Madrid Protocol / International Trade Marks

The Madrid Protocol allows a single application to cover a large number of different countries (List of Countries). The charges for filing a Madrid Protocol application are dependent largely upon the countries and classes required. An estimate can be provided once the countries of interest are known. A list of countries which are signatories to the Madrid Protocol can be found on the World Intellectual Property Organization (WIPO) website.  

Under the Madrid Protocol there must be a 'home' trade mark registration or application, for example the UK. The application designates those signatory countries for which protection is required. Once filed, the mark is registered on the International Register and details of the mark are sent to the national office in each of the designated countries. During the following 18 months, objections can be raised against the application in a particular designated country, either by the national office of that country or as a result of opposition.  

If an objection raised against the registration in a designated country cannot be overcome, then the registration in that country will be refused. However, this will not affect the registration in any of  the other designated countries.  

It is an essential feature of the Madrid Protocol that the home application/registration survives for a period of at least five years after the date of registration of the Madrid Protocol application. If the home application/registration is lost, the Madrid Protocol registration can be transformed into separate national applications, which will be dealt with as outlined above. This will result in the loss of cost and administrative convenience.  

Madrid Agreement applications

A similar system to that of the Madrid Protocol is the Madrid Agreement. It is available to applicants who are nationals of, resident in, or have a genuine place of business in one of the Madrid Agreement countries. The UK is not a member country. To request further information Click Here

 

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