International trademark registration under the Madrid system

What is the Madrid System?

The Madrid System for the International Registration of Trademarks currently allows you to register your trademark in 124 countries by filing a single application with the International Bureau of WIPO, paying a single fee. Trademark protection under the international system is perpetual, subject to payment of renewal fees every 10 years.

The Madrid system is the most economical and expeditious way of protecting a trademark in the territory of several states without having to consult the National Offices of the countries where the business interests of the right holder are located.

The application to WIPO IB is submitted through Rospatent (FIPS) with advance payment of the registration and mailing fees. After the check the documents are sent to the International Bureau which makes registration of the mark in the International Register, notification of the countries where protection is sought, examination of the application at each national office, and publication of the information in the bulletins of the corresponding countries and in the WIPO database. The applicant receives an electronic registration certificate.

Entities and entrepreneurs, (and in some countries (not in Russia) also citizens of the states which are parties to the Madrid Agreement (55) and/or the Madrid Protocol (52) have the right to make an application. Russia is a party to both treaties. The most popular countries of the Madrid system for Russian entrepreneurs are the United States, China, EU countries and former CIS countries.

Advantages and disadvantages of registering under the Madrid system

The main advantages are:

• Centralized filing in English, French or Spanish; in the case of national filings, translation into the language of each specific country is required. The certificate is valid (in case of proper request and payment of fees) in 124 countries, which account for more than 80% of the trade turnover.
• The list of countries can be supplemented at any time. To do this, it is sufficient to submit a single application on the MM4 form, specify the countries of interest and pay the fee.
• The registration may be renewed with a single application.
• The single fee after forwarding the application from Rospatent to WIPO which consists of the basic fee, the additional fee for each party to the treaty in which the applicant wishes to register the international trademark and for each class of goods (if the number of goods is more than three). This is more advantageous than obtaining certificates of national registration in each country separately. In case of positive decisions on registration, the national trademark registration fees are additionally paid.
• Clear terms of consideration of the application. Depending on the particular country, the term does not exceed 1 year or a year and a half. The term can be increased in case of request for additional information on the application. After the decision to register is made, the final fees must be paid.

The disadvantages of international registration under this system are:

• To file an international application, you need to have a national application for registration in your country or already have a registered trademark.
• For the first five years, the international registration depends on the basic one, i.e. the registration in Russia in our case. If the basic registration is challenged during this period, the registration under the Madrid system is also cancelled.
• Necessity to pay the registration fee and forward the application from Rospatent to WIPO.
• Only 124 countries have signed the Madrid Agreement; accordingly, only those countries are eligible for registration. Not every country in the world has signed this agreement.

Peculiarities and differences of Madrid and national registration.

Trademark registration provides the entrepreneur with protection of this object in Russia and abroad. At the moment, international protection is carried out in two main ways - under an international agreement recognized by several countries (under the Madrid system) and in the form of national registration of the object in a particular country.

There is also the registration of EUIPO - European trademark, valid for the EU countries, but the procedure is less popular, since the EU countries are also in the Madrid Agreement; their advantage - do not need a basic national registration or application).

Let's look at the features of each method.

Trademark registration under the Madrid system

The entrepreneur submits one application to the Federal Institute of Industrial Property, which forwards it to WIPO. The time for consideration of the documents is on average 12-18 months. However, it is possible to extend the deadline in case additional materials have to be submitted. Advantages of this method:

• Submitting the application through the Russian authority (Rospatent) greatly simplifies the procedure.
• Only one application is submitted in English, French or Spanish, without the need to translate it into each national language.
• Payment of a one-time fee upon filing the application contributes to economic efficiency.
• It is possible to renew in all the countries applied for at one time.
• Legal protection is provided in several countries.
• Period of validity of the protection document is the same for all states providing it.

Features of national registration

If you plan to do business in only one or several countries, including those that are not party to the Madrid Agreement, you can apply to the patent office of the individual country. You do not have to be registered in Russia for this method, unlike the previous method. A significant advantage is the reduction of the amount of paperwork when registering the subject matter in only one country.

The main disadvantage - if you want to register in several countries, will have to submit several applications, paying for each state fee. In addition, the application must be filed in the national language of the country in which it is filed, with the help of a local patent attorney, which significantly increases the costs. Each office has its own peculiarities, which must also be taken into account when filing.

The national registration procedure in each country is slightly different and will be appropriate if registration in one or more countries is needed, there is no need/ability to obtain a basic registration, the countries of interest are not included in the list of those participating in the Madrid system.

What does it mean to depend on the basic trademark?

After the international registration, the registered designation is dependent on the basic registration for 5 years. This means that if the basic mark is terminated, the international registration is also terminated. This can happen in the case of litigation in the case, by decision of the patent office of the country or at the voluntary will of the owner.

The patent office is required to notify the International Bureau in case of cancellation of the basic trademark. This information is published in the official gazette and is sent in the form of a notification to all countries in which legal protection of the mark was in force.

After the expiry of the five-year period, the international registration of the mark is independent of the national application and registration, and the trademark certificate is valid even in case of cancellation in the applicant's country of registration (country of origin).

How does one apply for a Madrid registration of marks? Rules for filing

The Madrid system allows you to register a trademark in 124 countries with a single application. The list of member states is gradually expanding; the current list is available on the official WIPO website.

Before applying to WIPO you need to file a basic application for a certificate in the country where the legal entity or individual entrepreneur is registered (in Russia the designation is registered in Rospatent).

The international application is made according to the following rules:

• the application is submitted on the official form MM2 to the patent office of the country of origin - in Russia it is FIPS;
• it lists the classes of the Nice Classes;
• there is a picture of the mark identical to the one in the basic application;
• information on the countries to be protected and on the applicant is required;
• a document on payment of the examination fee is attached;
• other information specified in Rule 9 of the Common Regulations under the Madrid Agreement;
• for some countries (e.g., the United States of America) an additional declaration of intent must be filed.

What is a basic application?

A basic application is an application filed for a trademark registration, with the office of the country of origin, which is a party to an international agreement or protocol.

According to the rules of the Madrid system, an international application can be filed only after the filing of a basic application in the country of origin or registration of the trademark. Without a basic application, it is not possible to register a trademark internationally, as it is the basis for all subsequent actions.

Stages of international trademark registration under the Madrid system

The Office of Origin, where the application is registered, interacts with the member states of the Madrid Agreement and Protocol. The World Intellectual Property Organization receives all documents through Rospatent's employees.

Step-by-step registration procedure

• Collection of documents (cover letter with requisites, filled-in official MB WIPO form in English, Spanish or French, receipts for payment of fees, power of attorney in case of representative).
• Submission of documents and the application to Rospatent in paper form accompanied (optionally) by an optical carrier or a flash-card with the completed forms MM2 and MM17/MM18, as the case may be (the forms are to be downloaded from the Rospatent website. Since 2021 the application can also be filed electronically via the "Personal Cabinet" service at Rospatent's website, provided you have an electronic key. After the application is verified, the Russian office forwards it to WIPO.
• Formal examination at WIPO, registration of the application, notification of the countries mentioned in the application.
• Registration of the trademark in the case of a positive decision. The entry is made in the International Register.

The registration of an international trademark is published in the official gazette and a certificate is sent to the applicant.

National patent offices may issue a total or partial refusal. They inform WIPO, which forwards the documents to the applicant.

What fees must be paid?

The basic fee is CHF 653 for a single-color trademark or CHF 903 for a color trademark (at the start of 2021). There is also an additional fee, the amount of which varies from state to state, and an additional fee for the classes of the ICTR.

Consideration of documents in FIPS is paid separately in the amount of 4900 rubles, and for each class of the ICTR over three additional 400 rubles will be required.

After the decision to register a trademark is made, the final fees for registration are paid, the amount of which depends on the states in which protection of the designation is sought.

Duration of international protection

International legal protection is unlimited in time, provided that the corresponding application is filed with the WIPO IB and the fee is paid every 10 years. Approximately 6 months before the expiry of the protection, the applicant is notified and before the expiry date the fee must be paid and the corresponding renewal application must be submitted in Form MM11.

But it is advisable to start the renewal procedure itself one year in advance, because if it is missed, it can only be reinstated within an additional 6 months with a 50% increase in the fees.

Can changes be made to the International Trademark Registry?

The standards of the Madrid system permit the following changes:

• information about the personal data of the applicant and its change - the name, address of the owner, the transition of rights;
• limitation of the list of goods and services, expansion is not allowed;
• information about the license;
• information about the representative;
• renunciation of international registration;
• cancellation of registration.

In order to make the above changes, the owner of the mark must send the corresponding application to the International Bureau and pay the fee. The Madrid system is a convenient way to legally protect intellectual property. The registration procedure is much simpler than in each individual state. Individual entrepreneurs and legal entities through their representatives through Rospatent interact with the international bureau.

The registration procedure itself is quite complicated, so it is best to seek the assistance of patent attorneys at Pervoistok in this matter in order to reduce the possibility of prior denial of registration.