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Overview of the Madrid System Legal Perspective Basic Level
PlaceDay MonthYearLegal Division
Madrid RegistryBrands and Designs Sector
Table of Contents
International Application
Examination of the International Application in the International Bureau
Date of the International Registration
Effects of the International Registration
Examination in the Office of the Designated Contracting Party
Communications from the Designated Contracting Party
Provisional Refusal
Irregular Provisional Refusal
Interim Status of a Mark in a Designated Contracting Party
Final Disposition on Status of the Mark
Invalidation
International Application
International Application: 3 Main Actors
International Application
Office of origin
International Bureau
Applicant
Filing Basis Under the Madrid System
Madrid Agreement and Madrid Protocol
Applicant
Establishment
Domicile
Nationality
Basic Registration
Basic Application
The Madrid system is a closed system
The applicant (natural person or legal entity) must be entitled to use the Madrid system through
Real and effective industrial or commercial establishment
Domicile; or
Nationality
The Office of the Contracting Party through which the applicant is entitled to use the Madrid system, is considered his Office of origin
Filing Basis: Entitlement
Filing Basis: The Basic Mark
When the entitlement with a Contracting Party is established,
the applicant needs to have a trademark registered or
deposited for registration with the Office of that Contracting
Party (the basic mark)
The international application must concern the same
applicant/holder, the same mark and the goods and services
in the international application must be covered by the list of
goods and services in the basic mark
International Application: Forms
3 international application forms
Form MM1: Governed exclusively by the Agreement (Rule 1(viii))
Form MM2: Governed exclusively by the Protocol (Rule 1(ix))
Form MM3: Governed by the Agreement and the Protocol (Rule 1(x))
Official forms available at: http://www.wipo.int/madrid/en/forms/
International Application: Requirements
The international application must be presented to the International Bureau via the Office of origin
Official form: MM1, MM2 or MM3
Mandatory contents
Optional contents
Certification by the Office of origin
Mandatory Contents (1)
The international application shall contain or indicate
Name and address of the applicant
Name and address of the representative, if appointed
Entitlement of the applicant
Any claim of priority, if applicable
Reproduction of the mark
Indications of the mark (color claim, kind of mark, etc.)
Description of the mark, if required
Mandatory Contents (2)
Transliteration of the mark, if applicable
List of goods and services (Nice Classification)
Special requirements requested by some designated Contracting Parties
The amount of fees being paid and the method of payment
Optional Contents
The international application may also contain
Nationality of the applicant / nature of the legal entity
Translation of the mark, if possible
An indication by words of the principal parts of the mark which are in color, where color is claim
Disclaimer
Certification by the Office of Origin
The international application shall contain a declaration by the Office of origin certifying
The date of receipt of the international application
That the applicant is the same as the applicant/holder of the basic mark
That the mark is the same as the basic mark; and
That the goods and services are covered by the list of goods and services in the basic mark
Special Requirements for Certain Designated Contracting Parties
European Union
Indication of a second working language
Possibility of claiming seniority (MM17)
United States of America
Declaration of intention to use the mark (MM18)
India, Ireland, New Zealand, Singapore, and the United Kingdom
The designation is a declaration of intention to use
Cuba, Ghana and Japan
Individual fees payable in 2 parts
International Application: Fees
Basic fee (653 or 903 CHF) plus
Standard fee regime
Complementary fee(s) per designated Contracting Party (100 CHF), and
Supplementary fee(s) per class of goods and services beyond 3 (100 CHF); or
Individual fee(s), if the designated Contracting Parties have made such declaration
Cuba, Ghana and Japan: individual fees payable in 2 parts
Fee calculator available at: www.wipo.int/madrid/en/fees/calculator.jsp
International Application: Presentation
The international application must be presented to the International Bureau by the Office of origin through
Electronic transmission
Postal delivery
Fax transmission
Where the application is communicated by fax, the original of the reproduction of the mark must follow by mail within a given time limit
Role of the Office of Origin
APPLICATION
RECEPTION
FORMALITIES
EXAMINATIONIRREGULARITY CERTIFICATION
OFFICE OF ORIGIN
Providing advice to applicants
Certification of the international application
Reply to or remedy irregularities
Keeping track of basic mark in a 5 year period
Notifications of ceasing of effect
Forwarding official forms on behalf of the holder
Applicant
Office of origin Certification
Designated Contracting
Party
Formalities International
Bureau
InternationalRegister Gazette
Certificate
National/Regional Application or Registration
International Application
Notifica
tion
International Application: Procedure
Publication
Examination of the International Application in the International Bureau
Role of the International Bureau
The International Bureau examines the formalities such asInformation in the international applicationClassification of goods and services (Nice)Classification of figurative elements (Vienna)Fees
The International Bureau willRegister the mark in the International RegisterNotify the Offices of designated Contracting Parties, inform the Office of origin and send a certificate to the holder/representativePublish the mark in the WIPO Gazette of International Marks (e-Gazette)
3 Categories of Irregularities
Classification of goods and services (Rule 12)
Goods and services not properly classified
Office of origin to remedy
Indication of goods and services (Rule 13)
Too vague, linguistically incorrect, or incomprehensible
Office of origin to remedy
Miscellaneous (Rule 11)
Entitlement, basic registration/application number, priority, MM18, fees, etc.
Office or origin, applicant or both to remedy
Irregularity Rule 12: ProcedureProposal from the International Bureau (3-months time limit/2 months: reminder)
Office of origin’s response
The International Bureau withdraws (fees paid) = registered as filed
The International Bureau modifies or confirms (fees paid) = registered as per modification or International Bureau’s proposal
No response from the Office of origin
Fees paid = registered as per International Bureau’s proposal
Fees not paid = application abandoned (refund)
The International Bureau’s opinion prevails
Refund: fees paid minus ½ basic fee for a black and white reproduction
Irregularity Rule 13: Procedure
Suggestion from the International Bureau (3-month time limit)
Office of origin’s response
Accepted by the International Bureau = Registered as per the Office of origin’s opinion
Rejected by the International Bureau
Registered (term deleted if not classified)
Registered as filed (if term is classified, with annotation)
No response from the Office of origin
Registered as filed, with annotation
Irregularity Rule 11: Procedure
Proposal from the International Bureau (3-month time limit)
Office of origin’s / applicant’s response
Remedied = registered
Not remedied = application abandoned (refund)
No response from the Office of origin / applicant = application abandoned (refund)
Refund: fees paid minus ½ basic fee for a black and white reproduction
Date of the International Registration
Date of the IR (1)
The date of receipt of the international application by the Office of origin, provided it is received by the International Bureau within 2 months
The date of receipt by the International Bureau if it is received from the Office of origin later than 2 months
The date of the international registration may be affected if any of the following substantive elements is missing (Rule 15): identity of the applicant, designated Contracting Parties, reproduction of the mark, indications of goods and services
The date of the international registration will be the date the last missing element was received by the International Bureau
Date of the IR* (2)
Receipt of the international application by the Office of
origin
2 months
*
Receipt of the international application by the Office of
origin
2 months
Receipt of the international
application by the International Bureau
*
Receipt of the international application by the Office of
origin
2 months
Receipt of the international
application by the International Bureau
Receipt by the International Bureau of
the last missing element
*Receipt of the
(irregular) international
application by the International
Bureau
Effects of the International Registration
Effects of an International Registration
From the date of the international registration, the protection of the mark in each of the designated Contracting Parties is the same as if
the mark had been filed directly with the Office of that Contracting Party, and
the mark had been registered by the Office of that Contracting Party, if no refusal is notified within the applicable time limit
Examination in the Office of the Designated Contracting Party
The Role of the Office of the Designated Contracting Party
The role of the Office of the designated Contracting Party will be determined by the domestic legislation
The domestic legislations of the designated Contracting Parties set the conditions for protecting a trademark and determine the rights which result from protection
The Madrid system offers the possibility for these Offices to issue decisions on the status of protection
Provisional refusals
Statements of grant of protection
Further decisions
Invalidations
Examination Process in the Office of the Designated Contracting Party
The Office of the designated Contracting Party P will examine the request for extension of protection as if it was domestic applicationProvisional refusals must be notified to the International Bureau within a set time limitThe Office of the designated Contracting Party should send a statement of grant of protection to the International Bureau if all procedures before the Office has been completed before the expiry of the time limit and there are no grounds to refuse protection
RECEIPT OF
NOTIFICATION
SUBSTANTIAL
EXAMINATION
GRANT OF
PROTECTION
PROVISIONAL
REFUSAL
CONFIRMATION
OF REFUSAL
NATIONAL
REGISTRATION
DESIGNATED OFFICE
Communications from the designated Contracting Parties
Communications from designated Contracting Parties
Possibility of oppositions filed after 18 months (Rule 16)
Interim status (Rule 18bis)
Statement of grant of protection (Rule 18ter(1))
Provisional refusal (Rule 17)
Statement of grant of protection following a provisional refusal (Rule 18ter(2))
Confirmation of total provisional refusal (Rule 18ter(3))
Further decision (Rule 18ter(4))
Invalidation (Rule 19)
Provisional RefusalArticle 5
Rules 16, 17 and 18
Provisional Refusal
What is meant by “Provisional Refusal”?
Are there any restrictions on the right to refuse?
Time
Grounds
Time limits for notification of provisional refusal
12 or 18 months, or “18 months+”
The time limit runs from the date of notification from the International Bureau to the Office of the designated Contracting Party in question
Grounds for Provisional Refusal
General principle (Article 5(1))
Refusal may be based only on the grounds which would apply, under the Paris Convention, in the case of a mark deposited directly with the Office notifying such refusal
Non-valid grounds
Divergent opinion on the classification of the goods and services (Rule 12)
Banning of multi-class registration or obligation of a limited number of goods or services (Article 5(1))
Notification of Provisional Refusal (1)
Notification of provisional refusal is sent to the International Bureau
Notification of ex officio provisional refusal must contain
The Office making the notification
Number of the international registration
All the grounds on which the refusal is based
If the refusal is based on prior right(s), all relevant data concerning that mark
Whether the refusal affects all goods and services or an indication of which goods and services are affected
Time limit for filing a request for review/appeal, and to which authority
Notification of Provisional Refusal (2)
Where the provisional refusal is based on an opposition, or on opposition and on other grounds, the notification shall indicate that fact
In addition to the information in an ex officio provisional refusal, it shall contain
Name and address of the opponent
Where opposition is based on prior right(s), a list of goods and services on which the opposition is based
Provisional refusal is recorded in the International Register and transmitted to the holder
Irregular Provisional RefusalRule 18
Irregular Provisional Refusal (1)
Deficiencies
The notification is not signed
Details of conflicting mark(s) are not included
Goods and services affected are not mentioned
Particulars of the opponent and of the goods and services on which opposition is based are not mentioned
The provisional refusal is recorded
The Office is invited to rectify within 2 months
The holder receives a copy of the refusal and of the letter sent to the Office
Irregular Provisional Refusal (2)
Deficiencies
Time limits are not mentioned (for appeal/to file response to opposition)
Competent authority (for appeal) is not mentioned
Requirements to file (appeal or response) are not mentioned
The provisional refusal is not recorded
The Office is invited to rectify within 2 months
If rectified, it is recorded with date of defective refusal
If not, it is not considered as such
The holder receives a copy of the refusal and of the letter sent to the Office
Irregular Provisional Refusal (3)
The provisional refusal is not considered as such if it
Does not indicate any international registration number
Does not indicate any grounds for refusal
Is sent after the expiry of the refusal period
The International Bureau transmits a copy to the holder for information
The International Bureau informs both the holder and the Office
Interim Status of a Mark in a designated Contracting Party
Rule 18bis
Interim Status of a Mark in a designated Contracting Party
Optional communications from designated Contracting Parties on the status of protection of the mark
Interim status before sending a provisional refusal (Rule 18bis(1)(a))
Interim status after sending a provisional refusal (Rule 18bis(1)(b))
Final Disposition on Status of the Mark Rule 18ter
Final Disposition on Status of the Mark
Statement of grant of protection where no notification of provisional refusal has been communicated (Rule 18ter(1))
Statement of grant of protection following a provisional refusal (Rule 18ter(2))
Total or partial grant of protection
Confirmation of total provisional refusal (Rule 18ter(3))
Further decision (Rule 18ter(4))
InvalidationRule 19
Invalidation
The decision has observed due process
The effects of an international registration are invalidated and it is not subject to appeal
Content of the decision
Specifying the authority
International registration number and name of the holder
Scope of the invalidation
The fact that the decision is not subject to appeal
The date the decision was pronounced and, if known, the effective date
Questions ?
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