Madrid System for the International Registration of Trademarks and Its Features

Trademarks operate on a territorial basis. For instance, a trademark registered in Russia will only be effective within the territory of Russia and will not cover other countries. Consequently, if legal protection is needed in other countries, it is necessary to undergo the registration process in each specific country. This can be done through the national procedure — by submitting an individual (national) application directly to the office of the interested country — or through international registration — by submitting one international application specifying the countries for which registration is sought.

This article explores the features of international trademark registration under the Madrid System. The functioning of the Madrid System for international registration of marks is governed by the Madrid Agreement, concluded in 1891, and the Protocol relating to that Agreement, concluded in 1989. The International Bureau of the World Intellectual Property Organization (WIPO) administers the Madrid System.

Registration procedure

The Madrid System for international registration of trademarks simplifies the process if protection is sought on an international level. This system allows trademark owners to register in several member countries of the Madrid System by filing one application directly with their national trademark office.

It is also worth noting that the Madrid System significantly simplifies subsequent trademark management, as it allows for entries regarding changes or renewal of registration through a single procedural action. Additionally, the international registration can be expanded later by adding more countries that were not initially specified in the international registration.

According to the Madrid Agreement and Protocol, based on a Russian application or certificate, it is possible to effectuate the registration of a trademark in the countries that are parties to the agreement and protocol, known as international registration, which includes more than 130 countries, with the number continually increasing. The current list of countries is published on the website of the Federal Service for Intellectual Property.

It is important to note that in order to apply the Madrid system, a basic registration or submitted application is required. Based on the basic registration/application, an international application is submitted to Rospatent, where it is checked for compliance with formal requirements and then sent to the International Bureau of the World Intellectual Property Organization (WIPO). To apply for international trademark protection, you must be a citizen of any member of the Madrid System, permanently reside in it, or have a commercial enterprise in its territory.

For an international application, a special form has been established, namely form MM2, which must be filled out correctly, all filling is carried out in English. Accordingly, all information on basic registration must be adapted into English. The MM2 form is periodically updated.

In addition, you must pay a fee, which is calculated in Swiss francs. The fee is paid to the International Bureau of WIPO. The amount of the duty directly depends on the type of product (color or black and white, the number of classes of the ICGS, the list of countries). To calculate the duty, a special service “fee calculator” is used.

As previously mentioned, the international application is submitted to the national agency of the base registration (in this case, Rospatent), where it undergoes a formal compliance check. If any discrepancies are found during this check, the applicant will be required to respond to inquiries. If the application meets all requirements, it is then forwarded to the WIPO International Bureau. It should be noted that a government fee is charged for the review and forwarding of the international application, payable at Rospatent when the application is submitted (according to item 4.14 of Appendix No. 1 to the Fee Regulation).

The requirement for filing an international application is the existence of a basic registration/application. Regarding the relationship between international registration and basic registration, it is important to note the following:

• The international registration is dependent on the Russian one for five years, meaning if the Russian application/registration is canceled, the international registration is automatically canceled as well.
• The mark in the international registration must be identical to that in the Russian application/certificate.
• The list of goods/services in the international registration must be identical or narrower (you can reduce but not add goods/services).

Thus, an important feature of an international application is its dependence on the underlying registration/application.

Further, after filing an international application (approximately 4-5 months), the applicant is sent a certificate of registration of the mark, which indicates the countries in respect of which the international application was filed, a list of goods and services, and the international registration number is also reflected in this certificate. Then WIPO sends the application to the countries specified in it, in which the examination begins - the period for conducting the examination in the declared countries is approximately 12-18 months.

Thus, the examination is carried out separately in each declared country in accordance with the rules established at the national level, i.e. a trademark is not automatically registered by WIPO.

If, based on the results of the examination in the declared countries, provisional refusals are issued, the applicant is notified of them accordingly - the national office forwards them to WIPO, and WIPO notifies the applicant of the provisional refusal. To overcome refusals, it is necessary to contact patent attorneys in each specific country.

If the examination results in a decision to grant legal protection, the applicant is notified in a similar manner.

Validity periods

Regarding the validity period of an international registration, it should be noted that it is valid for 10 years with the possibility of its subsequent extension also for 10 years an unlimited number of times.

An international trademark registration can be renewed no earlier than six months before the expiration of the ten-year protection period or during a six-month grace period after the expiration of the specified period (in this case, the renewal is subject to an additional fee). The amount of the renewal fee depends on the number of classes and the list of countries. To calculate the fee, the “fee calculator” service is also used.

It should be noted that if there is no need to maintain legal protection for all declared countries, then the international registration can be renewed in part of the countries specified in the international registration. Based on the results of the renewal, a renewal certificate is sent, which indicates the validity period, as well as a list of countries in which the renewal was carried out.

For monitoring international registrations, it is possible to track them on the Madrid Monitor service by using either the international registration number or the number of the base registration/application. This service allows real-time monitoring of the status of the international registration, reflecting the status in each declared country and the progress of proceedings.

Management of international registration (in terms of renewal, amendment, assignment) is possible through the eMadrid service. This tool allows you to conveniently and quickly manage international registration.

In a nutshell, the Madrid System for the registration of trademarks is a centralized procedure for filing and managing applications, enabling registration across a broad range of countries and offering the most convenient means of interaction with foreign states in the field of trademark registration.

Sources:

1. Civil Code of the Russian Federation (part four) dated December 18, 2006 N 230-FZ (as amended on June 13, 2023) (as amended and supplemented, entered into force on June 29, 2023)

2. Regulations on patent and other fees for carrying out legally significant actions, approved. Decree of the Government of the Russian Federation dated December 10, 2008 N 941, as amended on September 19, 2022) (as amended on June 29, 2023)

3. General Instructions for the Madrid Agreement Concerning the International Registration of Marks and the Protocol thereto (effective from January 1, 2015)