15 March 2012

Increase in International trade mark and design filings

WIPO has announced an increase of International filings for both trade marks and designs during 2011.

Trade mark filings have risen by 6.5% compared to 2010.

That looks good on the face of things, but we will analyse further. OHIM's figure, when the figures for International designations are removed, is an increase of 6.9% year-on-year but compare this to an increase of EU designations in Madrid applications of 11.9%.

I have found some US graph statistics for their filings which are far from specific with the figures so I've used very rough amounts. Nevertheless, removing the Madrid figures from the total sees US filings increase from 2010 to 2011 by approximately 9.5%. This compares to an increase in the Madrid figures of US designations of 11.5%.

Can we draw conclusions from these figures? Firstly, are we comparing a like-for-like Madrid system from 2010 to 2011? The answer is, broadly, yes we are. Israel was a notable joiner to Madrid on 1 September 2010 but this is it really. Kazakhstan (8 December 2010) and Tajikistan (30 June 2011) also came on board but they were already Madrid Agreement members. Denmark's extension of the Madrid Protocol to Greenland - with a population of little over 50,000 - on 11 January 2011 is, I feel, unlikely to have made much inroad into the statistics.

Given this, perhaps the figures show some increased confidence in the global economy but one in which trade mark owners are being more careful with their money. The EU and US have often been filed separately from an International application - there can be some differences and practical advantages by keeping the US and the EU away from an International registration - but costs constraints may appear to have pushed many to consider these acceptable.

When it comes to designs the situation is similar. We have to go on rough graph statistics from OHIM this time. Registered Community Design filings increased by 4% from 2010 to 2011 whereas designations of the EU in a Hague International application rose by 6.6% in the same period.

Again, is this a like-for-like comparison? Yes, largely it is with neither Azerbaijan (joined on 8 December 2010) nor Rwanda (31 August 2011) troubling the statisticians from 2010 to 2011.

A difference in the Hague system compared to Madrid is that you do not require a base application in your home country and can include your home country within an application. This could also demonstrate a stronger global economy as EU applicants go via Hague because they have interest in protecting their designs not just in the EU but outside it too.

The Hague system will welcome Tajikistan on 21 March 2012 as it already has done with Montenegro on 4 March 2012. The Madrid system (which may see its Madrid Agreement part become extinct) is also hoping to increase its members this year. Both will continue to offer great value ways of obtaining broad trade mark and industrial design protection.

Just be aware of the issues in Common Law countries that do not enshrine their obligations to Madrid or Hague in their national laws. As I've touched on before, I have some doubts regarding the enforceability of Madrid International Registrations in Bhutan and some African countries.