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Author
Sergey Zuykov

Managing Partner / Patent Attorney of the Russian Federation / Eurasian Patent Attorney

14 December 2018

The Madrid System for the registration of trademarks as an instrument of globalization

The main purpose of the creation and registration of a trademark is its use for the individualization,isolation of а product. If the designation is registered, but at the same time it is not used for its intendedpurpose, then it will not have any value. An active promotion and use of the trademark leads to theformation of the associations “the trademark – the product,” “the trademark – the manufacturer,” “thetrademark – the quality” at a consumer. Thanks to these associations, the buyer makes informed choicesabout the products, and he recommends them to other consumers, what increases consumer demand. Thepositive results of such trend are: a production growth and an expansion of the territory, where theproducts are sold. At this stage, the right holder of the designation has two key questions: “How toprevent the illegal use of the trademark?” and “How to protect the means of individualization acrossseveral countries?”The registration of trademarks in different countriesThe Madrid System for the international registration of trademarks was created in 1891. The fundamentallegal acts ensuring the functioning of the System are: The Madrid Agreement Concerning theInternational Registration of Marks of 1891 and the Protocol Relating to the Madrid AgreementConcerning the International Registration of Marks of 1989. The International Bureau of the WorldIntellectual Property Organization (WIPO) performs the administration of the Madrid System.To file an application for the registration of a trademark using the Madrid System, you need:― To have the designation, which has been registered or filed for the registration with the national Officeof the Madrid Union member country (the Office of Origin), which the applicant is connected with. It isexpressed through a genuine and valid industrial or commercial enterprise, residence or citizenship.― To file an application to the International Bureau through the Office of Origin, where the date ofreceipt of the international application, the identity of the claimed mark to the designation in the basicapplication or registration, as well as the identity of the claimed classes of products and services to theones specified previously are subsequently certified.― To specify in the application an image of the mark and the list of products and services, classified bythe ICGS.― To enumerate the Madrid System member countries, where it is planned to obtain legal protection.― To pay a fee in the fixed amount. The amount of the fee depends on the number of the specifiedcountries, the number of the classes of the products and services enumerated in the application – theamount will increase, if more than three classes, as well as the countries of origin of the applicant, areclaimed – the amount of the fee may be reduced by 10%, provided that the state is recognized by theUnited Nations as the least developed one.After checking the application for compliance with the requirements, as well as the confirmation of thepayment of the fee in the fixed amount, the information about the trademark shall be placed into theInternational Register and be published in the Bulletin. The International Bureau shall notify then theUnion member countries, where the registration is sought. The national Offices of these states shall carryshall out an examination and make a decision on the international application in exactly the same way asif the application is filed directly.The international registration shall be valid during 10 years, further it is allowed to extend protection forthe periods of 10 years subject to the payment of the required fees.

The benefits of the registration of trademarks using the Madrid SystemUsing the Madrid System to file an international application, the holder of the trademark gets a number ofadvantages. Firstly, a single application is filed in one of three languages: English, Spanish or French.Secondly, a total fee shall be paid to the International Bureau. Thirdly, the period of examination of theapplication is reduced compared with the period of consideration directly within each Office. And alsothe procedures for changing the data about the right holder and for extending the period of protection ofthe registered designation are simplified.The Madrid System for the registration of trademarks as an instrument of globalizationIn a rapidly developing market relations the use of a trademark is the best way to increase demand and toimprove the company's competitiveness. The distinctive feature of the modern world economy is theabsence of obstacles to the movement of products around the world. Previously, it has been difficult tosell and buy on the territory of different states; also it has been extremely costly. Today, trading on theInternet and the numerous delivery methods make it possible to order and receive the product anywhere.In the circumstances, the simultaneous registration of the trademark in several countries is justified, and itwill allow protecting the designation and products against the illegal actions of the law violators.The Madrid System suggests that the right holders should take advantage of the Union of 102 membersrepresenting the interests of 118 countries. According to the WIPO data: “These members account formore than 80% of the world trade, and it can grow as the number of the Union members increases.” 1About 1.3 million trademarks have been registered by filing an international application.The person registering the trademark under the Madrid System gets a resource to ensure protection of thedesignation in several jurisdictions at once. As the Nestlé representative notes: “It is economicallyadvantageous, it requires minimal bureaucratic costs and it has a minimum of administrative barriers; itdoes not require powers of attorney and agents.” 2 Thanks to the use of the System, the procedure forextending the period of protection of trademarks is simplified. If desired, the right holder is entitled torefuse from the prolongation of the registration in a number of countries or, conversely, to expand the listof the states, in which the designation is registered.In conclusion, it is worth noting that in the process of the global economic integration, the Madrid Systemfor the registration of trademarks is a modern tool that allows the right holder, who has entered the worldmarket, to ensure timely and effective protection of his own means of individualization.

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