How to protect your trade mark via the Madrid system of international registration

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Estonia has acceded to the international agreement called Madrid Protocol enabling international registration of a trade mark by a single application in many different countries all over the world. The Madrid system is administered by the World Intellectual Property Organization (WIPO) located in Geneva in Switzerland.

The Madrid system provides the trade mark owner an opportunity to protect the trade mark in several countries by filing one application via the office of its country of residence. This office is referred to as the Office of origin. The protection of the mark in each of the countries is the same as if the mark had been deposited directly with the office of that country. Later management of the registration is easier thanks to the Madrid system, because it is possible to make changes or renew the registration by the use of one procedure in all countries, where the mark has acquired legal protection. Protection can be acquired in new countries by their subsequent designation.

The application has to be filed with the WIPO via the Office of origin (the Estonian Patent Office or the European Union Intellectual Property Office (EUIPO). In order to do that it is necessary to have an application or a registration of the same trade mark (the basic application or registration) in the Office of origin.

The data of the international application should be in accordance with the data of the basic application or registration:

  • the trade mark has to be identical;
  • the data of the applicant has to be the same;
  • the list of goods and/or services cannot be broader than in the basic application or registration.

The application filed via the Estonian Patent Office should be presented in English on form MM2 (forms). The guidelines for filling in an application form have been provided in the Trade Mark Regulation.

For a period of five years from the date of its registration, an international registration remains dependent on the basic application or registration. This dependence means that legal protection arising from an international registration will not be valid any more in case the basic application is not registered or the basic registration is not valid.

Pursuant to the Madrid system it is also possible to apply for trade mark protection in Estonia via any other Office of the Contracting Party. It is one of the possibilities for enterprises located or operating abroad to protect their trade mark in Estonia.

A fee for international registration depends on the countries where protection is applied for and their number. In order to learn the precise amount that should be paid a fee calculator should be used. The required details of the application have to be entered and the countries or regions where protection for the trade mark is applied for have to be designated in the fee calculator. As a result the amount of fees in Swiss francs will be calculated. Besides that a fee for forwarding the application has to be paid to the Office of origin.

An applicant can authorise a representative for communication with the Office of origin and WIPO. The appointment of a representative in the international application only empowers him to act before the International Bureau. It may subsequently become necessary to appoint one or more further representatives to act before the Offices of designated Contracting Parties, for example, in the event of a refusal of protection issued by such an Office. The appointment of a representative in such a case will be governed by the requirements of the Contracting Party concerned.

Rules and guidelines of the Madrid system for filling in and filing applications and other documents can be found in the following regulations and guides:

Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement;
Schedule of Fees;

Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol;

Administrative Introductions for the Application of the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating Thereto.

WIPO on-line services:

Romarin is a database of trade marks registered and applied for in WIPO;

Madrid Real-Time Status (MRS) is a tool that provides the status in real time of trademark documents being processed by WIPO.

Madrid Electronic Alert (MEA) is a free “watch service” designed to inform anyone interested in monitoring the status of certain international trademark registrations.

Madrid Portfolio Manager (MPM) is an online service that allows holders of international registrations and their representatives to access their international trademark portfolios;

Madrid Goods & Services Manager (MGS) is a tool that assists trademark applicants in compiling their lists of goods and services to file international trademark applications

 

WIPO news:

Madrid Highlights is a quarterly publication issued by the WIPO focusing on keeping Madrid system’s stakeholders up to date with the latest developments within the Madrid system.

 

Last modified 04.09.2017