 

 www.wipo.org

Welcoming the Islamic Republic of Iran to the Madrid e-Filing Community

The Islamic Republic of Iran becomes the first country in Asia and the Middle East to offer the Madrid e-Filing service to trademark users.

Starting March 15, 2021, the Iranian Intellectual Property Center (IPC) will be giving access to the Madrid e-Filing service to trademark applicants via its website. Brand owners will have the possibility to file international applications online. 

During a virtual opening ceremony, Mr. Mohammad Hassan Kiani, President of the IPC, and Mr. David Muls, Madrid Registry Senior Director, WIPO, gave a short speech on the significance of the Madrid e-Filing service in simplifying the international registration process for trademark holders in Iran as well as for Persian speakers around the world.

Conveniently nestled within the e-Filing service, users will have direct access to the Madrid Goods & Services Manager to check the classification of terms in their list of goods and services. What’s more, users will now be able to use the tool in Persian, alongside the other 24 languages in which it is already available.

Dr. Zabihollah KHODAEIYAN, Deputy Head of Judiciary, and Head of the State Organization for Registration of Deeds and Properties

«Today, it became possible for all Iranians, even in the most remote parts of the vast country of Iran and millions of Persian speakers across the world, to access the easy and cost-effective Madrid’s e-Filing service. This system is a great step towards fair and equitable access to the world system of intellectual property rights.» Dr. Zabihollah KHODAEIYAN, Deputy Head of Judiciary, and Head of the State Organization for Registration of Deeds and Properties

The adoption of Madrid e-Filing by the IPC now brings the number of users of this WIPO solution to twelve, alongside the Benelux, Australia, Georgia, Austria, Lithuania, Estonia, Canada, the Republic of Moldova, Bulgaria, Iceland and Norway.

Iranian brand owners will immediately benefit from the latest feature in Madrid e-Filing: the ability to receive and respond to irregularities issued by WIPO electronically. This feature is available to all participating Offices and helps to save a significant amount of time in the processing of international registrations.

Other key benefits

  • Reduced application irregularities associated with manual data input, as the national IP Office’s database prepopulates key information
  • Direct access to the Madrid Goods & Services Manager for listing goods and services and eligibility across 39 Contracting Parties of the Madrid Protocol
  • A streamlined certification process at the Office of origin
  • Synchronised filing with WIPO
  • Live application status displayed in the e-Filing dashboard
  • One service covering the whole registration process
How to use the Madrid e-Filing service
  1. Log on to the website of the Iranian Intellectual Property Center and select “Create an application for international registration”.
  2. Enter the basic mark/application reference and check the fields prepopulated with data from records from the IPC.
  3. Select the designated Contracting Parties and goods and services for protection.
  4. Update mark, holder, representative and language correspondence details.
  5. Pay the fees using a Current Account at WIPO,credit card or by bank transfer.
  6. Upon certification by the IPC and the confirmation of payment, the system sends the application directly to WIPO for registration.
  7. Respond to irregularity letters when necessary.
  8. Receive your international registration number.

Find out more:

www.wipo.org

Applications for Design Protection Filed through the Hague System showed some Resilience in 2020 in the Face of COVID-19

New data released by WIPO shows that the total number of international design applications filed through the Hague System dipped (only) by 1.8 % in 2020 – compared with an estimated drop in global GDP of 3.5 %. However, the number of designs included within applications went down by 15 % – the first decline since 2006.

The press conference

International patent applications filed via  WIPO’s Patent Cooperation Treaty, which is one of the widely used metrics for measuring innovative activity, grew by 4% in 2020 to reach 275900 applications – the highest number ever, despite an estimated drop in global GDP of 3.5 %.

China (68,720 applications, +16.1 % year-on-year growth) remained the largest user of WIPO’s PCT System, followed by the U.S. (59230 applications, +3 %), Japan (50520 applications, -4.1 %), the Republic of Korea (20060 applications, +5.2 %) and Germany (18643 applications, -3.7 %)

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Beyond the top 10, other countries that saw strong growth include Saudi Arabia (956 applications, +73.2 %), Malaysia (255 applications, +26.2 %), Chile (262 applications, +17.0 %), Singapore (1278 applications, +14.9 %) and Brazil (697 applications, +8.4 %). Longer term trends point to the globalisation of innovation, with Asia accounting for 53.7 % % of all PCT filing activity, versus 35.7 % 10 years ago.

The economic fallout from the pandemic hit demand for the protection of industrial designs via the Hague System for the International Registration of Industrial Designs. Demand fell by 15% in 2020 to 18580 designs – the first decline since 2006.

Worldwide demand for IP rights, which help innovators and enterprises take their ideas to the market, has historically and broadly tracked global economic performance. However, growth over the past decade in the use of WIPO’s global IP services, most notably the PCT, has outperformed global GDP growth.

Use of the international trademark system dipped, but only slightly. This was expected given that trademarks tend to represent the introduction of new goods and services – both of which slowed as a result of the global pandemic. International trademark applications via WIPO’s Madrid System for the International Registration of Marks decreased by 0.6 % to 63800 in 2020 – the first decline since the global financial crisis of 2008-2009.

Hague System Website – New Interfaces

With a view to enhancing your online experience with us, we have launched a set of new web interfaces providing more in depth information about the Hague System and the procedures for filing international design applications, renewing / managing international registrations and searching existing designs. At the same time, we have improved navigation to our online services and resources from the Hague home page.

We have adjusted the content of our home page to give both new and potential customers a quick and basic understanding of the System including the benefits of filing internationally. For our seasoned users, the updated ‘Resources‘ section of the page continues to provide quick access to all supporting and reference materials and more.

The new interfaces

Four new interfaces – catering for users of all backgrounds and levels – guide you through the workings of the Hague System and the main steps involved in international design protection – from searching existing designs and filing applications and managing registrations, through to renewing registrations. Each interface provides you with direct links to all related services, resources and products that

How the Hague System works (Photo: Getty/Yugoro)

How the Hague System works

Learn all about the process of obtaining international design protection.

Filing applications & renewing registrations

How do you obtain and renew design protection internationally? Why is it best to file and renew online using eHague?

Managing registration ownership, renunciation and limitation.

Managing registrations

How do you make modifications to your international design registrations including changes in ownership, renunciation and limitation.

Searching protected designs

Why and where to search protected designs before you file an international design application.

We will be adding more new and revised content throughout the year so please check back often!you need for each given function.

International patent system (Patent Cooperation Treaty – PCT)
Top PCT filers

For the fourth consecutive year, China-based telecoms giant Huawei Technologies, with 5464 published PCT applications, was the top filer in 2020. It was followed by Samsung Electronics of the Republic of Korea (3093), Mitsubishi Electric Corp. of Japan (2810), LG Electronics Inc. of the Republic of Korea (2759) and Qualcomm Inc. of the U.S. (2173) (Annex 2 ). Among the top 10 filers, LG Electronics reported the fastest growth (+67.6 %) in the number of published applications in 2020 and as a result it moved up from 10th position in 2019 to 4th position in 2020.

The University of California with 559 published applications continues to head the list of top applicants among educational institutions in 2020. Massachusetts Institute of Technology (269) ranked second, followed by Shenzhen University (252), Tsinghua University (231) and Zhejiang University (209) (Annex 3). The top 10-university list comprises five universities from China, four from the U.S., and one from Japan.

Top technologies

Among fields of technology, computer technology (9.2% of total) accounted for the largest share of published PCT applications, followed by digital communication (8.3%), medical technology (6.6%), electrical machinery (6.6%), and measurement (4.8%) (Annex 4).

Six of the top 10 technologies recorded double-digit growth in 2020, with audio-visual technology reporting the fastest rate of growth – +29.5 %, compared to 8.7 % the previous year –  followed by digital communication (+15.8 %), computer technology (+13.2 %), measurement (+10.9 %) semiconductors (+10.1 %) and pharmaceuticals (+10 %).

International trademark system (Madrid System)

U.S.-based applicants (10005) filed the largest number of international trademark applications using WIPO’s Madrid System in 2020, followed by those located in Germany (7334), China (7075), France (3716) and the U.K. (3679) (Annex 5).

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Among the top ten origins, China (+16.4 %) is the only country to record double-digit growth in 2020. The U.K. (+5.1 %) and Italy (+3.6 %) also reported notable growth.  Outside the top ten origins, the Republic of Korea (+13.4 %), Canada (+94.4 %), and Denmark (11.5 %) saw the strongest growth. In contrast, France (-16.3 %) and Turkey (-15.4 %) saw sharp declines.

Top Madrid filers

Novartis AG of Switzerland with 233 Madrid applications heads the list of top filers in 2020. WIPO received 104 more applications from Novartis in 2020, than in 2019, elevating it from 3rd position to the top spot. Novartis AG was followed by Huawei Technologies of China (197), Shiseido Company of Japan (130), ADP Gauselmann of Germany (123) and L’Oréal of France (115). L’Oréal – the top filer in2019 – moved down to 5th position as it filed 78 fewer applications in 2020 (Annex 6).

Top classes

The most-specified class in international applications received by WIPO was Class 9 (computer hardware and software and other electrical or electronic apparatus, etc.) that accounted for 10.6 % of the 2020 total. It was followed by Class 35 (services for business; 8.1 %) and Class 42 (technological services; 7.1 %). Among the top 10 classes, Class 10 (surgical, medical, dental and veterinary apparatus, etc.; +21.1 %) and Class 5 (pharmaceuticals and other preparations for medical purposes; +9.2 %) saw the fastest growth.

International design system (Hague System)

Despite a substantial decrease, Germany remained the largest user of the international designsystem, with 3,666 designs (Annex 7). The U.S. (2211 designs) moved up from  6th position to become the second largest user of the Hague System in 2020. Switzerland (1944 designs), the Republic of Korea (1669) and Italy (1231) are ranked third, fourth and fifth, respectively. Among the top ten origins, the U.S. (+62.7 %), Turkey (+34.7 %) and China (+22.7 %) are the only three countries to record growth in 2020.

Top Hague filers

For the fourth consecutive year, Samsung Electronics of the Republic of Korea with 859 designs in published applications headed the list of top filers, followed by Procter & Gamble of the U.S. (623), Fonkel Meubelmarketing of the Netherlands (569), Volkswagen of Germany (524) and Beijing Xiaomi Mobile Software of China (516). For the first time a company from China is among the top five applicants. Lampenwelt GMBH of Germany –ranked tenth with 276 designs – is a new user of the Hague System (Annex 8).

Top fields

Designs related to means of transport (10.1%) accounted for the largest share of total designs in 2020; followed by recording and communication equipment (8.8%); packages and containers (8.4 %); furnishing (7.4 %); and lighting apparatus (6.9 %). Among the top 10 classes, pharmaceutical and cosmetic products (+42.6 %) saw sizeable growth in 2020.

Domain name disputes

Trademark owners in 2020 filed a record 4,204 cases under the Uniform Domain Name Dispute Resolution Policy (UDRP) with WIPO’s Arbitration and Mediation Center, moving past the 50,000mark since the start of this WIPO service (Annex 9).  It was also a record year for WIPO Mediation and Arbitration cases involving patents, trademarks, digital copyright, and other types of disputes involving technology.

With a greater number of people spending more time online during the COVID-19 pandemic, trademark owners are taking up this WIPO service not only to reinforce their online presence, but also to offer authentic content and trusted sales outlets to Internet users across varied business areas (Annex 10). Representing 75% of WIPO’s generic Top-Level Domain (gTLD) caseload, .COM demonstrated its continuing primacy.

WIPO UDRP cases in 2020 involved parties from 127 countries, up from 122 in 2019. The U.S., with 1359 cases filed, France (786), the U.K. (411), Switzerland (256) and Germany (235) were the top five filing countries  (Annex 11).

WIPO also offers dispute resolution services for over 75 country code Top-Level Domains, such as .CN (China), .EU (European Union) and .MX (Mexico).

Outside the area of domain name disputes, the WIPO Center in 2020 received 77 mediation andarbitration cases in different areas of IP, up 24 % from the previous year’s caseload (Annex 12).  These WIPO procedures allow parties from around the world to resolve their cases without having to go to court.  Patent-related disputes remained the most common in WIPO’s caseload, followed by trademark, information and communications technology (ICT), and copyright disputes (Annex 13).

The World Intellectual Property Organization (WIPO) is the global forum for intellectual property policy, services, information and cooperation. A specialized agency of the United Nations, WIPO assists its 193 member states in developing a balanced international IP legal framework to meet society’s evolving needs. It provides business services for obtaining IP rights in multiple countries and resolving disputes. It delivers capacity-building programs to help developing countries benefit from using IP. And it provides free access to unique knowledge banks of IP information.

www.wipo.org