International Trademark Registration (WIPO)
The Madrid System facilitates the filing and protection by a single International Trademark Registration request (IR), covering a large number of industrialized countries around the world, currently up to 100 states, including Spain and the whole European Union, being much more cost-effective than seeking protection separately in each individual country. It is a centralised system for obtaining trademark registration in multiple national Offices which you designate, just based on a single basic trademark application or registration in the Office of Origin, either national (a Spanish Trademark or in any other country party to the Madrid System) or with the regional office EUIPO (a European Union Trade Mark).
The registration of International Trademarks is managed by the World Intellectual Property Organization (WIPO), based in Geneva, Switzerland and the Madrid System is governed by the two following treaties:
The Madrid Agreement. For countries which signed only the Agreement, which are a small minority of countries requiring definitive registration of your trademark in your country of origin. These countries may be chosen by paying a very attractive and flat designation fee (a supplementary or complementary fee).
The Madrid Protocol. For contracting parties which signed the Protocol, being the majority, would just requirethat your trademark application is filed in your Office of origin, if it has not been registered yet. These states or regions may be covered by paying a different individual designation fee, although reasonable,which is determined by the Office in question.
The following list of countries that ratified the Madrid Agreement and Protocol, which can be designated by an International Trademark, is continuously growing. -Status on October3, 2017-
|National/Regional Office. (Total 100)||Continent||State Party to the Agreement (55) and/or Protocol (100)|
|OA (OAPI) African Intellectual Property Organization||Africa-OA||(P)|
|OA-BF Burkina Faso||Africa-OA||(0)|
|OA-CF Central African Republic||Africa-OA||(0)|
|OA-CG Congo, Dem. Rep. of the||Africa-OA||(0)|
|OA-CI Côte d’Ivoire – Ivory Coast||Africa-OA||(0)|
|OA-GQ Equatorial Guinea||Africa-OA||(0)|
|SL Sierra Leone||Africa||(A+P)|
|AG Antigua and Barbuda||America, Central||(P)|
|CO Colombia||America South||(P)|
|MX Mexico||America, North||(P)|
|ST Sao Tome and Principe||America, Central||(P)|
|US United States of America||America, North||(P)|
|BH Bahrain||Asia, M.East||(P)|
|CN China (Does not include Hong Kong or Macao)||Asia||(A+P)|
|IL Israel||Asia, M.East||(P)|
|IR Iran (Islamic Republic of)||Asia, M.East||(A+P)|
|KP Democratic People’s Republic of Korea||Asia||(A+P)|
|KR Republic of Korea||Asia||(P)|
|LA Lao People’s Democratic Republic||Asia||(P)|
|OM Oman||Asia, M.East||(P)|
|SY Syrian Arab Republic||Asia, M.East||(P)|
|TR Turkey||Asia, M.East||(P)|
|EUTM (EUIPO) European Union Trade Mark||EU||(P)|
|EUTM-BE Belgium (Benelux)||EU||(A+P)|
|EUTM-CZ Czech Republic||EU||(A+P)|
|EUTM-DK Denmark (Includes GL Greenland and FO the Faroe Islands)||EU||(P)|
|EUTM-FR France (Includes all Overseas Departments and Territories)||EU||(A+P)|
|EUTM-GB United Kingdom (Includes IM the Isle of Man)||EU||(P)|
|EUTM-LU Luxembourg (Benelux)||EU||(A+P)|
|EUTM-NL Netherlands (Benelux)||EU||(A+P)|
|BA Bosnia and Herzegovina||Europe||(A+P)|
|MD Republic of Moldova||Europe||(A+P)|
|MK Macedonia (The former Yugoslav Republic of)||Europe||(A+P)|
|RU Russian Federation||Europe||(A+P)|
|SM San Marino||Europe||(A+P)|
|NZ New Zealand||Oceania||(P)|
This system cannot be used to protect a mark in a country outside the Madrid Union.
The following countries are not party to the Madrid Union so you must seek trademark protection separately in each, individually.
|Countries/National Offices which must be protected separately||Continent|
|CV Cape Verde||Africa|
|EH Western Sahara||Africa|
|ZA South Africa||Africa|
|AI Anguilla||America, Central|
|AW Aruba||America, Central|
|BB Barbados||America, Central|
|BM Bermuda||America, Central|
|BS Bahamas||America, Central|
|BZ Belize||America, Central|
|CR Costa Rica||America, Central|
|CW Curaçao||America, Central|
|DM Dominica||America, Central|
|DO Dominican Republic||America, Central|
|GD Grenada||America, Central|
|GT Guatemala||America, Central|
|HN Honduras||America, Central|
|HT Haiti||America, Central|
|JM Jamaica||America, Central|
|KN Saint Kitts and Nevis||America, Central|
|KY Cayman Island||America, Central|
|LC Saint Lucia||America, Central|
|MS Montserrat||America, Central|
|NI Nicaragua||America, Central|
|PA Panama||America, Central|
|SV El Salvador||America, Central|
|SX Sint Maarten||America, Central|
|TC Turks and Caicos||America, Central|
|TT Trinidad and Tobago||America, Central|
|VC Saint Vincent and the Grenadines||America, Central|
|VG British Virgin Islands (UK)||America, Central|
|CA Canada||America, North|
|AR Argentina||America, South|
|BO Bolivia||America, South|
|BR Brazil||America, South|
|CL Chile||America, South|
|EC Ecuador||America, South|
|FK Falkland Islands||America, South|
|GY Guyana||America, South|
|PE Peru||America, South|
|PY Paraguay||America, South|
|SR Suriname||America, South|
|UY Uruguay||America, South|
|VE Venezuela||America, South|
|HK Hong Kong, Special Administrative Region of the People’s Republic of China||Asia|
|LK Sri Lanka||Asia|
|TW Taiwan, Province of China||Asia|
|AE United Arab Emirates||Asia, Middle East|
|AF Afghanistan||Asia, Middle East|
|IQ Iraq||Asia, Middle East|
|JO Jordan||Asia, Middle East|
|KW Kuwait||Asia, Middle East|
|LB Lebanon||Asia, Middle East|
|QA Qatar||Asia, Middle East|
|SA Saudi Arabia||Asia, Middle East|
|YE Yemen||Asia, Middle East|
|MP Northern Mariana Islands||Oceania|
|PG Papua New Guinea||Oceania|
Main points of International Trademark Registrations. If you want to protect your trademark in other foreign countries, this multiple designation system can be very useful and cost-effective, particularly when there are several countries of the Madrid Union involved, having in mind that the local filing fees would costly if you directly apply for your trademark in each individual country and follow the processes separately in each national Office.
Filing Language. An IR can be filed in any one of the three languages; English, French or Spanish.
Multi-Class Application. An international trademark may include as much classes as it has been included in the basic registration.
Centralised System. International Registrations under the Madrid System are managed by a single Office; the WIPO. After definitive registration of the International Trademark, this system will also simplify the subsequent designation of other countries, as well as the renewals, changes in the name or address of the holder or assignments of the IR, which are recorded by the WIPO. Transfers of IRs for only some of the designated countries, or for only part of the goods or services, or to limit the list of goods and services with respect to only some of the designated Offices, is also possible as the system allows these steps to be taken by the WIPO. The Madrid System substitute national registration in each of these countries and therefore the International Trademark Registration would consist of a bundle of national trademark registrations.
Proceedings Before National and Regional Offices. Although the IR consists of only one application, this is not a unitary system. This means that examination and opposition proceedings are managed by each national or regional Office, therefore the protection may be refused by some of the designated Offices or it may be limited or renounced with respect to only some of the designated states. Additionally, cancellation actions or any infringement action of an IR are to be brought separately in each of the countries concerned.
Dependence on the Basic Mark. An IR would be dependent on the basic mark in your Office of origin during a period of 5 years from its registration date, which means that ifyour basic regional or national trademark is refused, withdrawn or cancelled, the IR will also cease and no longer have effect. After the expiry of the mentioned 5-year period, the IR will become fully independent of the basic trademark.
How Abecsa Can Help You. The value-added services we provide for international trademarks can be summarized as follows:
Plan Your IP Strategy. We can help you plan your IP protection strategy in the related territories, according to your needs and budget, but always with the aim to obtain the widest protection as possible by also avoiding common filing mistakes that could suppose a threat to the validity of your IP rights in the future.
Availability Search. We will conduct a free basic search in all European registers or an in-depth comprehensive search in multiple territories to help you finding a legally available trade mark for your new product or business before we apply for an IR and using a new product or business name by checking any earlier trademarks that could conflict with yoursby finding if they are identical or confusingly similar. Our trademark search service can save you time, and a fortune in wasted designand incurred advertising costs, efforts, plus evade your potential legal liability in using by mistake a very similar name to someone else’s registered trademark, advising on risks to use a given sign in terms of infringement.
IR Filings. We would electronically file the International application on your behalf, foreseeing the relevant aspects and the correct manner it should be applied for. We have fixed fees for International Trademark filings with the WIPO so you can foresee the estimated costs for your international protection. – Restriction: We can only file an IR in your name if,whether you or your company has an address or a real and effective industrial or commercial establishment in the territory of Spain (based on a Spanish Trade Mark) or in any other country of the European Union (based on a EU Trade Mark). If you have no said address, the filing must be done from the country’s Office of origin of the holder and we may only intervene by representing the EUTM or the Spanish part, where any of our jurisdictions aredesignated by your IR.
Prosecution. We will monitor your IR during all the process until there is a final decision and duly inform you of every official communication we receive from WIPO, or we can coordinate through our local associate of a designated Office, when needed,any advice or procedural steps to take, as well as by sending you the publications and informing you of all deadlines to have in mind, including reminders and next renewal due notices.
Defense. – Office Actions. Whether your international trademark is provisionally refused because an objection by a designated national Office or if an opposition is filed against your IR in any country or you want to oppose a conflicting application, we will coordinate the defense through our local associate of a designated Office by responding the Office action where your mark has been objected or opposed if it is needed during the ex officio examination, opposition and appeal proceedings, or we may directly defend your IR designating Spain or the European Union if they have been objected or opposed during the administrative procedure. – Litigation. In enforcement, we can represent and assist either the claimant or the defendant in trademark rights infringement proceedings or unfair competition issues with the Spanish and European Courts.
Watching Services. We can provide our clients with a paid annual watch service on the countries and territories designated by the IR, keeping an eye on what third parties are attempting to register. If we find a new published application that may be potentially conflicting with your prior rights, then we will send you an alert proposing you to oppose within the statutory deadline.
Other Actions. We can handle any associated matter on IRs such us the recordal of licenses, change of names and ownership transfers.
International Registrations Designating the European Union or Spain. IRs that designate the EU (Madrid Protocol) will have the same legal effect as a EUTM and as if they were filed directly before the EUIPO, which must follow the same process and comply with the same requirements. The International Bureau of the WIPO will require the EUIPO, in the same way as all national Offices must accomplish, that a provisional refusal based on absolute grounds or on an opposition filed by a third party, must be notified to the International Bureau by the EUIPO within the common time limit of 12 months or within 18 months by Spanish OEPM, and WIPO will notify the holder of this issue along with the deadline given by the designated Office to remedy any deficiencies or to respond to this official action in defense of the provisional refusal of the IR designating the EU or Spain.
Designation of the EU. Note that the designation fee for an IR designating the European Union through this route,can be more expensive than if a EUTM is filed directly with the EUIPO.
Representation Before the WIPO. All persons or legal entities outside of the EU and those from the EU without a domicile in Spain, or EU members without a Spanish domicile for notifications are required to be represented by a local representative. Non-EU members always need to be represented by a registered Official IP Agent (not only a representative). Note that where the EUTM application is opposed or objected, the applicant may be requested to appoint a registered European representative to validly respond to the provisional refusal; if he is not domiciled, has no real, effective industrial or commercial establishment in the European Union. We would be glad to be your agent! You can enquire us about our representation and related services.
Main Procedural Phases of an International Trademark Registration Using the Madrid System.
- Filing of the Basic National or Regional Trademark. First, your trademark must be filed or registeredin your Office of origin: If you are located in Spain, you should file a Spanish trademark or a UE Trade Mark application.
- International Request. The international registration must be requestedfrom the same Office of origin, indicating the countries which are members of the Madrid Union where you would like to protect your trademark, and then the request will be transmitted to the International Bureau of the WIPO, publishing this application in the weekly Gazette of International Marks.
- Transmission of the Request. The WIPO will send your International trademark application to each national trademark Office of the countries you have designated, and where each application will be handled according to the normal registration procedure of that country.
- Examination by Each Office. At this stage, your application will be examined as to the grounds for refusal, whichc an be objected by the national or regional Office or be challenged by third parties. As a result, your trademark may or may not be registered in certain countries. If these elected national trademark offices do not indicate a provisional refusal within a given time period (usually within 12 or 18 months from the date of request), the IR will be definitively registered, valid and with effect in those countries. Any procedure following the refusal, such as review, appeal or defense to an opposition, must be carried out directly at the designated Office concerned, although this national Office must send a statement to the WIPO once all the proceedings are concluded, indicating the status of the provisional refusal; confirmed, or totally or partially withdrawn, which will be published in the International Gazette.
- Future Management of IRs. Renewals of IRs, subsequent designations of national Offices, changes in the register, etc. are also easy matters to manage at the WIPO.
General Information about International Trademarks.
What Can Be Registered? An international application must contain a representation of the trademark, which must be identical to the basic application or registration; the list of designated countries in which the mark is to be protected and the list of the goods and services the mark should cover, which must be identical to or narrower than the list in the basic application or registration.
Who May Apply? An international application can be filed only by persons or legal entitieshaving a real and effective industrial or commercial establishment in, or are domiciled in, or are a national of, a country which is party to the Madrid System, or who has such an establishment in, or is domiciled in, the territory of a regional Office which is a party to the Protocol, or is a national of a country covered by said regional Office. Natural persons or legal entities without this necessary connection through establishment, domicile or nationality with a member of this union cannot use this system.
Mandatory Use. We must refer to each local designated Office and its jurisdiction as to complying with the obligatory use; however this is to be made usually within five years from the date of registration.
Validity of an IR. Exclusive rights are conferred for ten years and IRs can be renewed indefinitely for further periods of ten years. Rights in an IR date back to the date of requestin those designated countries.
Renewals. IRs may be renewed in respect of all the designated Offices or in respect of only some of them.
Information and Requirements to File an International Trademark Registration:
- The full name and address of the applicant(s)-holder(s).
- The nationality or country of establishment of the applicant(s)-holder(s).
- Spanish or European VAT Number (NIF/NIE), only if the applicant is Spanish or established in a country of the EU.
- Full details of the basic trademark registration or application (national or regional) on which the IR will be based.
- List of the countries you would like to designate from the Madrid System.
- Nice classes to be applied for which were formerly included in your basic mark (45 classes of goods and services).
- The details of the application on which Convention Priority is to be claimed, if appropriate, within 6 months from first application date, along with the Certificate of Priority.
- Your instructions on how we should proceed and approval of the likely costs.
- Your payment by bank transfer within 20 days from application and invoice date.
- A POA signed by the applicant(s)-holder(s), where no legalisation is required.
Please do contact us via our contact form and make a list of the countries you would likely designate so we can examine your case and provide you with the estimated costs or if you need adviceon any other International trademark issues such as:
- Registering your trademark by designating multiple countries party to the Madrid System or extending an IR to other countries by a subsequent designation, or looking for the associated trademark searching and trademark watching services.
- Seeking our Attorney’s representation and appointment in the Spanish or European part of your International trademark registration.
- Opposing an International Trademark Registration applied for by others.
- Defending your challenged or objected IR in a given designated country from ex officio objections, oppositions, appeals or cancellation actions.
- Enforcing action against another person or company is using your trade mark in some countries of the Madrid System without your consent.
- Renewing your International Registration for an additional 10 year period.
- Licensing your IR in some states or assigning the International trademark to other.
Confidentiality. It would be advisable that you do not disclose your trademark protection plans to avoid others registering it before you. However, you can safely discuss them with us, because as registered patent attorneys and lawyers, any information you disclose to us is legally privileged and confidential, using it strictly for the purpose or needed service we are instructed to handle in your name.