The Madrid Protocol - International Trademark Registration
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The Madrid Agreement on the Registration of International Symbols - the Madrid Convention - is one of two agreements involving the Madrid Process for International Trademark Registration. A protocol is a complement agreement and not a physical synchronization agreement. Trademark owners - individuals and businesses, by way of these inexpensive and effective ways can ensure the security of their marks in many countries by applying for a single application with one office, one language, and one set of funds also in one currency. In addition, a local agent is not required to file an initial application.
In the case of an International Registration, it remains the right of each country or party to enter into a security agreement to determine whether or not trademark protection may be granted. Once a trademark office in a designated country has provided protection, the trademark is protected in that country as if that office had registered it.
The Madrid Protocol also simplifies the subsequent management of trademarks because of a simple, one-step process that is there to record any change in the ownership or name or address of the owner to the World Intellectual Property Organization's International Bureau. The International Bureau oversees the Madrid system and co-ordinates the submission of claims for protection, renewal and other relevant documents to all members.
Madrid's International Registration Program is governed by two agreements:
The Madrid Agreement, finalized in 1891 and reviewed in Brussels (1900), Nice (1957), The Hague (1925), Washington (1911), London (1934), and Stockholm (1967).
The Protocol to the Convention, which was finalized in 1989, aims to make the Madrid system more flexible and in line with the domestic law of certain countries or non-governmental organizations that have not been able to comply with the Convention.
The countries and organizations that participate in the Madrid program are collectively called the Contracting Parties.
This system enables the protection of the mark in many countries by obtaining international registration that affects each Contract Groups.
Eligibility to use the System
An application for international registration (international application) can only be made by a natural person or legal entity having contact - by the establishment, place of residence or nationality, with a contracting party to the agreement or Protocol.
The mark can only be the subject of an international application if it is already registered with the Contracting Party trademark office where the applicant has the required communication (called a traditional office). However, when all calls are made under the Protocol, an international application can only be based on an application for registration with a traditional office. The international application must be submitted to the WIPO International Bureau through a traditional office co-ordinator.
An application for international registration must select one or more contract parties where protection is required. Further explanations may be made thereafter. A Contracting Party may only be appointed if it has entered into a similar agreement with a Contract Group with a traditional office. The latter cannot by itself be nominated in an international application.
The appointment of the Contracting Party provided is made under the Agreement or the Protocol, depending on which agreement is common to the Contract Parties concerned. If both parties have a contract that is part of an agreement with the protocol, this position will be governed by the Protocol.
International applications can be filed in English, French or Spanish, regardless of the agreement or agreements governing the application, unless the traditional office restricts such selection in one or two of these languages.
International application is subject to a down payment of basic fees (reduced to 10% of the prescribed foreign application fees submitted by applicants whose country of origin is the LDC, in line with the United Nations list), additional fees for each class of goods and / or services for more than three classes the first, and the corresponding amount of each party making the designated contract. However, the Contracting Party in the Protocol may declare that, when placed under the Protocol, the corresponding amount is replaced by individual money, the amount determined by the Contracting Party concerned but may not exceed the amount that will be paid for registration of trademark, at national level, and its office.
Once the International Bureau has received an international application, it conducts an assessment of compliance with the requirements of the Protocol and its Regulations. These tests are limited to procedures, including the classification and understanding of inventory of goods and / or services. If everything is as per the regulations, then the International Bureau would record in the International Register, publishes an international registration in the WIPO Gazette of International Marks (hereinafter referred to as the "Gazette"), and notifies each designated party making the agreement. Any matter of an item, such as whether the mark is eligible for protection or whether it conflicts with a mark previously registered with the contracting party, is determined by the trademark office of that Agreement under applicable local law. The Gazette is available electronically (in the Gazette) on the Madrid program website.
International Trademark Registration Process
Application through Regional or National IP office
Step 1 - would be to file an application or have already registered in the ‘home’ IP office, before one can file an international application. This application or registration is called basic mark. Only then one can submit their application through the same office which further would certify and forward it to World Intellectual Property Organisation.
World Intellectual Property Organisation’s Formal Examination
Step 2 - WIPO (World Intellectual Property Organisation) would then conduct a formal examination of the said application. If approved after examination, WIPO will send a certificate of the international registration and would notify all the IP offices as mentioned by the application wishing for protection for mark. Then the mark would be considered recorded in the International register and published in the WIPO Gazette of International marks. One shall note as well that the scope of international registration is unknown while in this stage. It can only be determined after examination and after the decision by those IP offices in the territories, mark is applied for.
It is in the hands of the IP offices of the territories applicant has wished to protect the mark. These offices will make a decision and the applicable time limit for such decision is 12 to 18 months, in accordance with their legislation. WIPO will record such decision in International Register and would notify the applicant. If one IP office refused to protect the mark, totally or may be partially, it wouldn’t affect the other IP offices decision. The applicant is open to contest a refusal decision before the concerned IP office, only in accordance with its legislation. WIPO will notify the applicant with the decision and would record the same in International Register. Once the mark is registered, the international registration of the said mark would be valid for 10 years. The applicant will have the option to renew the registration after the end of such period of 10 years, directly with WIPO with effect in the designated contracting parties concerned.
Statement of Protection or Rejection of Protection
The office of each designated contractor will issue a statement of protection under the 18ter of the Regulations.
However, when designated Contracting Parties check international registration in accordance with their domestic laws, and if certain other conditions are not complied with, they have the right to refuse protection in their area. Any such refusal, including an indication of the grounds on which it is based, must be notified to the International Bureau, usually within 12 months from the date of notification. However, the Contracting Party on the Protocol may declare that, when placed under the Protocol, this time limit is extended to 18 months. The Contracting Party may also announce that the objection based on the opposition may be referred to the International Bureau or after an 18-month time limit.
Denial is notified by the registration holder or representative before the International Bureau, recorded in the International Register and published in the Gazette. The procedure followed after the refusal (such as lodging a complaint or review) is done directly by the competent management and / or the Contracting Tribunal concerned and its owner, without the involvement of the International Bureau. The final decision regarding rejection, however, should be referred to the International Bureau, which records and publishes it.
Global Registration Results
The results of the international registration of each contracted party, from the date of international registration, are the same as if the mark was placed directly on the office of that competing party. If no refusal is issued within the applicable time limit, or if the refusal initially announced by the Contracting Party is later withdrawn, the protection of the mark, from the date of international registration, is the same as if it was registered by the Office of that party.
International registration is valid for ten years. An additional ten years may be renewed upon payment of the prescribed fee.
Protection may be restricted in respect of any or all of the goods or services or may be waived only in respect of certain Contracting Parties. International registration may be transferred in respect of all or any of the designated Contracting Parties and all goods or services indicated.
Benefits of the Madrid program
The Madrid system offers several benefits to trademark owners. Instead of applying for a separate national application for each country of interest, in different languages, depending on the different national and regional laws and regulations and paying different amounts (and usually higher), international registration can be obtained by simply applying with the International Bureau (home office), in one language. (English, French or Spanish) and pay one set of fees.
There are similar benefits to maintaining and renewing registration. Similarly, if international registration is granted to a third party, or is otherwise changed, such as a change of name and/or address, this can be successfully recorded for all designated contract parties in one step of the process.
To facilitate the work of users of the Madrid System, the International Bureau publishes the International Registration Guide under the Madrid Agreement and the Madrid Agreement.
The Madrid Convention and Protocol are open to any State party to the Paris Agreement for the Protection of Industrial Buildings (1883). The two agreements are the same and independent, and the United States can adhere to both. In addition, a non-governmental organization that maintains its mark registration office may join the Protocol. Verification or entry instruments must be submitted to the Director-General of WIPO.