Madrid System for the International Registration of Marks
The Madrid system for the international registration of marks (the Madrid system) established in 1891 functions under the Madrid Agreement (1891), and the Madrid Protocol (1989). It is administered by the International Bureau of WIPO located in Geneva, Switzerland.
Thanks to the international procedural mechanism, the Madrid system offers a trademark owner the possibility to have his trademark protected in several countries by simply filing one application directly with his own national or regional trademark office. An international mark so registered is equivalent to an application or a registration of the same mark effected directly in each of the countries designated by the applicant. If the trademark office of a designated country does not refuse protection within a specified period, the protection of the mark is the same as if it had been registered by that Office.
The Madrid system also simplifies greatly the subsequent management of the mark, since it is possible to record subsequent changes or to renew the registration through a single procedural step. Further countries may be designated subsequently.
Basic Registration or Application
The Madrid system is founded on the requirement of a basic national or regional registration or application for registration. Under the Agreement, an applicant for the international registration of a mark must have already obtained registration of the mark in the country of origin (basic registration). Under the Protocol, an international application may be based on either a registration with the Office of origin (basic registration) or on an application for registration filed with that Office (basic application). The international application may relate only to goods and services covered by the basic application or registration.
In most cases, the international application will be based on a single registration or application which covers the goods and services listed in the international application. It is, however, possible to base an international application on several registrations (under the Agreement) or on several applications and/or registrations (under the Protocol) which together cover the goods and services to which the international application relates. The basic applications and/or registrations must all be in the name of the person filing the international application and must have been made with the same Office. For the sake of simplicity, the following text refers only to a basic application or basic registration, it being understood that this includes the possibility of several basic applications and/or registrations.
Several Applicants
Two or more parties (whether natural persons or legal entities) may jointly file an international application, provided that the basic application or registration is also jointly owned by them, and that
– where the international application will be governed exclusively by the Agreement, or by both the Agreement and the Protocol, the country of origin is the same for each of the applicants;
– where the international application will be governed exclusively by the Protocol, each of the applicants has the necessary connection through establishment, domicile or nationality with the Contracting Party whose Office is the Office of origin.
It is not necessary for the nature of the connection (nationality, domicile or establishment) to be the same for each applicant, but all must be entitled to file an international application with the Office of the same Contracting Party.
Protection of the International Registration
The effects of the international registration extend to the Contracting Parties expressly designated by the applicant in the international application.
From the date of international registration, the protection of the mark in each of the designated Contracting Parties is the same as if the mark had been filed directly with the Office of that Contracting Party. If no refusal is notified to the International Bureau within the prescribed time limit, or a refusal so notified is not regarded as such or is subsequently withdrawn, the protection of the mark in the Contracting Party concerned is the same, as from the date of the international registration, as if the mark had been registered by the Office of that Contracting Party.
Date of the International Registration
The international registration resulting from an international application will, as a rule, bear the date on which the international application was received by the Office of origin (or, in the case of a premature international application, was deemed to have been received).
28.02 Where, however, the international application is not received by the International Bureau within a period of two months from the date on which it was received (or deemed to have been received) by the Office of origin, the international registration will instead bear the date on which the application was actually received by the International Bureau. Where, however, it is established that the late receipt resulted from an irregularity in a postal or delivery service, the international registration may still bear the date on which the international application was received or deemed to have been received by the Office of origin.
Period of Validity
Under the Protocol, registration of the mark is effected for 10 years from the date of international registration, with the possibility of renewal for further periods of 10 years.
The Agreement provides for registration and renewal to be effected for periods of 20 years. Under the Regulations however, the fees due in the case of an international application governed by the Agreement must be paid in two installments of 10 years. In respect of the payment of the second installment, the procedures and requirements which apply to the renewal of a registration are applicable. For all practical purposes therefore, any international registration can be regarded as due for renewal every 10 years.
Content of the International Registration
The international registration contains:
all the data contained in the international application (except data relating to an invalid claim to priority – that is, where the date of the earlier filing is more than six months before the date of the international registration);
the date and the number of the international registration;
where the mark can be classified according to the International Classification of Figurative Elements (Vienna Classification), the relevant classification symbols as determined by the International Bureau; when however the international application contains a declaration to the effect that the applicant wishes that the mark be considered as a mark in standard characters, symbols from the Vienna Classification will not be applied;
an indication, with respect to each designated Contracting Party, as to whether it is designated under the Agreement or designated under the Protocol;
indications relating to a seniority claim, concerning the Member State or Member States in or for which the earlier mark, for which seniority is claimed, is registered, the date from which the registration of that earlier mark was effective and the number of the relevant registration.
Publication of the International Registration
The international registration is published in the Gazette.
The reproduction of the mark is scanned from the international application form and is therefore published exactly as it appears in the international application. Thus, for example, where the mark has been typed on the form, this is what will be published in the Gazette. Where the applicant has made a declaration that he wishes that the mark be considered as a mark in standard characters, the publication will include an indication of that fact.
Where a color reproduction of the mark has been furnished, the main entry in the Gazette will contain a reproduction of the mark in black and white, while the reproduction in color will be published in a separate section at the end of the Gazette. Where the international application contained both a reproduction in black and white and a reproduction in color, the black and white reproduction in the main entry will be accompanied by the indication “see color reproduction at the end of this issue.” Where the reproduction of the mark in the international application was only in color, a black and white reproduction will be prepared by the International Bureau for the purposes of publication in the main entry in the Gazette and will be accompanied by the indication “see original in color at the end of this issue.”
If an international application is not recorded in the International Register within three working days following the receipt by the International Bureau, the data will nonetheless be entered forthwith in the database. This data will contain any irregularities that exist in the international application. (For more information concerning this database, see paragraphs A.09.01 to 04.)
Procedure for Renewal
Six months before expiry of each 10-year term of protection, the International Bureau, by sending an unofficial notice, reminds the holder of the international registration and his representative (if any) of the exact date of expiry. If however the holder (or representative) does not receive such unofficial notice, this does not constitute an excuse for failure to comply with any time limit for payment of the fees due. The unofficial notice will list all the designated Contracting Parties in respect of which no total refusal or invalidation is recorded in the International Register, or which have not been renounced.
Since renewal is considered to be a simple prolongation of the period of protection of the international registration against payment of the necessary fees, it may not include any change in relation to the international registration in its latest form, that is at the expiry of the current period of protection. Therefore, no change in the name or address of the holder or in the list of goods and services may be made as part of the renewal procedure. Any such changes which the holder wishes to have recorded in the International Register when the registration is renewed must be communicated separately to the International Bureau according to the applicable procedures. They will be included in the data recorded at renewal only if they are recorded in the International Register not later than the date of expiry of the international registration.
The international registration may however be renewed for some only of the Contracting Parties covered. This is not regarded as a change which, according to Article 7(2) of the Agreement and Article 7(2) of the Protocol, may not be included in the renewal. In that case the payment of fees must be accompanied by a statement listing the Contracting Parties for which no renewal is to be recorded.
No official form is prescribed for the renewal of an international registration. Renewal may be effected by any communication giving the necessary information (number(s) of the international registration(s) concerned and purpose of the payment). Holders may however find it convenient to use the unofficial form (MM11) which is sent by the International Bureau to the holder and the representative with the unofficial notice of expiry. This form provides for indications of:
– the number of the international registration to be renewed;
– the name of the holder, which must be the same as the one recorded in the International Register;
– the Contracting Parties for which the renewal is requested, including the Contracting Parties in respect of which a total refusal is recorded in the International Register;
– the signature of the holder or representative or of the Office through which the request for renewal is presented;
– the fees being paid and the method of payment, or instructions to debit the required fees from an account with the International Bureau.
-
