International Trade Mark Registration
One trade mark registration based on a national mark, with designations in ninety-seven contracting parties.
Protecting and filing a trade mark through the International system.
International Trade Mark Registration
Under the Madrid System, one can file an International trade mark registration to protect Member States party to the Madrid Agreement and the Contracting Parties to the Madrid Protocol.
For example, if one is either a citizen, domiciled, has a place of business, or habitually resident in UK or European Community, under the Madrid Protocol you can use your national trade mark application or registration in a contracting party as the basis of an International Registration, and designate other contracting parties. This saves costs on applying for separate trade mark registrations in each of these countries.
Ninety-seven parties have signed the Madrid Protocol and fifty-five the Madrid Agreement, both administered by the International Bureau of World Intellectual Property Organization ["WIPO"] in Geneva, Switzerland.
International Trade Mark Protection
Scope and Validity
An International Registration [“IR”] is effective in Member States party to the Madrid Agreement and the Contracting Parties to the Madrid Protocol. It is valid for ten years and can be renewed indefinitely for periods of ten years.
A proprietor uses a national “home” application or registration and further countries can be designated and added to an International Registration through the Madrid Protocol as trade mark use expands into different territories, which is more cost-effective than obtaining, maintaining and renewing trade mark registrations in many countries. When new countries join the Madrid System, these too can be designated.
Once an International Registration has been registered for five years, it may be split up. One can retain the rights to some countries and sell those to others.
Level of Protection
An IR confers on its proprietor an exclusive right to use the trade mark and to prevent third parties to use, without consent, the same or a similar mark for identical or similar goods and/or services as those protected.
Enforcing Your Rights
A registration grants a proprietor an exclusive right to prevent unauthorized use of the mark in trade without his/her consent. More specifically, the proprietor is entitled to prevent unauthorized third parties from:
putting the registered mark onto their goods or packaging
offering goods, putting them on the market or stocking them for commercial purposes under the mark
offering or supplying services carrying the registered mark
importing or exporting goods under the mark; and
using the mark on business papers and in advertising
If an unauthorized third party engages in any of these practices, it is guilty of infringing the exclusive right of the proprietor and the proprietor can act against these infringements.
Filing an International Trade Mark Registration
The International Registration fee includes one Class of goods and/or services. There is a charge for each additional Class.
The forms that are sent to WIPO through your national Registry identify your trade mark, the goods and/or services that you wish to protect, the name and address of the legal owner of the mark and the designated country / countries.
WIPO sends the application to the designated countries, who apply national rules to determine whether the sign is registrable as a trade mark, that the goods and services have been correctly classified, and if there are any prior existing identical or similar national trade mark applications or registrations (if applicable).
If a designated country Registry raises any objections, you are given an opportunity to contest them.
Once the objections have been successfully overcome, your trade mark is published in the national Trade Marks Journal and advertised so that other parties may raise an objection to your mark. All objections must be resolved.
After your trade mark has passed through the advertisement stage and any objections have been satisfactorily determined, your mark will proceed to registration and a certificate issued.
