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How to file an international application using the Madrid System of the registration of trademarks

Aug. 5, 2020


The international registration of the means of individualization according to the Madrid System procedure is carried out in order to simplify the registration of designations in the countries that are the parties to the Madrid Agreement Concerning the International Registration of Marks of 1891 and the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks of 1989.

The World Intellectual Property Organization (WIPO) is a link between Patent Offices, and also, it simplifies significantly for a right holder the registration of a designation in the foreign countries.

It should be taken into account that filing an application under the Madrid System shall be allowed only after filing a national application or the registration of a trademark in the country of origin.

The application for the international registration must be filed to the national Patent Office, and for the citizens of Russia such Office is the Russian Patent Office.

In order to file the documents for the international application, the documents must be filled out in English or French, at the applicant’s choice. An MM2 form is publicly available on the WIPO website (http://www.wipo.int/madrid/en/forms).

The applicant must indicate in the application:

• The Patent Office through which the international application is filed.

• The name of the applicant. If the name of the person is written in non-Latin letters, it must be indicated in the form of transliteration into Latin letters in accordance with the phonetics of the language of the international application. When the applicant is a legal entity, transliteration may be replaced by a translation into the language of the international application.

• The address of the owner of the designation or his representative, including the address for correspondence, the telephone, the Fax, the e-mail address, the preferred language of correspondence (English, French or Spanish).

• Whether the applicant is a resident of the country, which Office is filing the application for him.

• The information about the basic national application or registration. As well as the priority date of the application, if the applicant claims to the priority of the earlier filing. At the same time, the place, the number, and the date of filing the earlier application shall be indicated.

• The image of the claimed trademark. The reproduction may be two-dimensional, graphic, or photographic and it must fit into an 8 x 8 cm square. The mark must be identical to the object indicated in the original application or the basic registration.

• The peculiarities of a colour design, if any. The right holder shall describe the claimed colour in words (one or more) and he may indicate additionally in which colour the main parts of the means of individualization are made.

• The description of the designation. If the description is present in the basic application, the applicant may make a decision to include or to omit the latter in the international application. If the mark does not belong to any of the traditional types of the trademarks provided for in the international application, the space for the description may be used to clarify the nature of the designation, for example, the applicant may indicate that the object is a hologram or a traffic sign. However, in this case, the description must still correspond to what is contained in the basic designation. However, the International Bureau shall not check the accuracy of the description.

• A refusal from protection. If the applicant wishes to refuse from the protection of any element of the mark, this should be mentioned in the application.

• The list of the products and services for which the international registration is requested. The right holder shall indicate the class and the list in accordance with the latest version of the ICGS. For this purpose, it is advisable to use the Manager of Products and Services of the Madrid System located on the WIPO website: https://wipo.int/mgs/.

• The list of the countries, where the applicant requests protection for the means of individualization.

Taking into account the international nature of filing the documents, the subsequent registration and the use of the trademark in the foreign countries, the indication of the following is of particular significance:

• Transliteration of the letter and digital elements. The person shall indicate the phonetic representation of the designation in Latin letters following the phonetics of the language of the international application. If the object consists of the letters other than Latin symbols, or the digits other than Arabic or Roman digits, then transliteration must be provided for them.

• A translation of the word elements. The translation may be made into English and/or French, and/or Spanish, regardless of the language of the international application. The International Bureau shall not check the accuracy and it shall not put in question any translation of the mark. In the case, when in the applicant’s opinion the trademark cannot be translated, this should be indicated in paragraph 9 (c) of the form. These actions are necessary in order to prevent a request for the translation.

When filing the application for the international registration, the person shall pay the following fees:

• a basic fee;

• an additional fee for carrying out an examination in the listed states;

• the additional fee for each indicated class of the products and services, if there are more than three of them.

The application shall go through the following steps since the date the documents have been filed to the Office of origin by the trademark right holder:

1. Receiving by the national Patent Office, where the documents shall be certified and then sent to the WIPO.

2. Carrying out the formal examination within the framework of the WIPO, registering the application and notifying the countries indicated by the right holder, where the registration is planned.

3. Carrying out the check of the designation as to substance in the Patent Offices of the claimed states and making decisions by them.

4. In the case of a positive decision, the trademark shall be registered, the WIPO shall make an entry in the International Register and notify the owner of the means of individualization.

In conclusion, it should be noted that the registration of the trademark under the Madrid System is valid during 10 years with the possibility of a further extension for the same period an unlimited number of times.

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Author of article

Olga Plyasunova

Olga Plyasunova

Head of Department / Trademark Attorney