- What is the Madrid system?
- What are the advantages of the Madrid system?
- Does the Madrid system cover all countries worldwide?
- Who can use the Madrid system?
- What do I need to do if I want to protect my mark through the Madrid system?
- What is a Contracting Party?
- Where can I find the list of Contracting Parties that belong to the Madrid system?
- What is a basic mark?
- What is the Office of origin?
- What is a designation?
- What is a subsequent designation?
- If I register my mark, will I obtain protection for any and all goods and services?
- What is the Nice Classification?
- How many classes are there in the Nice Classification?
- Am I obliged to select only those indications of goods or services that are listed in the Nice Classification?
- What happens after I file my trademark application using the Madrid system?
- In the Madrid system, for how long can an international registration be protected?
- Can an applicant/holder use a trademark before it is recorded in the International Register and notified to the designated Contracting Parties?
- What is the International Register?
- Is the International Register officially published?
- Does WIPO maintain a database of international marks applied for or registered through the Madrid system?
- What do the codes in the Madrid Express and ROMARIN databases mean?
- What does the capital letter after the international registration number mean?
- How can I receive information of changes (Information Notices) affecting the Madrid system?
The Madrid system for the international registration of trademarks provides one single procedure for the registration of a mark in several territories. It is governed by two treaties, the Madrid Agreement and the Madrid Protocol, and is administered by the International Bureau of WIPO in Geneva, Switzerland.
- geographically, an applicant using the Madrid system can apply for protection of a mark in over 80 territories (“Contracting Parties”) by filing a single application in one language and by paying a single set of fees, instead of filing separate applications in the different IP Offices of the various territories;
- regardless of where the applicant wishes to protect his mark, using the Madrid system he will have to file his application in just one of the languages of the Madrid system, namely English, French or Spanish;
- if the Office of a Contracting Party does not notify a refusal within the time limit that is specified in the Madrid system, the mark will automatically enjoy protection in the Contracting Party in question;
- after the trademark has been registered through the Madrid system, the holder of the international registration can extend its geographical scope to additional Contracting Parties in a quick, simple and cost-effective manner;
- no matter how many Contracting Parties have been included in the international registration of a mark using the Madrid system, there will be just one single expiry date and the registration can be renewed simply (and also electronically) for all or any of the Contracting Parties included in the registration;
- administration costs such as translation of the list of goods and services and representatives fees are less, compared to several filings in national territories;
- generally, less delays are encountered, due to the use of a single administration;
- managing a trademark portfolio registered through the Madrid system, e.g. change in ownership, licensing, etc., is more cost-effective.
No. See Current members (“Contracting Parties”).
A person or a legal entity having the necessary ‘connection’ through an establishment, domicile or nationality of any Contracting Party, or of a Member State of an intergovernmental organization (the European Union).
In summary, once you have your mark applied for, or registered, in the territory through which you have the necessary connection (the “basic mark”), you can use that mark as the basis for filing an international trademark application with the International Bureau of WIPO.
In the international application form, you indicate (‘designate’) the Contracting Parties in which you want to protect your mark.
The term “Contracting Party” denotes any State which is party to the Madrid Agreement and/or the Madrid Protocol, as well as any intergovernmental organization (the European Union) which is party to the Madrid Protocol.
The Madrid system is founded on the requirement of a basic national or regional trademark application or registration.
Under the Madrid Agreement, an international application must be based on a mark that has already been registered (“basic registration”) in the trademark office of the territory through which you have the necessary connection (“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”).
The international application should include only goods and services covered by the basic application or registration.
The Office of origin is the trademark office of the Contracting Party with which the applicant for international registration has the necessary connection (through establishment, domicile or nationality) to be entitled to file an international application.
A “designation” means an indication (by ticking a box) in the international trademark application form, of one or more Contracting Parties where it is intended to apply for protection of your mark.
A “subsequent designation” means an extension of the geographical scope of protection after the mark has already been registered. A subsequent designation is made by completing the appropriate form, indicating therein the additional Contracting Parties for which protection is sought.
In principle, your mark will be protected only for those goods and/or services which were mentioned in your application. You will need also to classify the goods and/or services according to the International Classification of Goods and Services (“the Nice Classification”).
The Nice Classification is a system for the international classification of goods and services and comprises about 10,000 indications referring to goods (such as chemicals, pharmaceuticals, machinery, scientific equipment, vehicles, textiles, household utensils, games, food and drink) and 1,000 indications referring to services (such as advertising, telecommunications, transport, entertainment, medical, legal and security services).
The current edition of the Nice Classification includes 34 classes of goods and 11 classes of services.
Am I obliged to select only those indications of goods or services that are listed in the Nice Classification?
No. You are free to indicate goods and/or services as you wish, provided that you correctly classify those goods and/or services in accordance with the Nice Classification. However, in order to minimize the risk of irregularities, it is advisable to use, as far as possible, indications that exist in the Nice Classification.
The International Bureau of WIPO checks if the international application complies with formal requirements. If it does, the International Bureau records the mark in the International Register. It informs the Office of origin and sends a certificate of the international registration to the holder of the mark or to his recorded representative. It also notifies the Contracting Parties, which have been designated in the application, of the international registration. The trademark Offices of those Contracting Parties then examine the mark and either protect it or refuse protection.
An international registration is initially protected for 10 years and protection can be renewed indefinitely. Each renewal is made for a further 10 years.
Can an applicant/holder use a trademark before it is recorded in the International Register and notified to the designated Contracting Parties?
Yes, however neither protection nor registration of the trademark is guaranteed.
The International Register contains details of all international registrations recorded by the International Bureau of WIPO and all other relevant data, such as renewals, subsequent designations and changes or other entries affecting the international registrations.
No. The International Register, as such, is not published, but the International Bureau publishes every week the WIPO Gazette of International Marks, which is the official publication of the Madrid system.
Does WIPO maintain a database of international marks applied for or registered through the Madrid system?
WIPO does not maintain a worldwide database of all trademark registrations regardless of country or system used. To find out if a trademark already exists in a particular country, you should contact the relevant national Office. You may also wish to contact a company or industrial property agent which carries out searches for trademarks in the International Register and in a variety of national or regional registers. Copies of advertisements by such companies are inserted in the weekly “WIPO Gazette of International Marks”.
The codes (known as Standard ST.60) are aimed at improving access to information relating to the bibliographic data of a trademark. The meaning of each code can be seen at the bottom of the screen if the mouse arrow is left on the code for a few seconds.
If a partial change in ownership of an international registration is recorded, the goods and services and the designated Contracting Parties that are the subject of the change in ownership will be cancelled from the international registration and transferred as a separate international registration, which will bear the same number as the original international registration followed by a capital letter.
Example: international registration No. 123 456 designates AU, BX and IT. A partial change in ownership concerning only the designation AU is recorded. International registration No. 123 456 now covers the designations BX and IT while a new international registration No. 123 456A covers only the designation AU.
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