International application and registration
- Who can file an international application?
- Do I need to use a special form to file an international application?
- Where can I find the forms for an international application?
- Can I send my international application directly to the International Bureau?
- Do I need to appoint a representative to deal with my international application?
- What is the difference between the address for correspondence and the representative’s address?
- In what languages may an international application be filed?
- Do I need a basic mark to file an international application?
- In an international application can I include my own country among those selected for the protection of my mark?
- Which countries are covered by a designation of the European Union in an international application?
- Are the countries that are Members States of the European Union also members of the Madrid system in their own right?
- Does the designation of the United Kingdom automatically cover all British territories abroad?
- Can a disclaimer be made in an international registration if it was not made in the basic registration or basic application?
- Can I modify an application for international registration?
- Can I check the status of my international application?
- I have received a certificate of international registration. Is my trademark now protected in all the designated Contracting Parties?
- What does the notification date mean?
- Can I check the status of my international registration?
- Why are some country codes in blue and underlined in the ROMARIN database?
- Can I obtain a copy of my registration certificate?
- Can I own a mark and not necessarily use it?
- I have appointed a representative for my international registration but I received correspondence directly at my address
An international application may be filed only by a natural person or a legal entity having an industrial or commercial establishment in, or being domiciled in, or a national of, a country which is party to the Madrid Agreement or the Madrid Protocol.
Yes. One of the three following official forms must be used:
- form MM1, for an international application governed exclusively by the Madrid Agreement;
- form MM2, for an international application governed exclusively by the Madrid Protocol;
- form MM3, for an international application governed by both the Madrid Agreement and the Madrid Protocol.
All the Madrid system forms are available on the Internet.
No. An international application must be sent to the International Bureau through the Office of origin.
There is no obligation to appoint a representative in order to file an international application.
If a representative has been appointed, correspondence from the International Bureau will be sent to him/her. Only if the postal service is unable to deliver the letter and returns it to the International Bureau will it then be sent to the address recorded under “address for correspondence”. Otherwise, it will be sent to the recorded holder. For this reason, if a form is completed giving the same address for representative as for correspondence (or the same address for the holder as for correspondence), the address for correspondence will be not recorded.
As from September 1, 2008, any international application may be filed in English, French or Spanish. However, the Office of origin may restrict the choice to one or two of these languages.
Under the Madrid Agreement, an international application must be based on a mark that has already been registered (“basic registration”) in the Office of origin.
In contrast, under the Madrid Protocol, an international application may be based on either a mark that has already been registered (“basic registration”), or applied for, but not yet registered (“basic application”).
In an international application can I include my own country among those selected for the protection of my mark?
No, because the international registration is based on the national registration or application already recorded and therefore is already secured at the national level prior to requesting protection through the Madrid system at the international level.
A designation of the European Union (country code EM) covers all the countries that are Member States of the European Union, namely Austria (AT), Benelux (consisting of Belgium, Luxembourg and the Netherlands) (BX), Bulgaria (BG), Cyprus (CY), Czech Republic (CZ), Germany (DE), Denmark (DK), Estonia (EE), Spain (ES), Finland (FI), France (FR), United Kingdom (GB), Greece (GR), Hungary (HU), Ireland (IE), Italy (IT), Lithuania (LT), Latvia (LV), Malta (MT), Poland (PL), Portugal (PT), Romania (RO), Sweden (SE), Slovenia (SI), Slovakia (SK).
Are the countries that are Members States of the European Union also members of the Madrid system in their own right?
Yes, with the exception of Malta.
No. For complete details, see the website of the UK Intellectual Property Office.
Can a disclaimer be made in an international registration if it was not made in the basic registration or basic application?
NB: a disclaimer can only be made in the application for international registration and is valid for all designated Contracting Parties. No disclaimer is possible once the application has been recorded.
Any modifications to be made to an application for international registration that has not yet been recorded in the International Register can only be sent to the International Bureau by the Office of origin.
Yes. You can check the status of your international application by using the ROMARIN database. This database is updated daily and is available free-of-charge. When searching pending international applications, under “Please select a database”, you should indicate “pending” or “both”.
I have received a certificate of international registration. Is my trademark now protected in all the designated Contracting Parties?
No. Each Office of a designated Contracting Party has the right to refuse protection of the trademark in its territory and to communicate to the International Bureau a notification of refusal within the refusal time period that is provided for by the Madrid Agreement or by the Madrid Protocol.
The notification date is the date on which the certificate of international registration is sent to the holder or representative and a notification is sent to the designated Contracting Parties that an international application or a subsequent designation has been recorded in the International Register. It is this date that marks the beginning of the period in which designated Contracting Parties can issue a provisional refusal of protection, as well as any opposition from third parties if the local law permits.
Yes. You can check the status of your international registration by using the ROMARIN database, available free-of-charge. This database is also updated daily and contains a detailed history of all international registrations that are currently in force in the International Regiser. As of October 1, 2010, the ROMARIN database includes all data from the Madrid Express database.
This means that more information about the Contracting Party in question can be seen if you click on the country code. The information concerns notifications received from the national Office on the status of the international registration, for example a notification of provisional refusal of protection.
No. The registration certificate is issued once only.
However, upon payment of a fee, it is possible to ask the International Bureau for a detailed or simplified certified extract from the International Register. A detailed certified extract consists of an analysis of the situation of an international registration. It contains a photocopy of the international registration as originally published in the Gazette, with details of any subsequent changes, refusals, invalidations, corrections and renewals recorded in the International Register at the time the extract is prepared. A simplified certified extract consists of certified copies of all entries that have been published in the Gazette concerning the international registration and any notification of refusal received by the International Bureau at the time the extract is prepared.
As a general principle, once your trademark has been registered it should be used. If your mark is not put to use, its registration is liable to be cancelled on the application of a third party who can show that it has not been used. In most countries, a mark will not be so cancelled unless it can be established that there has been at least three years of non-use. In this context, it would be advisable to check the legal position in the country or countries for which your mark has been registered.
If, however, the owner of a mark can establish that, despite every intention to use the mark, he was prevented from doing so due to circumstances beyond his control, the mark may not be subject to cancellation.
I have appointed a representative for my international registration but I received correspondence directly at my address
Unofficial expiry notices indicating that an international registration will expire within six months are sent to the holder of the international registration as well as to the representative.
Some Offices make use of their national practices and address communications directly to the holders of international registrations prior to notifying the International Bureau. The International Bureau has no authority to prevent or stop the use of such practices and it is not within its competence to express an opinion as to their justification. Such practices fall outside the scope of the Madrid Agreement and Protocol and do not supersede in any way the procedures established by the Common Regulations.