Patent Application
An increasing number of voices are calling for some measures to address the problem with the Madrid System for the International Registration of Marks, since it has not been widely utilized after its introduction in Korea 10 years ago. The Madrid System refers to the system of the international registration of marks that is governed by two treaties, the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to the Madrid Agreement.
The system allows a business operator to manage its trademark in multiple countries, provided that those are member countries to the system. After registering a trademark or filing an application for registration with the trademark office of the original country, the business operator has only to file one application that has to be presented to the International Bureau of the World Intellectual Property Organization (WIPO) through the office of origin.
The Madrid System is widely used in Europe, for it streamlines business procedures and drastically reduces costs and time. Because of many advantages, Korea also became a member country of the Madrid Union in 2003, but there are not many cases of Korean companies using the system.
It is estimated that 300-500 cases are registered per year by local companies through the system, which is a minuscule number compared to the figure for trademarks filed by overseas firms.
The system’s biggest advantage lies in reduced costs. The owner of the trademark has only to file one application in one language and pay one fee, instead of filing separately in the trademark offices of various member countries in different languages and paying a separate fee in each office.
The problem is that any change in a trademark of the original country also affects that registered in each country. The phenomenon is called a “concentrating attack,” and local companies regard the unified structure as a burden. Therefore, they prefer filing their trademark separately in specific countries without going through the system.
According to 2012 data, the Korea Intellectual Property Office ranked 16th in terms of a trademark office of the original country, whereas ranked 8th as a designated office. In other words, Korea had the 8th largest number of cases where overseas companies filed their trademarks, while the figure for local firms’ cases for application abroad ranked just 16th in the world.