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

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Estonia has acceded to the international treaty 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 an opportunity to protect your trade mark in several countries by filing one application via the office of your country of residence. This office is referred to as the Office of origin. The protection of 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, because it is possible to make changes or renew the registration using 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 – Estonian Patent Office or 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 services cannot be broader than in the basic application or registration.

 

The cost of 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, you should use a fee calculator. By entering details of the application and designating the countries or regions where you want to protect your trade mark, 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.

 

The application filed via the Estonian Patent Office should be presented in English on form MM2. In Madrid system the trade mark has to be represented graphically, so it’s not possible to file an international application for a trade mark that is represented as a sound or video file.

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.

An applicant can authorise a representative for communication with the Office of origin and WIPO. The appointment of a representative in the international application gives authority to act before the International Bureau of WIPO. 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 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 e-services

Madrid Monitor is a database of trade marks registered and applied for in WIPO

Madrid Portfolio Manager is an on-line service that allows holders of international registrations and their representatives to access their international trade mark portfolios

Madrid Goods & Services Manager (MGS) is a tool that assists trade mark applicants in compiling their lists of goods and services to file international trade mark 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 08.04.2019