By Fernanda Zaragoza Benitez, LL.M. in Intellectual Property
As discussed in an earlier post, the Madrid system for international trademark registration is a cost-effective solution for registering trademarks worldwide. Thus, it is essential to know its main features as they will help the applicant to understand the process of applying for its international trademark.
Let’s take a quick look at these concepts.
- Entitlement to File
Under the Madrid Protocol, an international application may be filed by a natural person or a legal entity:
- Having a real and effective industrial or commercial establishment in, or
- Being domiciled in a member of the Madrid System, or
- Being a national member of the Madrid System.
To file an international application, the applicant must have already applied for registration or registered a mark with their Office of origin. The Office of origin is the national or regional IP Office of the Contracting Party where the mark that is the basis of an international application is either registered or has been applied for. This national or regional application or registration is referred to as the basic application, basic registration, or basic mark. An international application:
- can be based on a single basic mark or several identical ones covering different goods and services;
- may only contain goods and services covered by the basic mark scope; and
is dependent on the basic mark for a period of five years. This means that for five years from the date of the international registration, any changes affecting the scope of protection of the basic mark may affect the international registration associated with it.
- Language of the International Application
An international application may be filed in any one of the three working languages of the Madrid System:
- French, or
The official fees payable in connection with an application for international registration under the Madrid System comprise:
- the basic fee;
- a complementary fee for each Contracting Party designated; and
- a supplementary fee for each class of goods and services, in excess of three.
For certain contracting parties, the complementary fee is replaced by an individual fee.
In addition to the official fees, are service fees if a service provider is used. Also, the initial fees are generally only applicable to a smooth process, if there are obstacles or challenges to the application, there may be additional costs.
- Dependency and Transformation
An international registration is dependent on the basic mark for a period of five years from the date of the international registration. If, during the dependency period, the basic mark ceases to have effect, the Office of origin must notify WIPO of the facts and decisions affecting the basic mark and request the cancellation of the international registration in whole or in respect of the goods and services that are affected or not affected by the facts and decisions.
There is the possibility of transforming an international registration, canceled due to ceasing of effect of the basic mark, into national or regional applications, filed directly before the Offices concerned. The national or regional applications resulting from this transformation are treated as if they had been filed on the international registration date.
6.Duration of Protection
The term of protection for an international registration is ten years, from the date of the international registration, with the possibility of renewal for further periods of ten years.
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