DISTINCTIVE SIGNS

2.2-INTERNACIONAL MARK


2.2.A) Madrid System for the International Registration of Marks.

The Madrid system for the international registration of marks (the Madrid system) established in 1891 functions under the Madrid Agreement (1891), and the Madrid Protocol (1989). It is administered by the International Bureau of WIPO located in Geneva, Switzerland.

Thanks to the international procedural mechanism, the Madrid system offers a trademark owner the possibility to have his trademark protected in several countries by simply filing one application directly with his own national or regional trademark office. An international mark so registered is equivalent to an application or a registration of the same mark effected directly in each of the countries designated by the applicant. If the trademark office of a designated country does not refuse protection within a specified period, the protection of the mark is the same as if it had been registered by that Office.

The Madrid system also simplifies greatly the subsequent management of the mark, since it is possible to record subsequent changes or to renew the registration through a single.



Members of the Madrid Union are:

Albania (A&P) Algeria (A) Antigua and Barbuda (P) Armenia (A&P) Australia (P) Austria (A&P) Azerbaijan (A) Bahrain (P) Belarus (A&P) Belgium* (A&P) Bhutan (A&P) Bosnia and Herzegovina (A) Bulgaria (A&P) China (A&P) Croatia (A&P) Cuba (A&P) Cyprus (A&P) Czech Republic (A&P) Democratic People's Republic of Korea (A&P) Denmark (P) Egypt (A) Estonia (P) European Community (P) Finland (P) France (A&P) Georgia (P) Germany (A&P) Greece (P) Hungary (A&P) Iceland (P) Iran (Islamic Republic of) (A&P) Ireland (P) Italy (A&P) Japan (P) Kazakhstan (A) Kenya (A&P) Kyrgyzstan (A&P) Latvia (A&P) Lesotho (A&P) Liberia (A) Liechtenstein (A&P) Lithuania (P) Luxembourg* (A&P) Monaco (A&P) Mongolia (A&P) Morocco (A&P) Mozambique (A&P) Namibia (A&P) Netherlands: - Territory in Europe* (A&P) - Antilles** (P) Norway (P) Poland (A&P) Portugal (A&P) Republic of Korea (P) Republic of Moldova (A&P) Romania (A&P) Russian Federation (A&P) San Marino (A) Serbia (A&P) Sierra Leone (A&P) Singapore (P) Slovakia (A&P) Slovenia (A&P) Spain (A&P) Sudan (A) Swaziland (A&P) Sweden (P) Switzerland (A&P) Syrian Arab Republic (A&P) Tajikistan (A) The former Yugoslav Republic of Macedonia (A&P) Turkey (P) Turkmenistan (P) Ukraine (A&P) United Kingdom (P) United States of America (P) Uzbekistan (A) Viet Nam (A) Zambia (P)

2.2. B Who May Use the Madrid System?

An application for international registration (an "international application") may be filed only by a natural person or a legal entity which has a real and effective industrial or commercial establishment in, or is domiciled in, or is a national of, a country which is party to the Madrid Agreement or the Madrid Protocol, or who has such an establishment in, or is domiciled in, the territory of an intergovernmental organization which is a party to the Protocol, or is a national of a Member State of such an organization.

The Madrid system of international registration cannot be used by a person or legal entity which does not have the necessary connection, through establishment, domicile or nationality, with a member of the Madrid Union. Nor can it be used to protect a mark outside the Madrid Union.

2.2.C The International Application

A mark may be the subject of an international application only if it has already been registered (or, where the international application is governed exclusively by the Protocol, if registration has been applied for) in the Trademark Office of the Contracting Party with which the applicant has the necessary connection, as described in paragraph 6, above, to be able to file an international application. This Office is referred to as the Office of origin.

An international application must be presented to the International Bureau through the Office of origin. An international application which is presented direct to the International Bureau by the applicant will not be considered as such and will be returned to the sender.

The international application must contain, inter alia, a reproduction of the mark (which must be identical with that in the basic registration or basic application) and a list of the goods and services for which protection is sought, classified in accordance with the International Classification of Goods and Services (Nice Classification). An international application may claim priority under Article 4 of the Paris Convention, whether from the application with the Office of origin or from a prior application filed with the Office of another country party to the Paris Convention or with the Office of a Member of the World Trade Organization.

An international application must designate the Contracting Parties in which the mark is to be protected. Where the Contracting Party whose Office is the Office of origin is a party to the Agreement but not the Protocol, only other States which are also party to the Agreement may be designated. Where the Contracting Party whose Office is the Office of origin is a party to the Protocol but not the Agreement, only other Contracting Parties which are also party to the Protocol may be designated. Where the Contracting Party whose Office is the Office of origin is a party to both the Agreement and the Protocol, any other Contracting Party may be designated.

The Contracting Party whose Office is the Office of origin cannot be designated in an international application; nor can it be designated subsequently.

The designation of a given Contracting Party is made under that treaty (Agreement or Protocol) which is common to the designated Contracting Party and the Contracting Party whose Office is the Office of origin. Where both Contracting Parties are party to both the Agreement and the Protocol, it is the Agreement which governs the designation; this follows from the so-called "safeguard" clause, Article 9 sexies of the Protocol.

There are therefore three kinds of international application:

• an international application governed exclusively by the Agreement; this means that all the designations are made under the Agreement;
• an international application governed exclusively by the Protocol; this means that all the designations are made under the Protocol;
• an international application governed by both the Agreement and the Protocol; this means that some of the designations are made under the Agreement and some under the Protocol.

If the international application is governed exclusively by the Agreement, it must be in French. If it is governed exclusively by the Protocol or by both the Agreement and the Protocol, it may be in English, French or Spanish; the Office of origin may however restrict the applicant's choice to only one language, or to two languages, or may permit the applicant to choose between any of the three languages.

The international application is subject to the payment of the following fees:

• a basic fee;
• a complementary fee in respect of each designated Contracting Party for which no individual fee is payable;
• an individual fee in respect of any Contracting Party which is designated under the Protocol and has declared that it wishes to receive such a fee; (the amount of the individual fee is determined by each Contracting Party; it may not be higher than the amount that would be payable for the registration of a mark in the Office of that Contracting Party; the amounts of the respective individual fees are published in the Gazette);
• a supplementary fee in respect of each class of goods and services beyond the third; no supplementary fee is payable however where all the designations are ones in respect of which an individual fee has to be paid.

These fees may be paid direct to the International Bureau or, where the Office of origin accepts to collect and forward such fees, through that Office.

The Office of origin must certify that the mark is the same as that in the basic registration or basic application, that any indications such as a description of the mark or a claim to color as a distinctive feature of the mark are the same as those contained in the basic registration or basic application, and that the goods and services indicated in the international application are covered by the list of goods and services in the basic registration or basic application.

The Office of origin must also certify the date on which it received the request to present the international application. This date is important; provided the application is received by the International Bureau within two months of that date (and provided that certain crucial elements are not missing), it is that date that will be the date of the international registration.

The International Bureau checks that the international application complies with the requirements of the Agreement or Protocol and the Common Regulations, including requirements relating to the indication of goods and services and their classification, and that the required fees have been paid. The Office of origin and the applicant are informed of any irregularities; these must be remedied within three months, otherwise the application will be considered abandoned.

Where the international application complies with the applicable requirements, the mark is recorded in the International Register and published in the Gazette. The International Bureau then notifies each Contracting Party in which protection has been requested.

2.2.D Examination by the Office of a Designated Contracting Party; Refusal of Protection

The Office of a designated Contracting Party examines the international registration in exactly the same way as an application filed directly. If grounds for objection are found during the ex officio examination, or if an opposition is filed, the Office has the right to declare that protection cannot be granted to the mark in that Contracting Party.

Any provisional refusal must be notified to the International Bureau by the Office of the Contracting Party concerned within the time limit specified in the Agreement or Protocol. This time limit is generally 12 months. A Contracting Party may however declare that, when it is designated under the Protocol, this time limit shall be replaced by 18 months. A Contracting Party that has made this declaration may further declare that a provisional refusal based on an opposition may be notified even after the expiry of this 18-month period.

The provisional refusal is recorded in the International Register and published in the Gazette and a copy is transmitted to the holder of the international registration.

Any procedure subsequent to the refusal, such as review, appeal or response to an opposition, is carried out directly between the holder and the Office concerned, without any involvement on the part of the International Bureau. The Office must however send a statement to the International Bureau once all the procedures before that Office have been completed, indicating that the provisional refusal is confirmed or is totally or partially withdrawn. This statement is also recorded in the International Register and published in the Gazette.

Where an Office finds no reason for refusing protection, it may, before the expiry of the applicable time limit for provisional refusal, issue a statement of grant of protection. Such statement is recorded in the International Register and published in the Gazette and a copy is transmitted to the holder of the international registration. An Office is however not obliged to issue a positive decision on registration and no legal consequences result if it does not do so.

2.2.E Effects of the International Registration

From the date of the international registration (or, in the case of a Contracting Party designated subsequently, from the date of that designation), the protection of the mark in each of the designated Contracting Parties is the same as if the mark had been the subject of an application for registration filed direct with the Office of that Contracting Party. If no provisional refusal is notified to the International Bureau within the relevant time limit, or if any such refusal is subsequently withdrawn, the protection of the mark in each designated Contracting Party is the same as if it had been registered by the Office of that Contracting Party.

An international registration is therefore equivalent to a bundle of national registrations. Although it is a single registration, protection may be refused by some of the designated Contracting Parties, or the protection may be limited or renounced with respect to only some of the designated Contracting Parties. Likewise an international registration may be transferred to a new owner with respect to only some of the designated Contracting Parties. An international registration may also be invalidated (for example, for non-use) with respect to one or more of the designated Contracting Parties. Moreover, any action for infringement of an international registration must be brought separately in each of the Contracting Parties concerned.

This is in contrast to a unitary regional right such as the Community trademark, which cannot be refused, limited or transferred with effect for only a part of the territory covered by the right, and which may be enforced by a single legal action covering infringement occurring anywhere in that territory.

2.2.F Dependence on the Basic Mark

For a period of five years from the date of its registration, an international registration remains dependent on the mark registered or applied for in the Office of origin. If, and to the extent that, the basic registration ceases to have effect, whether through cancellation following a decision of the Office of origin or a court, through voluntary cancellation or through non-renewal, within this five-year period, the international registration will no longer be protected. Similarly, where the international registration was based on an application in the Office of origin, it will be canceled if, and to the extent that, that application is refused or withdrawn within the five-year period, or if, and to the extent that, the registration resulting from that application ceases to have effect within that period.

The Office of origin is required to notify the International Bureau of facts and decisions concerning such ceasing of effect or refusal and, where appropriate, to request the cancellation (to the extent applicable) of the international registration. The cancellation is published in the Gazette and notified to the designated Contracting Parties.

If, within three months of such cancellation, the holder files an application for registration with the Office of a Contracting Party that had been designated under the Protocol, that application will be treated as if it had been filed on the date of the international registration or (as the case may be) the subsequent designation of the Contracting Party concerned. This option is not available in the case of a Contracting Party designated under the Agreement.

2.2. G Duration of Registration; Renewal

An international registration is effective for 10 years. It may be renewed for further periods of 10 years on payment of the prescribed fees. The International Bureau sends a reminder to the holder and to his representative (if any) six months before renewal is due.

The international registration may be renewed in respect of all the designated Contracting Parties or in respect of only some of them. It may not however be renewed in respect of only some of the goods and services recorded in the International Register; if therefore the holder wishes, at the time of renewal, to remove some of the goods and services from the international registration, he must separately request cancellation in respect of those goods and services.

Source WIPO