International Trademark Registration

international trademark registrationThe Madrid System of international trademark registration is a multinational system for simplifying the administrative procedures of extending trademark protection from one originating country to a number of foreign countries. Its legal basis is the Madrid Agreement Concerning the International Registration of Marks (Madrid Agreement) and the Protocol Relating to the Madrid Agreement (Madrid Protocol).

The two treaties, the Madrid Agreement and the Madrid Protocol, make up a system of centralized filing of applications and notification, which help the applicant to obtain a bundle of trademark registrations in separate jurisdictions all over the world.

1. Which countries are covered by the Madrid System?

The Madrid System currently comprises 91 countries which have signed the Madrid Protocol and 56 countries which have signed the Madrid Agreement. Since almost all countries of the Madrid Agreement have also signed the Protocol, the total number of the member states of the Madrid System is 92.

An up-to-date list of the member states of the Madrid System is published on the website of WIPO. This list also includes information about whether or not the contracting states have signed the Madrid Protocol, the Madrid Agreement or both treaties.

A number of economically important countries have not joined the Madrid System. As of October 14, 2013, the following important countries do not participate in the system (in alphabetical order):

  • Argentina
  • Brazil
  • Canada
  • Indonesia
  • Malaysia
  • Papua New Guinea
  • South Africa
  • Taiwan
  • Thailand

2. How to apply for an international trademark registration?

A request for international trademark registration can be filed typically within a time period of 6 months from the filing of a domestic trademark application (basic application).

The request for an international trademark registration can be filed at the national trademark office which is competent for the applicant. The forms MM1, MM2 and MM3 of the WIPO must be used for filing the request.

Which form is to be used will depend on both, the country of the basic application (country of origin) and the designated countries. The following table summarizes the different scenarios and the admissible WIPO form (MM1, MM2 or MM3):

No. Country of origin Designated countries Treaty / procedural regime WIPO form
1 Madrid Agreement only Madrid Agreement or (Madrid Agreement and Madrid Protocol) Madrid Agreement MM1
2 Madrid Protocol only Madrid Protocol or (Madrid Agreement and Madrid Protocol) Madrid Protocol MM2
3 Madrid Protocol and Madrid Agreement Madrid Agreement only Madrid Agreement MM1
4 Madrid Protocol or (Madrid Agreement and Madrid Protocol) Madrid Protocol MM2
5 (at least one country Madrid Agreement only and at least one country Madrid Protocol only) or (Madrid Agreement and Madrid Protocol) Madrid Protocol and Madrid Protkol MM3

For most applicants in Europe, either form MM2 or MM3 will be relevant. The form MM1 is only used in exceptional cases.

The forms may be downloaded free of charge from the WIPO website:

It is important to use the admissible form and language, because otherwise the request for international registration may be refused by the WIPO.

3. Which languages can be used for the international trademark registration?

The language of the proceedings will depend on the applicable procedural regime (Madrid Agreement, Madrid Protocol or both) as well as the preference of the applicant.

Madrid Agreement Applications must be filed in French or English, whereas Madrid Protocol applications may be filed in French, English or Spanish. The filing trademark office may have further restrictions as to the language to be used for the request. Otherwise, the applicant is free to choose the language of the proceedings.

4. Is the appointment of a representative necessary?

For most designated countries, it is generally not necessary to appoint a representative before the national trademark offices. However, if a provisional refusal is issued or if the applicant needs to communicate directly with the national trademark office for other reasons, the normal representation rules apply.

5. What are the costs for filing an international trademark registration?

The costs for filing an international trademark registration will depend on the following factors:

  1. filing date
  2. office of origin
  3. filing office
  4. type of trademark (word mark or figurative mark, colors or b/w)
  5. number of classes to be covered
  6. designated countries

The costs will fall within one of the following categories:

  1. international fees
  2. transmittal fees
  3. additional costs (if applicable).

5.1 International fees

The following international fees will have to be paid in Swiss Franc (CHF) to the OHIM:

  1. basic fee
  2. complementary fees
  3. supplementary fees, including the supplementary fee linked with the irregularity in accordance with Rule 12 (1)
  4. individual fees
  5. supplementary fees of individual fees

If the applicant has a real and effective industrial or commercial establishment, or a domicile, in country qualifying as a least developed country (LDC), the basic fee can be reduced. Currently, the following member countries of the Madrid System qualify as LDCs:

  • Bhutan
  • Lesotho
  • Liberia
  • Mozambique
  • Sierra Leone
  • Sudan
  • Zambia

The International Fee Calculator of the WIPO can be used for calculating the applicable international fees.

5.2 Transmittal fees

A transmittal fee will have to be paid at the filing office for forwarding the request for international trademark registration to the WIPO. This wee is typically due when the request for international registration is filed.

The amount of the transmittal fee depends on the national trademark office used nad will be in the range of from 0 to 300 EUR.

5.3 Additional costs

Additional costs for filing an international trademark registration can be expected for obtaining and filing the (certified) copy of the priority document and, if applicable, costs of assuming representation and other attorney fees.

6. What are the advantages and disadvantages?

The advantage of filing an international registration under the Madrid System includes the potential cost savings over filing individual national trademark application.

The request for registration can be filed at one trademark office and the administrative steps subsequent to registration are also processed in a centralized procedural system with an effect across all designated countries. The centralized system will also save time for the applicant.

A disadvantage of the Madrid System is that the applicant may lose protection of the international registration, if the home application is not registered or cancelled during the first five years after filing the application.

Another disadvantage is that some national trademark offices require more narrow descriptions of the goods and services in trademarks than the office of the home trademark or the office of other designated countries. An adaptation of the list of goods and services to the national provisions is therefore still necessary in some cases.

An international registration can only designate countries which are members of the Madrid System. For all other countries, the filing of national trademark applications is necessary.

7. Summary

The Madrid System is a useful tool for obtaining trademark protection in a significant number of foreign countries.

A careful assessment of the economic needs of the applicant and the costs involved for filing an international trademark registration vis-à-vis the costs for filing individual national trademark applications should be made in each case.

Foto: © fotomek – Fotolia.com

Print Friendly, PDF & Email
The following two tabs change content below.
This entry was posted in International Law, Start-up Business Consulting, Trademark Law and tagged , , , , , , , . Bookmark the permalink.

Leave a Reply

Your email address will not be published. Required fields are marked *

*