Trademark protection on an international scale can be achieved by submitting applications to individual country-specific trademark offices or utilizing the WIPO’s Madrid System. Opting for the Madrid System is advantageous as it provides a streamlined and cohesive approach to international trademark filing and management. This article offers a comprehensive overview of the Madrid System, including eligibility criteria, filing procedures, and the benefits it provides to trademark holders.
Trademark Protection under the Madrid System
The Madrid System, consisting of the Madrid Agreement (1891) and the Madrid Protocol (1989), oversees the international registration of trademarks. This system provides a convenient and cost-effective approach to registering and managing trademarks globally. By submitting a single international trademark application and paying a unified fee, applicants can seek protection in 130 countries. Additionally, the system offers flexibility for modifying, renewing, and expanding the scope of their trademark portfolio.
The cost of registering an international trademark includes a basic fee (CHF 653; or CHF 903 for a mark in color) and additional fees depending on where the applicant wants to protect the mark and how many classes of goods and services they wish to cover. Applicants must pay additional fees to expand their geographical coverage or modify or renew their international registration.
Eligibility for Filing Trademarks
To be eligible for trademark filing using the Madrid System, the applicant must be:
- An individual or national of a country that belongs to the Madrid Agreement or the protocol
- A natural person or legal entity domiciled or having a real and effective industrial or commercial establishment in a country belonging to the Madrid Agreement or protocol.
Trademark Application Filing via the Madrid System
Stage 1: Application Filing through the Office of Origin
- Before filing an international application, applicants must register or file an application (basic mark) in their Office of Origin.
- An international application must be submitted through the same IP Office. The office vets the application to ensure that it corresponds to the particulars of the basic mark and then forwards it to WIPO.
Stage 2: Formal examination by WIPO
- WIPO conducts a formalities examination of the international application
- Once approved, the mark is recorded in the International Register and published in the WIPO Gazette of International Marks.
- WIPO sends a Certificate of International Registration (an acknowledgment of compliance with WIPO’s formal requirements) and notifies the IP Offices of the designated Contracting Parties (aka designated members).
Stage 3: Substantive examination by Office of Origin
Each designated member’s Office conducts a thorough evaluation and must decide to either grant or deny trademark protection within a specified timeframe, typically 12 months but sometimes up to 18 months from the notification of designation. The following are the potential results of the substantive examination conducted by the Offices of Origin:
- If applicants do not receive any updates within the specified 12 or 18-month timeframe, it indicates that trademark protection has been granted.
- If an Office finds no grounds for refusal, it issues a statement of grant of protection of the mark.
- If an Office finds grounds for refusing protection of the mark (entirely or partially), it sends a provisional refusal notification to WIPO. The notification contains the grounds for rejection, any subsequent actions needed (including the deadline for a response), possibilities for review or appeal, and whether the applicant needs to engage a local representative for support.
Note: The decision of one IP Office to reject the protection of a mark will not impact the determinations made by other offices. An applicant can contest a refusal decision before the concerned IP Office.
What’s in it for Applicants Seeking Protection in Multiple Markets
Applicants seeking trademark protection in multiple markets benefit from the Madrid System as it:
- Streamlines and centralizes trademark filing and management procedure
- Allows applicants to file one application in one language and pay one currency for protection in multiple markets
- Saves time and costs, as one international registration equals a bundle of national registrations
- Allows for trademark amendments and expansion of territorial coverage
In its entirety, the Madrid System is an applicant-friendly and cost-effective platform that helps trademark owners protect their brands from possible threats. The wide acceptance of this system by member states and market players has proven highly effective. Currently, international trademark registration can only apply to countries part of the system. A memorandum of understanding would expand the trademark’s protection scope and give brand owners stability and security.
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