Procedure for filing and prosecuting an International (Madrid Protocol) Registration:

Prior to filing a new Trade Mark Application or commencing use of a Trade Mark, Albright Patents strongly recommend that searches of relevant Trade Mark Registers are conducted for potentially conflicting Trade Marks.


1. Albright Patents will prepare and file a Madrid Protocol Application via the UK Trade Mark Registry on behalf of a United Kingdom resident or company or a company with a "real and effective place of business" in the United Kingdom.

In order to file a Madrid Protocol Registration, the Applicant must have a United Kingdom or Community Trade Mark Application/Registration for the same Trade Mark and corresponding or broader goods/services. This is called a "home" Application or Registration.


2. The United Kingdom Trade Marks Registry forwards the newly filed International Registration to the World Intellectual Property Office (WIPO) in Geneva, where the Registration is examined for compliance with formalities and classification. If any Examination objections are raised, Albright Patents will report this to you and advise how best to proceed.


3. Once any Examination objections raised by WIPO are overcome, the International Registration is published in the Official Gazette.


4. At the same time, WIPO sends the International Registration to the National Trade Mark Offices of each of the countries designated in the International Registration. Each designation is then examined in accordance with the requirements of the relevant National Law and each Office has a period of up to 18 months to notify WIPO of any Examination objections and/or the filing of third party opposition. If objection is raised, it is necessary to appoint local Attorneys in the country concerned.


5. If no objection/opposition is raised or any such obstacle overcome, the International Registration will remain in force indefinitely, subject to the Trade Mark being used in relation to the goods/services for which it is registered and the timely payment of renewal fees at ten yearly intervals. Albright Patents will diary the renewal deadline for your registration in order that we can try and contact you in advance for instructions about renewal and/or any change of proprietor details.

 

The Cost of Filing and Prosecuting an International (Madrid Protocol) Registration (exclusive of VAT):

Filing Fees

The filing fees are comprised of a "Basic Fee" of approximately £780 plus VAT (in up to three Classes) and an additional £105 plus VAT for each Class after the third.

In addition to the "Basic Fee", individual country charges are payable for each country designated. These fees vary from country to country and are dependent on the number of Classes. Albright Patents is happy to provide a cost estimate as required and also, a full list of countries that are party to the Madrid Protocol.

Prosecution Fees (Examination/Publication/Registration)

Provided no Examination objection or third party opposition is encountered in any of the countries designated, no further fees will be incurred (except a Registration fee of £150 plus VAT).