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Key Advantages of International Trademark Registration
What is the Difference between the Madrid Agreement and the Protocol Relating to the Agreement?
Conditions for Filing an International Application
Procedure of Filing an International Application
Dependence of International Registration from National Registration
List of States Party (“Contracting Parties”) that Belong to the Madrid System
Types of Blank Forms for Filing International Application
Selection of a Blank Form for International Application
How to Use the WIPO Calculator?
Changes in the International Register
Subsequent Designation of States (Territorial Extension)

Key Advantages of International Trademark Registration

The Madrid Agreement Concerning the International Registration of Marks has proved its effectiveness primarily by giving advantages to its users (natural persons and legal entities).

The key advantages of international trademark registration under the Madrid system are the following:

  • an applicant can file one application for international trademark registration with the International Bureau of the World Intellectual Property Organization (hereinafter referred to as “WIPO”) in one of the languages of the Madrid system, particularly English, French or Spanish;
  • an applicant can pay one international fee in one currency - Swiss franks;
  • the standard time limit for processing an application for international mark registration in each designated Contracting Party is 12 months; if the Office of the State (a Contracting Party) does not notify a refusal within the applicable time limit (that is specified by the Madrid system), the international registration will be protected and in force in the Contracting Party in question.
  • the holder of the international registration can extend trademark geographical scope to additional Contracting Parties and seek its protection at any time after the trademark has been registered through the Madrid system;
  • an application is filed with the WIPO International Bureau, through the office of origin i.e. the national Office, which notifies a trademark to the IP Offices of the designated Contracting Parties respectively; thereby making the applicant’s costs less to be spent on the services of patent attorneys in each of the Contracting Parties.

What is the Difference between the Madrid Agreement and the Protocol to that Agreement

The Protocol to the Madrid Agreement Concerning the International Registration of Marks (hereinafter referred to as “the Protocol”), relating to the Madrid Agreement (hereinafter referred to as “the Agreement”), was adopted in 1989 to improve the international registration system and involve new states to the Madrid Union. The Protocol entered into force on December 1, 1995. As compared to the Agreement, the Protocol was innovative giving novel opportunities to be introduced into the traditional system of international registration:

  • an application for international trademark registration can be based on either a mark that has already been registered (“basic registration”), or applied for national registration, but not yet registered (“basic application”) with the Office of origin;
  • Contracting Parties may declare that, when it is designated under the Protocol, the time limit for expert examination shall be 18 months (to replace the standard time limit of 12 months specified by the Agreement);
  • each Contracting Party is entitled to determine the amount of individual fees which may exceed the amount of fees prescribed by the Agreement;
  • the international registration, which is canceled following a request of the Office of origin, if the basic application was refused or the basic registration ceased to have effect within the five-year period from the date of the international registration, can be replaced by a bundle of the national applications in the Contracting Parties (countries) designated in the international registration, with the same priority dates when originally filed.

Conditions for filing international application

Prior to filing an application for international registration, a trademark must be registered or applied for registration with the national industrial property office (particularly, the National Centre of Intellectual Property of the Republic of Belarus hereinafter referred to as “the Centre”).

The international registration of a trademark is based on the national registration (basic registration) when the Agreement is applicable or it is based on either on a basic registration or a basic application (for national registration) filed with the Office of origin when the Protocol is applicable.

Procedure of Filing an International Application

An international application is filed to the Centre by filling out one of the forms (MM1, MM2, MM3), recommended by the WIPO in English or French (Spanish is not a working language at the Centre). Name and address of an applicant should be transliterated in Latin Alphabet according to the phonological rules of the English language. The applicants, who are legal entities, may replace transliteration of the organization name by its translation into one of the official languages of international registration. When filing the international application the applicant must enclose the following documents:

  • a request (Appendixes 1,2,3);
  • images of a trademark in duplicate, 8 x 8 sm by size, additionally to the image on the application form;
  • a power of attorney certifying the authority of a patent agent, if an application is filed through the patent agent;
  • a document confirming payment of international fee (a copy);
  • a document confirming payment of national fee (a copy).

In order to expedite the procedure of checking the filed papers and sending them to the WIPO, an applicant may attach a copy of international application on the removable media or email it to: madridgroup@belgospatent.by

All the international application data must correspond to the national registration data entered into the State Register of trademarks and service marks of the Republic of Belarus, or to data from the application for national registration when the international application is filed under the Protocol.

p style="text-align: justify;"> The application for international registration can be filed on the basis of two or more national registrations or, when it is filed under the Protocol, on the basis of two or more national applications under condition that they refer to one and the same trademark claimed by the same legal entity or a natural person, and specified goods and/or services correspond to goods and/or services covered by the national registrations or applications.

p style="text-align: justify;"> When the international application is prepared, it is advised to use the Madrid Goods and Services Manager, a free tool developed by the WIPO which makes it easier to compile the relevant List of goods and services and translate it into the language of international application:

  • online link to MGS where the video manual is available;
  • last information notices No 12/2013 on MGS;
  • MGS promotional video;
  • a booklet presenting potential benefits for applicants.

The convention priority in the international application can be claimed within 6 months from the date of filing a basic application.

If an application complies with all the formal requirements, the International Bureau records the mark in the International Register, publishes information about it in the WIPO Gazette of International Marks and sends a certificate of international registration to the holder of the mark. The International Bureau also notifies the Contracting Parties, which have been designated in the international application, of the international registration and in the course of 12 months (under the Agreement) or 18 months (under the Protocol) from the date of notification the trademark Offices of each member state examine the mark in conformity with the national legislation and give confirmation that the international registration is valid in respect of all goods and/or services, a part of goods and/or services, or completely refuse protection. The registered marks have the same legal status as the marks filed and registered in the Contracting Party under the national procedure.

Dependence of International Registration from National Registration

The international registration, which has to be based on the national registration (or basic application), remains to be dependent on the national (basic) registration (or application) for five years. If the basic registration or application expires (or is cancelled) (e.g., by decision of the administrative authorities or judicial bodies of the Contracting Party or on voluntary cancellation basis), the international registration is to be cancelled from the International Register upon request of the national Office. After five-year period the international registration becomes independent on basic registration.

The validity of the international registration is not time limited if the maintenance fee is paid to the WIPO International Bureau every ten years.

List of States Parties (“Contracting Parties”) that Belong to the Madrid System

The States Parties to the Agreement and the Protocol are available at the WIPO website: http://www.wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf/. It is advised to refer to this site when an international application is filed as the situation in the Madrid Union continually changes due to accession of new states to the Agreement and the Protocol to the Agreement.

Currently, the protection in the European Union can be also claimed in the international application or when filing a subsequent designation. The information about the Member States of the European Union is available at: http://europa.eu/.

Types of Blank Forms for Filing International Application

There are three types of official forms for international application developed by the WIPO International Bureau: ММ1, ММ2, ММ3, which are available at WIPO website: http://www.wipo.int/madrid/en/forms/. They are used depending on an application filed either under the Agreement, or under the Protocol, or both under the Agreement and the Protocol simultaneously.

Selection of Blank Form for International Application

The selection of a blank form for international application from available three form options (ММ1, ММ2, ММ3) is the following:

  • MM1 is an application for international registration governed exclusively by the Madrid Agreement and is applicable if the states designated by the applicant are bound exclusively by the Agreement;
  • MM2 is an application for international registration governed exclusively by the Madrid Protocol and is applicable if the states designated by the applicant are bound exclusively by the Protocol (irrespective of whether they are Parties to the Agreement);
  • MM3 is an application for international registration governed by both the Madrid Agreement and the Madrid Protocol and is used in filing out procedure when there is at least one state in the List of designated states which is bound exclusively by the Agreement and at least one state bound exclusively by the Protocol (irrespective of whether it is bound by the Agreement).

Patent Fees

According to the Special Part of the Internal Revenue Code of the Republic of Belarus, the national fee for filing an application for trademark registration in compliance with the Agreement and the Protocol to the Agreement, and for forwarding it to the WIPO International Bureau is currently equal to five base units.

The national fee for filing an application for territorial extension is equal to three base units.
The national fees are transferred to the settlement account of the Centre. Banking information of the Centre.

International Fee

Payments receivable by the International Bureau are effected in Swiss francs. Computation of international fee can be made by means of calculator provided on the WIPO’s online services.

Basic fee for filing an application for international registration is 653 Swiss francs (CHF) if a trademark is claimed in black-and-white version, and is CHF 903 if a trademark is claimed as a color mark.

p style="text-align: justify;"> Supplementary fee for each class of goods and services beyond three classes (Article 8(2)(b) of the Agreement) is equal to 100 Swiss francs, complementary fee for designation of each state is 100 Swiss francs.

Supplementary and complementary fees are replaced with individual fees when a designated state declared individual fees to be payable in compliance with the Protocol.
International fee is payable by the applicant to the account of the International Bureau of the WIPO. What should be borne in mind is that individual fees may be increased or reduced on a periodic basis. So, it is worth calculating the fees payable just before payment. The Schedule of Fees prescribed by the Common Regulations under the Agreement and the Protocol (in force on September 1, 2008) is available at: http://wipo.int/madrid/en/fees/about_fees.html. The information about Bank Transfer to the International Bureau of the WIPO is also available at the same online page.

How to Use the WIPO Calculator?

To use the WIPO calculator, first of all you should choose right parameters for calculation. Enter the date of the last fee change into the box “For date”. Enter a trademark Office of origin in the relevant country into the box “Office of origin”, in particular, “Belarus” should be selected by Belarusian applicants. “Type” box indicates the type of procedure. The main procedures are “New application”, “Subsequent Designation” for territorial extension, “Renewal” for maintaining mark registration in force. Check “Number of classes” box to specify the number of classes of goods and services. “Color” box is checked, if a mark in color composition is claimed, “Collective mark” is checked if a collective mark is claimed, and “Includes figurative elements” box is checked if a trademark contains figurative elements.

Next step is to designate states by checking the boxes respective to two-letter abbreviated codes for the states, and click the button “Calculate”. Two-letter Codes are available in the official bulletins of the Centre, in the WIPO form MM3 or on the WIPO online information page: http://wipo.int/scit/ru/docs/03-03-01.pdf/.

Changes in the International Register

The following changes may be recorded in the International Register: name and (or) address of the holder (MM9), total or partial transfer of rights (MM5), limitation of the list of goods and services in respect of all or a part of the designated Contracting Parties (MM6). A change in the International Register may be recorded upon request of the holder of international registration or his representative to be sent in an appropriate form to the International Bureau of the WIPO and a set fee is to be paid.

Subsequent Designation (Territorial Extension)

The holder of the mark can send an application concerning the subsequent designation to extend protection of the mark to other states directly to the International Bureau or through the Office of origin in the designated country. If an application pertaining to subsequent designation which was to be sent through the patent Office of origin (this is the case when at least one of the states, where territorial extension is sought, is bound by the Agreement) has been sent directly to the International Bureau, such an application is deemed to be unfiled, and the paid fees are returned to the payer.

A request for subsequent designation may be filed both in respect of all goods and/or services and in respect of a part of goods and/or services, recorded in the International Register, and may be filed each time in respect of different parts of the list of goods and/or services recorded in the International Register.

Subsequent designation is filed to the Centre in form MM4 recommended by the WIPO. An applicant of subsequent designation shall attach the following documents:

  • a request (Appendix 4) ;
  • a power of attorney when subsequent designation is submitted through a patent attorney;
  • a document confirming payment of international fee (a copy);
  • a document confirming payment of national fee (a copy).

Changes in the Madrid system

From September 1 2008 the protective clause which had providing for priority of the Agreement over the Protocol in relations between the states bound both by the Agreement and the Protocol was cancelled. As a result of such changes, the relations of the Republic of Belarus with the Contracting Parties to the Agreement and the Protocol are regulated at present with some limitations by the Protocol. The international application with designation of the mentioned states can be filed today at the stage of filing the national application (earlier, the mark registration was required for the purpose).

The restrictions in application of the Protocol concern individual fees (an applicant is exempt from individual fees when the Contracting parties bound both by the Agreement and the Protocol are designated) and the time limits required for conducting examination in designated countries.

When new applications are filed, a fully trilingual procedure is applicable. An applicant is entitled to choose any of the three working languages of the Madrid Union (English, French, or Spanish) irrespective of the type of application.

More details relating to the latest changes are available at: http://ncis.by.

Advice to users of the Madrid system:
Please refer to the news published at the websites of the Centre (http://ncis.by) and the WIPO (www.wipo.int).


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