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International Trademarks

If you require protection for your Trademark in a number of countries, you have two options; firstly, you may choose to file national Applications in each of your countries of interest; alternatively, you can use the Madrid Protocol to file in an "International" Application and designate your countries of interest.

The International (Madrid Protocol) system allows for a single Application to be filed, designating up to 83 countries (correct as of January 2011). The main benefit of the Madrid Protocol Registration is that is it is administered centrally, through the World Intellectual Property Office (WIPO), which, in most cases, avoids the need to engage local attorneys in each state, therefore reducing costs.

A further benefit of the Madrid Protocol system is that additional countries can be added at a later date, allowing you to administer your International Portfolio as easily and as cost efficiently as possible.

  • Albania
  • Antigua and Barbuda
  • Armenia
  • Australia
  • Austria
  • Azerbaijan
  • Bahrain
  • Belarus
  • Belgium
  • Bhutan
  • Bosnia and Herzegovina
  • Botswana
  • Bulgaria
  • China
  • Columbia
  • Croatia
  • Cuba
  • Cyprus
  • Czech Republic
  • North Korea
  • Denmark
  • Egypt
  • Estonia
  • European Union
  • Finland
  • France
  • Georgia
  • Germany
  • Ghana
  • Greece
  • Hungary
  • Iceland
  • India (8 July 2013)
  • Iran
  • Ireland
  • Israel
  • Italy
  • Japan
  • Kenya
  • Kazakhstan
  • Kyrgyzstan
  • Latvia
  • Lesotho
  • Liberia
  • Liechtenstein
  • Lithuania
  • Luxembourg
  • Madagascar
  • Mexico
  • Monaco
  • Mongolia
  • Montenegro
  • Morocco
  • Mozambique
  • Namibia
  • Netherlands
  • New Zealand
  • Norway
  • Oman
  • Philippines
  • Poland
  • Portugal
  • South Korea
  • Moldova
  • Romania
  • Russia
  • San Marino
  • Sao Tome and Principe
  • Serbia
  • Sierra Leone
  • Singapore
  • Slovakia
  • Slovenia
  • Spain
  • Sudan
  • Swaziland
  • Sweden
  • Switzerland
  • Syria
  • Macedonia
  • Tajikistan
  • Turkey
  • Turkmenistan
  • Ukraine
  • UK
  • USA
  • Uzbekistan
  • Viet Nam
  • Zambia

 

Filing

In order to file a Madrid Protocol Application you must meet the criteria to be an Applicant. You must be either a UK national or resident, or a UK company or a company with a "real and effective place of business" in the United Kingdom. Albright Patents file Madrid Protocol Registrations via the United Kingdom Intellectual Property Office (UK IPO) or Office for Harmonization in the Internal Market (OHIM).

In order to file a Madrid Protocol Registration, the Applicant must have a United Kingdom or Community Trademark Application/Registration for the same Trademark and corresponding or broader goods/services. This is called the “home” Application or Registration. If this "home" registration is less than 6 months old, it may also be possible to use it to claim "priority", that is backdate the Application to the date of earliest filing, essentially extending your protection  by up to 6 months.

The UK IPO/OHIM forwards the newly filed Madrid Protocol Registration to the World Intellectual Property Office (WIPO) in Geneva, where the Registration is examined for compliance with formalities and classification.

Publication

After Examination by the World Intellectual Property Office (WIPO), the Madrid Protocol Registration is published in the Official Gazette and the Registration Certificate issued.

National Designations

The Madrid Protocol does not cover all the countries which subscribe to the Treaty. Your Application will only cover the countries which you specify. After examination, WIPO sends the Madrid Protocol Registration to the National Trademark Offices in each of your designated countries. The Application is then treated like a normal national Application and is examined according to the relevant national laws. Each National 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 they will not complete their examination prior to the 18 month deadline, or if the Application is still vulnerable to third party opposition after the 18 month deadline, the national office must notify WIPO. If objection/opposition is encountered, local Attorneys have to be appointed in the country concerned.

Renewal

The Madrid Protocol Registration will remain in force indefinitely, subject to the Trademark being used in relation to the goods/services for which it is registered and the timely payment of renewal fees at 10 yearly intervals.

It is important to remember that certain countries covered by the Madrid Protocol have special requirements following registration, for example, the USA requires that a Statement of Use is filed between the fifth and sixth year following registration. It is important that all these deadlines are monitored as failure to submit the correct documentation can mean you lose your rights. Albright Patents will ensure all these deadlines are monitored to ensure your rights are maintained.

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