Trademark registration according to the Madrid system

Trademark registration according to the Madrid system


What is the Madrid system?

The Madrid system is an international trademark registration system enabling to obtain legal protection for your designation (brand, logo) in foreign countries by submitting an international application through your national intellectual property office.

This system is called "Madrid" because it operates on the basis of such international treaties as the Agreement for the international registration of trademarks concluded in Madrid in 1891, and Madrid Protocol dated 1989 hereto. The year of foundation of the system is considered to be the year of conclusion of the agreement -1891. The system is managed by the International Bureau of WIPO (World Intellectual Property Organization), it maintains a register and publishes an official Bulletin of trademarks.

More than ninety states are participating members of this international system. It should be noted that the Agreement and the Protocol have a different number of participants, since they provide slightly different registration rules (regarding the procedure for processing and submitting the documents, registration deadlines, etc.)

Trademark registration abroad

The Madrid system is just one of the ways to register your trademark in foreign countries. In addition to submitting an international application, you have an option to submit separate national applications in each country you are interested in, including one that is not a part of the Madrid system.

Registration according to the national procedure has several advantages: sometimes it can be cheaper than a full scope international application, and it does not depend on the "basic" registration in the country of origin. The main disadvantage of the national procedure is the necessity to conduct business through local patent attorneys in each particular country (as a general rule, foreign applicants may not conduct business independently). Besides, if you are interested in registration of your brand in several countries at once, international registration is much more convenient – you submit one application to one office, pay a single fee in a single currency.

Applicants in the Russian Federation can submit such an international application through Rospatent – the Federal Service for Intellectual Property, if they have a basic Russian trademark certificate or a basic application filed (for the same trademark and the same goods and services).

International Application

An international application, as noted above, is filed to the patent office of the "home" state. The application should specify those countries where you want to get your brand protection. There are several official application forms specially developed (and regularly updated) by WIPO, they are posted on the official website of the organization. The application can be submitted in French, in English or in Spanish.

The application contains information about the applicant (name, legal form, address), information about the applicant's representative, the image of the trademark and information about it (trademark type – verbal, combined, visual, etc., color combination, verbal elements, etc.), a list of goods and services in accordance with ICGS (International Classification of Goods and Services). The application also contains a fee calculation.

First of all, the completeness of the documents and their correctness is assessed by Rospatent, then the request is forwarded to the International Bureau of WIPO, where the application is checked for compliance with the formal requirements, the fee is paid. If everything is in order, WIPO registers the trademark, assigns the international registration number, enters the trademark into the register and the bulletin, and sends the certificate to the applicant. Then the application is sent for a substantive examination to the countries specified in it.

Cost of the international registration

The amount of the international fee consists of the base amount (CHF 653) for a black-and-white trademark, CHF 903 for a color trademark) and individual fees for each country (from CHF 100). Rospatent also charges its own fee for checking and forwarding the international application to WIPO: 4900 rub. + 400 rub. for each ICGS class above 3.

Other expenses include the service fees of patent attorneys assisting you with the registration.

The term of the international registration

You will receive the WIPO certificate approximately in 3-4 months after submitting the international application.

Then the application shall be considered by the patent office of each of the countries specified in the application separately and within different time periods (in accordance with the internal regulations, usually from 6 to 18-24 months). Until the completion of expert examinations in each country, the scope of protection of your trademark is unknown, everything will depend on the results of the consideration.

Unfortunately, any of the foreign patent offices may refuse to register your trademark, if the expert examination finds the relevant grounds. However, this will not affect the registration in other countries.

To challenge a separate refusal of registration, you will need to contact the local patent attorneys. As a rule, the cost of their services ranges from several hundred to several thousand dollars.

Validity of the international protection

The validity of your exclusive rights under international registration is potentially unlimited, however, it shall be extended with certain regularity. An application shall be submitted and an international fee shall be paid every ten years (one for all countries in the international registration). This is another advantage compared to national registrations, when the applications for extension shall be submitted separately for each country.

Amendments to the international registration

If the trademark holder has amended its name or address, such amendments shall be entered into the international register by submitting the required form and paying the fee. Due to the electronic document management system and intuitive interface, it is quite easy now to do it by your own efforts.

If you decide to extend the area of your brand protection, you can submit a so-called "extension" of the international registration by adding additional countries.

Thus, the Madrid system is a very convenient way to get legal protection of your trademark in foreign countries. However, this procedure has many features, and in order to maximize your chances for success, we recommend you to contact the experts in this field having extensive experience in international registrations.

Give us your contact details and we will contact you and give detailed advice on the issues of registration of your trademark according to Madrid system.

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