Trade Marks
INTERNATIONAL TRADE MARK APPLICATIONS UNDER THE MADRID PROTOCOL
The Madrid registration system is essentially an administrative procedure. Although one files a single application at the World Intellectual Property Organization (WIPO) in Geneva, the resulting registration gives a bundle of national rights in the countries which were designated on application and where registration has been granted. Unlike a Community Trade Mark, one's rights have to be enforced separately in each territory.
As of 12 September 2007, the participating countries/regions are as follows:
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Antigua & Barbuda Australia Austria Bahrain Belarus Belgium Bhutan Bulgaria China Cuba Cyprus Czech Republic Democratic Republic of Korea Denmark Estonia European Union Finland France Georgia Germany Greece Hungary Iceland Iran |
Ireland Italy Japan Kenya Kyrgyz Republic Latvia Lesotho Liechtenstein Lithuania Luxembourg Moldova Monaco Mongolia Morocco Mozambique Namibia Netherlands Netherlands Antilles North Korea Norway Poland Portugal Republic of Albania Republic of Armenia |
Republic of Korea Romania Russia San Marino Sierra Leone Singapore Slovakia Slovenia Spain Swaziland Sweden Switzerland Syrian Arab Republic Turkey Turkmenistan Ukraine United Kingdom United States of America Viet Nam Yugoslavia Yugoslav Republic of Macedonia Zambia |
Use of the international registration system is restricted to the following:
i. Nationals (individuals or companies) of participating countries.
ii. Nationals (individuals) of non-participating countries who are domiciled in one of the participating countries.
iii. Companies who have a real and effective business in one of the participating countries.
An international application must be based on a national application or registration (the so-called home application/registration), so for UK applicants, if you do not have a UK application or registration, one will have to be filed before we can proceed with the International application. If the home application fails, so does the International application, but the International application can then be converted to independent national applications which retain the original filing date.
The application is filed at the World Intellectual Property Organisation (WIPO) and once it has been examined for formalities, it is published in the WIPO Gazette. If one wants to oppose an application one can either attack the national application/registration on which the international application is based or one can oppose in those designated countries in which one has an earlier right.
Once published, the application is subject to examination by the national trade mark offices in the countries designated and are handled then as national applications. If a national trade mark office raises objections which cannot be overcome, the application will be rejected in that country.
The resulting registration may thus extend to only some of the original designated countries and the cover for the goods and/or services achieved in each country will vary as a result of national examination difficulties.
An advantage to this system is that one can designate further participating countries to which one wants an international registration to extend at any time, so protection can be extended as more countries sign up to the Protocol.
Once having received details relevant to the home application/registrations, all we will require is an indication of the countries to be covered by the International registration.