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Possibilities of interaction with the WIPO International Bureau

31 Oct 2023
#Patenting abroad
Trademark Attorney

Starting a business in another country is necessary, in addition to organizational formalities, including registering a trademark in order to obtain protection of your exclusive rights in order to be able to defend them.

International registration of a trademark under the Madrid system is a convenient and cost-effective tool. Currently 114 countries of the world are parties to the Madrid Agreement and the Protocol. To file an international application, it is necessary to have a basic certificate or an application filed in Russia. The information specified in the materials of the international application must correspond to the information from the base mark (application), namely: the name and address of the applicant, the trademark, its color combination, the list of goods or services. In this case, the list in the international application may be declared in a shortened form, but expansion of the available goods or services is not provided.

The main advantages of filing an application under the Madrid system are the centralized submission of documents to the WIPO IB, which is carried out through Rospatent and gives the ability to expand the validity of an international registration to other countries in the future, and carry out all necessary actions (extension, amendments, alienation, etc.) directly through WIPO MB by submitting a single request. Centralized office work through the WIPO MB allows you to effectively manage your trademark and wisely spend financial resources. Otherwise, applicants would be forced to file separate applications with the national offices of countries with the help of patent attorneys.

Upon receipt of the materials of the international application at the WIPO IB and subject to payment of the appropriate fee, the application is assigned an internal number, and within 4-6 months from the date of filing, an electronic certificate is issued with the assignment of an international registration number. At the time of receipt of the certificate, the trademark has not yet been registered in the declared jurisdictions; examination of it is just beginning in each national office. The examination period is 12-18 months, depending on the workload of the departments and the established procedure for considering applications. Based on the results of the examination, each agency makes either a positive decision on the application or a preliminary refusal with the expert’s arguments about the obstacles to registering the mark. The time frame for responding to provisional refusals varies from country to country depending on national legislation - in China this period is 14 days, and in the USA it is 6 months. To overcome the preliminary refusal, it is necessary to contact foreign attorneys on whose behalf the response is submitted. Some national authorities, for example, in the USA, Canada, Australia, may issue more than one preliminary refusal, identifying the grounds for their direction.

The official website of the WIPO IB contains a search section for trademarks, both by number and by a larger number of components: by name of the mark, by class, by country, by copyright holder, by base number, by image. From the point of view of managing international registration, there is a convenient eMadrid system , which allows you to independently interact with the WIPO IB and submit documents of various types.

The Madrid Application Assistant is an electronic version of the official Form MM2 that must be used to file an international application under the Madrid System:

  • An extension of an international registration provides a tool for filing an international registration in additional jurisdictions, subject to payment of an extension fee. As soon as the WIPO IB receives a request for an extension, the copyright holder is informed about it, and then examination begins in the countries specified in the extension.
  • Limiting the list of goods or services is an option that is sometimes necessary to overcome preliminary refusals if it is not possible to implement a restriction as part of a response to a refusal.
  • Termination of an international registration in whole or in part is two separate options that allow the copyright holder to independently terminate the legal protection of his trademark in all or part of the declared countries.
  • Alienation of an international registration allows you to fully or partially assign the exclusive right to a trademark in favor of a third party.
  • Renewal of international registration is an integral part of the trademark management process. Renewal of a trademark in the WIPO IB is carried out every 10 years during the last six months of the validity of the mark. If the renewal deadline is missed, the mark can be renewed for an additional period of six months after the deadline. In this case, the amount of the duty will be increased by extending it into an additional period.

The WIPO IB also provides the opportunity to submit electronic forms for the disposal of an exclusive right through licenses, restoration of missed deadlines (subject to compliance with all necessary payments), merger or division of an international registration.

Thus, the Madrid Trademark System provides applicants and representatives with the ability to manage trademarks that are registered under the system. Recently there have been changes to the interface of the Madrid search engine Monitor: the procedure for presenting data has been updated; documents on office work in different countries have been mostly digitized. Additionally, I would like to note the convenient Contact service Madrid, where WIPO IB specialists respond to requests within 1-2 days.


Trademark Attorney