Important information about registration under the Madrid system
International registration of a trademark is best done through the Madrid registration system. An international registration under the Madrid System is based on a filed baseline national application. It is worth noting the special convenience in registration under the Madrid system, in contrast to registration with national offices, due to a single application and savings on fees and services in each individual country
If you are planning an international registration, it is important to take this into account when filing the basic (first) application, since different countries have their own peculiarities during the examination of trademark applications. For example, countries have specific words, symbols that are unregistered, which is not obvious in Russia. There are also some individual requirements for the designations to be registered. In this regard, if you are planning to register a brand in the United States, you must take this into account when filing an application to the Russia.
International registration options
Currently, there are two ways to obtain legal protection for you trademark in other countries: national Registration, in which national patent attorneys apply, and the Madrid System, in which applications are filed with the Bureau of the World Intellectual Property Organization (WIPO) through the patent office of any country - members of the union. National registration involves filing an application separately in each country when there is one international application in the Madrid system. After the application is accepted, the certificate in the Madrid system will be valid for 10 years with the possibility of renewal, while the National Registration in each country has its own certificate validity periods.
What is the Madrid Trademark Registration System?
The Madrid System is a type of international registration of trademarks that are registered in businesses or individuals residing or being citizens of any of the states of the Madrid Union. The price of services for the international registration of a trademark under the Madrid system is determined by the number of ICGS classes for which the applicant applies, the features of the mark itself and the amount of state fees and charges in each country specified in the application.
The Madrid System for the International Registration of Trademarks allows a trademark to be protected in a large number of countries at once by filing just one application with WIPO.
In the history of international registration, the Madrid Agreement was concluded in 1891, and in 1989 the Madrid Protocol was signed, to which there are more than 100 member states.
The Madrid Protocol and the Madrid Agreement are different concepts, although they are similar. The fee for the international registration of a trademark of the Madrid Agreement is slightly different from the Madrid Protocol. Thus, for example: those who seek legal protection of a trademark under the Madrid Agreement will have to wait 12 months, and consideration under the Madrid Protocol will last a little longer - up to one and a half years. Also, the basis for filing an application for registration in countries participating in the Madrid Protocol is the filed application or basic national registration of the trademark. For the states parties to the Madrid Agreement, basic registration is required, one application is not enough.
Opportunities to expand the geographic scope of the Madrid trademark
It is possible to expand the geographical scope of the trademark in the Madrid system. The Madrid system allows you to obtain legal protection for the designation (brand, logo, trademark) in foreign countries by filing an international application through your national intellectual property office. And this system operates on the basis of international treaties. Thus, for example, if there is already a certain number of countries, then we can add several more countries to the list.
Benefits of registering rights in several countries
An international registration allows a trademark to be unprohibited if it is registered in the Madrid System. In an international registration, a company or an individual gets the opportunity to generate additional profit on the basis of the sale of rights to use a trademark (for example, under a license agreement). And also, in the event of illegal exploitation of your trademark, an individual or legal entity will be able to defend their rights before court and demand compensation for damage.
Basic fees for registration of a trademark under the Madrid system
- CHF 653 franc per sign in black and white
- CHF 903 franc per sign in color
The final amount of fees must be calculated individually
- Registration period: 6 - 12 months
- Instant assignment of the application number
- Publication of the Application in the WIPO IB Register
- Preparation of a package of documents
- Translation of classes MKTU
- State fees payment instructions
- Answers to formal requests
- Control of prosecution
- Registration period: from 9 months
- Preparation of a package of documents
- Translation into the national language of a patent office
- Client notification of the progress of the process
- Control of prosecution
and guarantees of the company
and company experts
Entrepreneur, co-owner of several companies. He is the author of patents, computer programs, understands the technical intricacies of patents and the legal aspects of their protection. In matters of intellectual property, he understands from a practical point of view - the profit that can be obtained from the rights to patents, trademarks, copyrights.
Inventor, carries out professional activities in the field of protection and protection of intellectual property since 2004 - patent attorney of the Russian Federation No. 1232 from 23.05.2008, field of activity: inventions, utility models, industrial designs.
Leading specialist in the international registration of trademarks under the Madrid Protocol in non-CIS countries, as well as direct registration of trademarks in the CIS countries. For more than 9 years she has been engaged in the registration of trademarks both in the Russia and abroad.
She has extensive practical experience in registering difficult trademarks and solving related legal issues.
Author of over 20 scientific papers. He has extensive experience in the implementation and protection of R&D results, a specialist in the development and protection of exclusive rights to computer programs. In 2009 he defended his thesis for the degree of candidate of technical sciences.