The International Application

Substantive Requirements

Basic Registration or Application

01.01 The Madrid system is founded on the requirement of a basic national or regional registration or application for registration. Under the Agreement, an applicant for the international registration of a mark must have already obtained registration of the mark in the country of origin (basic registration). Under the Protocol, an international application may be based on either a registration with the Office of origin (basic registration) or on an application for registration filed with that Office (basic application). The international application may relate only to goods and services covered by the basic application or registration.

The Office of Origin

02.01 Before filing an international application, the potential applicant must establish which Office or Offices may be the Office of origin for the international application in question. This will depend on whether the international application will be governed by the Agreement or by the Protocol or by both - which, in turn, depends on which Contracting Parties are to be designated (see paragraphs B.II.03.01 to 03.03).

Rule 1(viii), (xxv)
and (xxvi)
A Article 1(3)

02.02 To the extent that an international application is governed by the Agreement, the Office of origin is defined as the Office in charge of the registration of marks in, or on behalf of, the applicant's country of origin. The applicant's country of origin is defined (Article 1(3) of the Agreement) as:

(a) Any country, party to the Agreement, in which he has a real and effective industrial or commercial establishment; or

(b) if he has no establishment in such a country, the country, party to the Agreement, in which he has his domicile; or

(c) if he has neither an establishment nor a domicile in such a country, the country, party to the Agreement, of which he is a national.

The applicant must follow this so-called ‘cascade'; he therefore does not have a free choice of Office of origin. He cannot, for example, base his international application on a registration in the country of his domicile if, in fact, he has an industrial or commercial establishment in another country which is a party to the Agreement.

P Article 2(1)(i)
Rule 1(ix), (xxv) and (xxvi)
P Article 2(1)(ii)
P Article 2(2)

02.03 In contrast, where the international application is governed exclusively by the Protocol, no such cascade applies. "Office of origin" is defined (Article 2(2) of the Protocol) in a way which means that the applicant may freely choose his Office of origin on the basis of establishment, domicile or nationality, it being understood that there can be only one Office of origin. Thus, in the case of the Office of a country, an international application may be filed by anyone who is a national of that country or is domiciled or has a real and effective industrial or commercial establishment in that country. In the case of the Office of a Contracting Organization, an international application may be filed by anyone who is a national of a member State of that organization or who is domiciled or has a real and effective industrial or commercial establishment in the territory of that organization.

What Kind of International Application?

Rule 1(viii)

Rule 1(ix)

Rule 1(viii), (ix) and (x)

03.01 Three kinds of international application are possible. An international application may be (a) governed exclusively by the Agreement, (b) governed exclusively by the Protocol, or (c) governed by both the Agreement and the Protocol, depending on which treaty or treaties (Agreement or Protocol) are applicable to, on the one hand, the Office of origin and, on the other, the Contracting Parties designated in the application (see also paragraphs A.02.16 to 02.25). The principles are as follows:

03.02 It is important for an applicant to know into which of these categories his application falls, since this determines such matters as the form to be used and the fees which are payable. Moreover, where the international application will be governed exclusively by the Agreement or by both the Agreement and the Protocol it must be based on a registration (as distinct from an application) with the Office of origin.

03.03 To summarize:

Several Applicants

Rule 8

04.01 Two or more parties (whether natural persons or legal entities) may jointly file an international application, provided that the basic application or registration is also jointly owned by them, and that

Presentation of the International Application

A Article 1(2)
P Article 2(2)
Article 8(1)

Language of the International Application

Rule 6(1)

06.02 An international application which does not comply with these requirements concerning language will not be considered as such by the International Bureau, which will return it to the Office which forwarded it, without examining the application in any way and all fees paid will be reimbursed to the party which effected such payment.

The Application Form

Rule 9(2)(a)

07.01 An international application must be presented to the International Bureau on the official form.

Item 1: Contracting Party Whose Office Is the Office of Origin

08.01 The name of the State or intergovernmental organization whose Office is the Office of origin should be given, e.g. "Japan", "European Community ", etc. In the case of a common Office under Article 9quater of the Agreement or the Protocol, the name of the single State that the Contracting Parties concerned are deemed to constitute should be given, e.g. "Benelux".

Item 2: Applicant

Name

A.I. Section 12(a),
(b) and (c)

Address

Address for Correspondence

Phone and Fax Numbers: E-mail Address

Application in the Names of More than One Applicant

Preferred Language for Correspondence

Other Indications

Rule 9(4)(b)(i)
and (ii)

09.09 Such indications are not required by the Agreement, Protocol or Regulations, but may be included in the international application in order to forestall objections in designated Contracting Parties which require them.

Item 3: Entitlement to File

Rule 9(5)(a)

10.01 Where the international application is governed (in whole or in part) by the Agreement (and is therefore filed on form MM1 or MM3), the applicant should check only one of the boxes (i), (ii) and (iii) under item 3(a), in that order of priority. That is:

10.02 Where the international application is governed exclusively by the Protocol (filed on form MM2), the application should give one of the following indications concerning the applicant's connection with the Contracting Party through whose Office the international application is being presented, using the appropriate box or space in item 3(a):

Only one of these indications need be given, though more may be given if the applicant so wishes.

10.03 The Office through which the international application is presented may ask for evidence where it has reasonable grounds to doubt the veracity of the indications given. In general, it may be presumed that the address given in item 2(b) is the address of the applicant's establishment or domicile. Even if this address is in the territory of the Contracting Party through whose Office the international application is presented, it is still necessary to check at least one box under item 3(a); if this is not done, it is not possible to determine the nature of the applicant's entitlement to file.

Item 4: Appointment of a Representative

Rule 9(4)(a)(iii)
A.I. Section 12(d)

11.01 If the applicant wishes to be represented before the International Bureau, the name and address of the representative should be given in this part of the form. The information should be sufficient to enable correspondence to be sent to the representative, and should preferably include telephone and telefacsimile numbers and any e-mail address. (See also paragraphs B.I.09.01 to 11.02).

11.03 Giving the name and address of the representative in the international application is all that is necessary to effect his appointment; no power of attorney or other separate document should be sent to the International Bureau.

Item 5: Basic Registration or Basic Application

A Article 1(2)
P Article 2(1)

12.01 An international application which is governed (in whole or in part) by the Agreement must be based on the registration of a mark (or on several registrations of the same mark) by the Office of origin. An international application which is governed exclusively by the Protocol may be based either on a registration by the Office of origin or on an application for registration filed with that Office; equally, it may be based on several applications or registrations (or a combination thereof).

Article 3(1)
Rule 9(5)(a) and (b)

Item 6: Priority Claimed

Article 4(2)

13.01 Priority of an earlier filing may be claimed under Article 4 of the Paris Convention. That earlier filing will normally be the basic application or the application which resulted in the basic registration. However it may also be:

Rule 9(4)(a)(iv)

13.02 Where priority is claimed, there must be indicated the name of the national or regional Office with which the earlier filing was made, together with the date of filing and (where available) the number of the application. No copy of the earlier filing is needed.

Item 7: The Mark

Rule 9(4)(a)(v)

14.01 A reproduction of the mark must be provided in box (a) in item 7 of the form. Such a reproduction must consist of a two-dimensional graphic (including photographic) representation of the mark. This reproduction must be identical with the mark as it appears in the basic application or registration. In particular, where the mark in the basic registration or application is in black and white, so must the reproduction in this box; likewise where the basic mark is in color, the reproduction in this box must also be in color.

14.04 The reproduction(s) of the mark may be typed, printed, pasted or reproduced by any other means, at the option of the applicant and subject to what may be prescribed by the Office of origin. Since the image used for publication is produced by scanning the application form, the mark will be published in the Gazette exactly as it appears on the form. For example, if it is simply typed on the form, that is what will appear in the Gazette.

A.I. Section 9(a)

A.I. Section 9(b)

Special Kinds of Mark

International Registration to Be in Color

Article 3(3)
Rule 9(4)(a)(vii)

Standard Characters

Item 8: Color(s) Claimed

Article 3(3)
Rule 9(4)(a)(vii)

Rule 9(4)(b)(iv)

14.11 Where color has been claimed as a distinctive feature of the mark in the basic application or basic registration, such a claim should be reflected in the international application by checking the appropriate box, and the color or combination of colors must be indicated in words. Color may also be claimed in an international application despite the fact that there is not a corresponding claim in the basic application or basic registration. Where there is no such claim in the basic application or basic registration, the basic mark must be in the color or combination of colors claimed in the international application. Finally, where color is claimed, the applicant may, in addition, give an indication in words of the principal parts of the mark that are in that color, in respect of each of the colors claimed (see also paragraph B.II.19.02).

Item 9: Miscellaneous Indications

(a) Transliteration

Rule 9(4)(a)(xii)

15.01 Where the mark consists of or contains matter in characters other than Latin characters, or numerals other than Arabic or Roman numerals, a transliteration into Latin characters or Arabic numerals must be provided. The transliteration into Latin characters must follow the phonetics of the language of the international application.

(b) Translation

Rule 9(4)(b)(iii)

Rule 6(4)(b)

(c) Indication that the Mark Cannot Be Translated

(d) Special Type or Category of Mark

Rule 9(4)(a)(viii) to (x)

(e) Description of the Mark

(f) Verbal Elements of the Mark

(g) Disclaimer

15.10 It does not matter if there was no corresponding disclaimer in the basic registration or basic application. Conversely, if there was a disclaimer in the basic registration or basic application, this does not make it obligatory to include it in the international application. There is not any possibility for the making of a disclaimer once the mark has been registered by the International Bureau.

Item 10: Goods and Services for which International Registration Is Sought

Rule 9(4)(a)(xiii)

16.02 This list of goods and services may be narrower than the list in the basic registration or application. It may not however be broader or contain different goods and services. This does not mean that exactly the same terms must be used; the terms used in the international application must however be equivalent to, or fall within the scope of, those used in the basic registration or application.

Item 11: Designated Contracting Parties

Rule 9(4)(a)(xv)

17.01 Those States or organizations in which the applicant wishes the mark to be protected should be indicated by checking the appropriate boxes in item 11. Where a self-generated form is used, the names of the Contracting Parties to be designated should be written in.

17.04 Only States or organizations which are party to the same treaty (Agreement or Protocol) as the Contracting Party whose Office is the Office of origin may be designated. Where a State or an organization which the applicant has designated

the designations will be disregarded by the International Bureau, which will so inform the applicant.

Indication of a Second Language (Where the European Community Is Designated)

17.05 Where the European Community is designated in an international application, the applicant must, in addition to the language of the application itself, indicate a second working language before the Office of that Contracting Organization. The indication of this second language must be chosen among one of the (five) official languages of OHIM, namely, English, French, German, Italian or Spanish. With regard to the designation of the European Community in a subsequent designation, refer to paragraph B.II.43.09.

Seniority Claim (Where the European Community Is Designated)

17.09 Applicants wishing to claim seniority in respect of a designation of the European Community under the Madrid Protocol are required to indicate the following elements in a separate official form (MM17), to be annexed to the international application form:

Declaration of Intention to Use the Mark

17.12 In the case of a Contracting Party which requires a declaration of intention to use the mark under Rule 7(2), but without requiring that it be on a separate form, no special action is needed, as the statement on the international application form indicates that by designating such a Contracting Party, the applicant declares that he has the intention that the mark will be used by him or with his consent in that Contracting Party for the goods and services covered by the international application.

Item 12: Signature by Applicant or Representative

Rule 9(2)(b)

18.01 The Office of origin may require or permit the applicant or his representative to sign the international application. The International Bureau will not question the absence of a signature from item 12.

Item 13: Certification and Signature by Office of Origin

Rule 9(2)(b)
Rule 9(5)(d)

19.01 The Office of origin must sign the international application and must certify the date on which it received the request to present the international application (or is deemed to have received the application (see paragraphs B.II.21.02 and 21.04)). This date is important because, in principle, it will become the date of the international registration (see paragraph B.II.28.01). The Office of origin must also certify certain facts concerning the relationship between the international application and the basic registration or basic application.

Rule 9(5)(d)(ii)

Rule 8

Rule 9(5)(d)(iv)

Rule 9(5)(d)(iii)

Rule 9(5)(d)(v)

Rule 9(5)(d)(vi)

19.02 The declaration of the Office of origin in item 13 of the application form must certify:

(a) that the applicant for the international registration is the same as the holder of the basic registration or the applicant named in the basic application mentioned in item 5; where the international application is filed jointly by several applicants, they must all also be joint holders of the basic registration or applicants for the basic application;

(b) that the mark indicated in item 7 is identical to the mark in the basic registration or application mentioned in item 5; where the Office of origin allows a mark to be altered (whether during the application stage or after registration), the declaration may be made provided that the mark that is the subject of the international application is identical to the mark in the basic registration or application at the time when the Office certifies the international application;

(c) that, where any of the following indications appears in the international application:

- an indication that the mark is a three-dimensional mark, a sound mark or a collective, certification or guarantee mark;

- a description, in words, of the mark;

- an indication that the mark consists of colors or a combination of colors, as such

the same indications appear also in the basic registration or application (it being understood that any description in the international application must however be in the language of the international application);

(d) that, if color is claimed as a distinctive feature of the mark in the basic application or the basic registration, the same claim is included in the international application or that, if color is claimed as a distinctive feature of the mark in the international application without having being claimed in the basic application or basic registration, the mark in the basic application or basic registration is in fact in the color or combination of colors claimed;

(e) that the goods and services indicated in the international application are covered by the list of goods and services appearing in the basic registration or application at the time when the Office certifies the international application; that is, each of the goods and services mentioned in the international application must either appear in the list in the basic registration or application, or must fall within a broader term included in that list; the list of goods and services in the international application may of course be narrower than that in the basic application or registration.

Rule 9(2)(b)
A.I. Section 7

Fee Calculation Sheet

Rule 9(4)(a)(xiv)

20.01 There must be indicated, in the fee calculation sheet contained in the official form:

Fees Due

Article 8(2)

20.03 Article 8(2) of the Agreement and Article 8(2) of the Protocol provide that the fees payable in connection with an international application consist of:

20.06 In summary, the fees payable for an international application are:

Fee Reduction for Applicants from Least Developed Countries

20.08 Applicants having a real and effective industrial or commercial establishment, or a domicile in a least developed country, or being a national of a least developed country (in accordance with the list established by the United Nations), and who file their international applications through the trademark office of such country, as the Office of origin, will be required to pay only 10% of the amount of the basic fee. This is reflected in the Schedule of Fees and has been incorporated in the fee calculator on the Madrid website ( http://www.wipo.int/madrid/feecalc/ ).

Payment by Debit from an Account with the International Bureau

Payment Otherwise than by Debit from an Account with the International Bureau

20.12 The identity of the party (applicant, representative or Office of origin) making the payment should be indicated in the appropriate space in part (b) of the fee calculation sheet. It is important to indicate who is making the payment, since it is that party that will be notified if the International Bureau finds that the payment is insufficient or that will be totally or partially reimbursed if the application is considered as abandoned, is not considered as such, or is withdrawn.

Premature Request for International Application

21.01 Under the Agreement, an international application can be based only on a registration of the mark recorded in the register of the Office of origin. Where an Office receives a request to present an international application that will be governed (exclusively or in part) by the Agreement, before it has registered the mark on which the international application is based, the Office will treat the request as premature. It will be dealt with as follows.

Rule 11(1)(a)

21.02 Where the international application will be governed exclusively by the Agreement, there is no possibility of it proceeding in respect of any of the designated countries until the basic mark has been registered. The Office of origin will therefore put the international application aside until it has registered the basic mark. The request is then deemed to have been received on the date on which the basic mark was actually recorded in the register of the Office of origin. Under the Agreement, this is a frequent practice. Applicants in States whose Offices register applications for protection in their territory relatively quickly, or whose laws provide for an accelerated procedure where the applicant intends to file an international application on the basis of the national registration, sometimes find it convenient to send to the Office of origin, on the same day, an application for the basic registration and a request to present an international application to the International Bureau once the basic mark is registered.

Rule 11(1)(b)

Rule 11(1)(c)

Irregularities in the International Application

22.01 Whenever the International Bureau considers that there is an irregularity in an international application forwarded to it, it will communicate this fact both to the Office of origin and to the applicant. Whether the responsibility for remedying it lies with the Office or with the applicant will depend on its nature.

22.02 There are three distinct kinds of irregularity, the remedying of which follow different Rules. These are:

- irregularities with respect to the classification of goods and services;

- irregularities with respect to the indication of goods and services;

- other irregularities.

Irregularities with Respect to the Classification of Goods and Services

23.01 Final responsibility for the classification and grouping of goods and services as listed in the international application lies with the International Bureau, although the International Bureau must try to resolve any disagreement with the Office of origin. In so doing, it will, by supplying appropriate information to the applicant, give him the possibility of intervening with that Office.

Rule 12(1)(a)
A Article 4(1)
P Article 4(1)(b)

23.02 If the International Bureau considers that the goods and services are not grouped in the appropriate class or classes, or if they are not preceded by the number of the class or classes, or if that number is not correct, it will make its own proposal, which it notifies to the Office of origin and copies to the applicant. Where a particular product or service could be classified in more than one class but only one of the applicable classes has been indicated, the International Bureau will not regard this as an irregularity. It will be assumed that the reference is only to the product or service falling in that class. Such an interpretation does not, however, bind a designated Contracting Party with regard to the determination of the scope of the protection of the mark.

23.04 The procedure following this notification is entirely the responsibility of the International Bureau and of the Office of origin. The information given to the applicant enables him to intervene with the Office of origin. The International Bureau cannot however accept proposals or suggestions directly from the applicant.

Rule 12(4) to (6)
Rule 12(7)(c)

23.08 Any additional fees that may have to be paid as a consequence of the proposed reclassification must be paid:

If these fees are not paid within the period prescribed, the international application will be considered abandoned. In that case, the International Bureau will notify the Office of origin and inform the applicant accordingly. If the applicant decides to withdraw one or more classes from the international application instead of paying additional individual or supplementary fees, such decision should be communicated to the International Bureau by the Office of origin.

Rule 12(9)

23.11 Where the International Bureau has made a proposal for the classification and grouping of the goods and services, it will, whether or not an opinion on the proposal has been communicated by the Office of origin, register the mark with the classification and grouping that it considers to be correct.

Irregularities with Respect to the Indication of Goods and Services

Rule 13(1)

24.01 If the International Bureau considers that a term used in the list of goods and services is too vague for the purposes of classification, is incomprehensible, or is linguistically incorrect, it will notify the Office of origin and inform the applicant at the same time. It may suggest either a substitute term or the deletion of the term.

Other Irregularities

25.01 Certain irregularities can only be remedied by the Office of origin and not by the applicant, while for others, the Regulations provide for either the Office or the applicant to rectify the irregularity.

Irregularities to be Remedied by the Office of Origin

Rule 11(4)

25.02 There are a number of irregularities which have to be remedied by the Office of origin within three months after notification, failing which the international application will be considered abandoned, and the Office of origin will be notified accordingly. The applicant will be informed of any such notification.

25.03 Remedying of the following irregularities is the responsibility of the Office of origin, since an international application containing such defects should not have been forwarded to the International Bureau by that Office:

(a) application not presented on the correct official form, or not typed or otherwise printed, or not signed by the Office of origin;

(b) in the case of an application sent to the International Bureau by fax, the original of the page bearing the mark has not been received (see paragraph B.I.02.06);

(c) irregularities concerning the entitlement of the applicant to file the international application; for example, on the face of the information contained in the application, the applicant does not appear to fulfill the conditions in Article 1(3) of the Agreement or, as the case may be, Article 2(1) of the Protocol with regard to the Office of origin through which the application was filed (see paragraphs B.II.02.02 and 02.03); this would be the case if, for example, the applicant has indicated (in item 3(a)) that he has an establishment or domicile in the territory of the Contracting Party whose Office is the Office of origin, while his address (given in item 2(b)) is not in that territory, but no address has been given under item 3(b) (see paragraph B.II.10.04), or the address given is also not in that territory; or the applicant's address is in the territory of that Contracting Party but it has not been indicated whether the applicant's entitlement is based on an establishment or a domicile;

(d) one or more of the following elements is missing from the application as received by the International Bureau:

- indications allowing the identity of the applicant to be established and sufficient to contact him or his representative;

- indications concerning the applicant's connection with the Office of origin (see paragraphs B.II.10.01 to 10.05);

- the date and the number of the basic registration or the basic application;

- a reproduction of the mark;

- the list of goods and services for which registration of the mark is sought;

- an indication of the Contracting Parties designated;

- the declaration by the Office of origin (see paragraph B.II.19.02).

If, therefore, the International Bureau considers that the international application is irregular in any of the above respects, it will so notify the Office of origin, and at the same time inform the applicant.

25.04 Some of these irregularities are a straightforward matter for the Office of origin. Others might necessitate consultation with the applicant - for example, if the International Bureau considers that there are irregularities relating to the entitlement of the applicant to file an international application (see paragraphs B.II.10.03 and 10.04).

Irregularities which can be Remedied by the Office of Origin or by the Applicant

Rule 11(3)

25.05 This rule relates only to fees and contemplates only the case where the fees for the international application have been paid through the Office of origin. Where, in such a case, the International Bureau considers that the amount of fees received is less than the amount required, it will notify both the Office of origin and the applicant, specifying the missing amount. Normally, the Office of origin will leave it to the applicant to arrange for the necessary payment (either directly to the International Bureau or again through the Office). Alternatively the Office may itself pay the missing amount and make its own arrangements to recover the amount from the applicant. If the missing amount is not paid within three months from the date of the notification, the international application is considered abandoned and the International Bureau will notify both the Office and the applicant accordingly.

Irregularities which must be Remedied by the Applicant

Rule 11(2)(a)

25.06 If the International Bureau considers that there is any irregularity other than those listed for remedying by the Office of origin, or by the Office of origin or the applicant, such irregularity must be remedied by the applicant. In such a case, the International Bureau will notify the applicant and at the same time inform the Office of origin. Such irregularities may, for example, relate to the following:

Irregularities Concerning a Declaration of Intention to Use the Mark

Rule 11(6)(a)
Rule 11(6)(b)

25.10 Where a Contracting Party that has been designated under the Protocol is one which requires a declaration of intention to use the mark which is on a separate form annexed to the international application and the International Bureau finds that the declaration is missing or does not comply with the applicable requirements, the International Bureau will promptly notify the applicant and the Office of origin. Provided that the missing or corrected declaration is received by the International Bureau within a period of two months from the date on which the request to present the international application was received by the Office of origin, the declaration will be deemed to have been duly filed, and the date of the international registration will be unaffected by the irregularity.

Rule 11(6)(c)

25.11 If however the missing or corrected declaration is not received within that period, the designation of the Contracting Party in question will be deemed not to have been made. The International Bureau will so notify both the applicant and the Office of origin and will reimburse any fee paid in connection with the designation of that Contracting Party. The International Bureau will also point out that the designation in question may be effected as a subsequent designation, provided that such designation is accompanied by the required declaration of intent to use.

Registration, Notification and Publication

Rule 14(1)

26.01 Where the International Bureau finds that the international application conforms to the applicable requirements, it registers the mark in the International Register. It also notifies the Offices of the designated Contracting Parties of the international registration, informs the Office of origin and sends a certificate to the holder. Where however the Office of origin so wishes and has informed the International Bureau accordingly, the certificate will be sent to the holder through the Office of origin. The certificate of international registration is not considered to be a notification and will always be in the language of the international application even if the applicant has expressed the wish referred to in paragraph B.II.09.07.