Q

The Madrid Protocol

The Madrid Protocol is an international treaty which allows you to register your trademark globally through a single application. It also allows you to modify, renew or expand your trademark protection.

Applying for trademark registration through Madrid Protocol will protect your mark in almost 119 countries which form a part of the Madrid System.

However, you can apply only when you are a citizen of one of the member countries or have an industrial or commercial establishment in any of the countries.

For example – If you are a citizen of India (Member of Madrid System) and do business in the country, you can use the Madrid System to register your trademark internationally.

Also, you first have to obtain registration of your mark with the IP Office of your resident country. (Basic Registration) 

International Trademark Search (Before filing)

WIPO’s Global Brand Database helps you to find out any identical or similar matches for the mark you wish to register internationally. You should also consider if the marks fall under

  • Same trademark classes or
  • Are already registered or applied.

However; you can proceed if the identical or similar mark falls under a different trademark class than yours or the registration of the mark has expired. 

How to Apply?

International Registration for each trademark under the Madrid Protocol covers the following stages.

1. Basic Registration

You must have a trademark registered or applied through the IP Office of your home or resident country. The international application will be submitted through the same IP Office which will then forward it to WIPO.

For example - If you have a trademark registered in Kolkata (India) then you initially have to apply at the Trademark Office available there. 

All International Applications should be filed using MM2 while applications entitled to the United States of America must also include Form MM18.

You can either visit the Trademark Office and fill the form manually or file the form online through Quick Company or IP India. However; you would require filing a fresh application if you wish to extend the protection of your goods or services after filing the form.

2. Examination by WIPO

WIPO then examines the trademark application for any mistakes or wrong filing based on which it can -

  • Issue an irregularity notice to the applicant and the concerned IP Office. The irregularity notice needs to be replied with the respective corrections usually within 3 months from the date of issuance.
  • Records and publishes the mark in the WIPO Gazette of International Marks. WIPO will send you a Certificate of Registration for your mark.
Note: The Registration Certificate is an acknowledgement of compliance with WIPO’s formal requirements. The protection of your mark depends on the next stage. 

3. Substantive Examination

All the Member Offices (mentioned in the application) will be notified once your mark is recorded in the International Register. Your application will now be examined at each office according to their respective laws and provisions.

This process can take 12-18 months and may differ in each case. Real-time status is available on Madrid Monitor which is also communicated to the applicant. 

Possible Outcomes

  • In some cases, there is an interim status which means that the application has passed the examination but is due publication.
  • The mark is granted protection when a statement is received within 12-18 months or even if no statement is received within the allocated time.
  • Provisional Refusal is received which will include reasons for the refusal, any further steps (if required), review or appeal options.

You can challenge the provisional refusal by stating reasons in support of your mark or the issues raised. There is no time limit for the Office to issue a final decision. 

Either the office will grant protection for all or some of the goods and services listed in the application or confirms a total provisional refusal of your mark. 

How to Track your Application?

You automatically get enrolled in the e-notification service if you mention your e-mail address during the filing of the international application. This way you will receive all the relevant notices or documents concerning your trademark registration.

Enrolling for e-notifications means you will not receive hard copies from WIPO regarding your international application or registration.

You can also set-up Madrid Monitor e-alerts to receive an email alert each time the status of an international registration is updated in Madrid Monitor.

International Registration Cost

The cost of an International Trademark Registration includes -

  • A Basic Fee (653 Swiss francs or 903 Swiss francs for a colour mark*)
  • Additional costs depending on where you want to protect your mark or number of trademark covered in your registration.
  • For example - In the case below, the office of origin is Austrlia.  
Country Applied in Number of Classes Type Individual Fee
Japan  1 Colour/Collective   108
United Kingdom  Colour/Collective  227
In case the IP Office of your resident country falls in the Least Developed Country, the basic fee is reduced to 90%.

The payment can be initiated through -

  • WIPO Current Account.
  • Credit card payments or
  • Bank or postal transfer.
Note: The entire fee is submitted in Swiss francs.

A payment acknowledgement is received within 10 days of making the payment. However; No refund can be generated once the payment has been made successfully.

An Irregularity Notice is issued if you fail to pay full fee with a payment deadline of 3 months failing which your application will be abandoned.

Renewal

Your Trademark Registration is valid for 10 years after which you can renew it directly through WIPO. You may renew your registration either before the protection expires or within the six-month grace period.

Note: You need to pay a 50% surcharge if you renew your international registration during the grace period.

The applicant also receives an unofficial notice from WIPO as a reminder of their due renewal. You can either file form MM11 or choose their e-renewal system to apply online. 



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