Madrid Protocol trade mark registration process

Madrid Protocol trade mark registration process

Application Procedure

(a) Filing with the Office of Origin

When an international (Madrid Protocol) application is filed with the office of origin, the office will certify (i) the date on which it was received by them, and (ii) certain facts regarding the relationship between the international application and the basic application(s)/registration(s). The office of origin will then forward the international application to the International Bureau of the World Intellectual Property Organisation (WIPO).

(b) Languages

An applicant may file an international (Madrid Protocol) application in English, French or Spanish (subject to the requirements of the office of origin). They can also decide whether communications originating from WIPO will be in English, French or Spanish. Thus, for example, a UK company with a UK registration could apply to have their trade mark protected internationally in English, and could receive correspondence originating from WIPO in English.

(c) Filing costs

The filing costs for an international (Madrid Protocol) application are paid either directly to WIPO or, in some circumstances, through the office of origin. The precise amount of the filing fee will depend upon which countries are designated and, in some cases, the number of classes into which the goods/services covered by the application are classified. As long as at least two or three countries are designated, the international filing fee should be less than the filing costs of separate national applications in the relevant countries. As the number of designated countries increases, the Madrid system becomes more and more cost-effective.

(d) Registration by WIPO

When WIPO receives an international application from an office of origin, it will determine whether the formalities are correct, but it will not carry out substantive examination. The limited formalities examination involves checking that (i) the filing requirements are met, (ii) suitable terminology has been used to describe the applicant’s goods/services, and (iii) the goods/services are correctly classified.

If WIPO identifies any irregularities in an application, it will notify the office of origin and the applicant. With certain types of irregularities, WIPO will only consider responses that come directly from the office of origin. However, an applicant will usually have an opportunity to make submissions to the office of origin on such issues before the office makes any reply to WIPO.

Once WIPO considers that all the formalities requirements have been met, it will register the mark. Details of the mark will be entered in the International Register, a registration certificate will be issued, and the registration will be published in the International Gazette.

The date accorded to the international registration will be the date on which the international application was filed with the office of origin, provided that the application was received by WIPO within two months of that date (and no essential elements were missing).

(e) Consideration by the trade mark offices of the designated contracting parties

It is important to realise that the grant of an international registration by WIPO does not automatically guarantee that a mark is protected in the contracting parties designated.

Details of an international registration will be sent by WIPO to the trade mark offices of the designated contracting parties, who have the right to refuse protection on the same basis as they would for a national application. For example, an international registration designating the UK will be subject to examination and possible opposition in the same way as any UK national application.

If the trade mark office of a contracting party objects to the protection of an international mark in their territory, they should issue notice of a “provisional refusal” to WIPO, within a prescribed time limit. Depending upon the contracting party concerned, the time limit may be twelve months, eighteen months, or possibly longer if the international registration is opposed.

WIPO will pass on details of any provisional refusal to the holder of the international registration. The holder must then contest the refusal before the trade mark office of the relevant contracting party in the same way that they would if they had filed a local application directly with the trade mark office. Where it is not possible for the holder or his international representative to act directly before the trade mark office, a local representative must be appointed.

Once the appropriate local procedures have been completed, the trade mark office will notify WIPO whether the mark is protected or refused for some or all of the goods/services. The International Register will then be updated, the holder of the international registration will be notified, and a statement will be published in the International Gazette.

If the trade mark office of a contracting party has no objection to the international mark being protected in their territory, they may send a statement of grant to WIPO. However, they have no obligation to do so. Provided that no provisional refusal is issued within the relevant time limit, the international mark will automatically be protected in the contracting party for all the goods/services covered by the international registration.

Where a statement of grant has been issued or the prescribed time limit has passed without a provisional refusal being issued, the International Register will again be updated, a statement will be published in the International Gazette, and the holder of the international registration should be notified.

By the end of this process, the holder of an international registration will know whether his mark is protected in each designated contracting party and, if so, for which goods/services.

How long does an international (Madrid Protocol) registration last?

The initial registration period for an international (Madrid Protocol) registration is ten years from the date of the international registration (which is the filing date). An international (Madrid Protocol) registration may then be renewed every ten years through WIPO.

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