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Filing An International Trademark Application Under The Madrid Protocol

International Trademark

The Madrid Protocol Treaty, established in 1989 provides a mechanism for obtaining trademark protection in Madrid Protocol Treaty member countries by the filing and registration of one (1) trademark application with the World Intellectual Property Organization (WIPO), Geneva, Switzerland.

The Madrid Protocol is administered by the International Bureau of world intellectual property organization (WIPO) located in Geneva, Switzerland. Countries and organizations party to the protocol or agreement, each referred to as a “contracting party”, are part of the union called the Madrid Union. With an international registration, an applicant can register a mark in any of the contracting parties that the applicant designates for protection. A single international registration simplifies the process of prosecution and maintenance of trademark, as a single prosecuted and allowed mark can be registered as a trademark in each country that the applicant wishes to register the mark in. The applicant can subsequently designate more countries for trademark registration through an international registration.

An international trademark application is required to be based on a prior foreign trademark application/registration or a trademark application/registration filed in the applicant’s country of origin. Usually, in order to get the priority date of the first trademark application, the applicant should file the international application within two months of the filing or receipt date of the first filing.

To file an international application through the U.S.PTO as the office of origin, a trademark application for the mark is first filed with the U.S.PTO. When the serial number of the trademark application is received from the U.S.PTO (generally within a day after the mark is filed), an international application for the mark is then filed with the Madrid Processing Unit, U.S.PTO. The international application must designate at least 1 foreign country where the mark is to be registered. The following fee is payable with the international application: U.S.PTO certification fee of $100 per class per mark, international application filing fee ($650), and the individual country application fee for the countries where the mark is to be registered. The number of classes of products and services should be the same as identified in the basic foreign application or a subset of it.

On receipt of the international application, the Madrid Processing Unit, U.S.PTO certifies the international application and submits it to the International Bureau, WIPO for examination. If there is any deficiency with the mark as filed, the Madrid Processing Unit issues a Notice of Irregularity to the applicant which the applicant can correct.

On receipt of the international application by the International Bureau, the International Bureau reviews the international application to determine whether it meets the Madrid Protocol filing requirements. If the International Bureau finds that the filing requirements are met and the required fees paid, the International Bureau registers the mark, publishes it in the WIPO Gazette, and sends a certificate to the registrant. However, if the International Bureau finds any deficiencies in the international application, the International Bureau sends a Notice of Irregularity to the registrant explaining the deficiency in the application. The applicant has to respond to this notice within the time period specified in the notice. If the irregularities are rectified within the specified time period, the International Bureau registers the mark.

After the international registration, the International Bureau requests each of the designated countries (i.e., the countries designated in the international application where the mark is to be registered) to extend the trademark registration or protection in their country. After the request, the contracting parties are given 18 months to examine the request for an extension of protection and notify any refusals to the mark. If any contracting party objects to the allowance and registration of the mark within 18 months after the filing of the international registration, the mark is provisionally refused registration in all the contracting states. The applicant is then given an opportunity to contest the non-allowance of the mark. If the registration requirements of the designated countries are met, the International Bureau sends the mark to the Office of Harmonization which forwards the mark to each of the countries where the mark is to be registered.

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