Know about International Trademark Registration system – The Madrid System

If a brand owner seeks to register its trademark in multiple jurisdiction, then Madrid System provides for a convenient and cost effective process. The brand owner can file a single application in one language and pay one set of fees to apply for protection in 122 countries.

Madrid System is the most convenient way to apply, modify, expand and maintain one’s international trademark portfolio.

Can I file my international application under the Madrid System?

If you are domiciled, have an industrial or commercial establishment in, or be a citizen of one of the 122 countries covered by the Madrid System member countries, then you can file your international trademark application under the Madrid System.

What is the international trademark application process?

Stage 1 – Application through Office of Origin

Before the brand owner can file an application under the Madrid System , they must have already registered or have filed an application , in their home IP office – which is referred as the Office of Origin.  This registration or application at the Office of Origin is also known as the basic mark . The international application is then submitted through the Office of Origin, which certifies and forwards it to WIPO.

Stage 2 – Review of trademark application by WIPO

Once WIPO receives the international application, it does a formal examination of the mark for obvious errors. Any inconsistencies and errors in the application is informed. Once the mark is approved, WIPO will document and publish the domestic basic mark in the International Register. It will then be published in the WIPO Gazette of International Marks. WIPO will then inform the IP office of each member named in the application.

Please remember that this DOES NOT MEAN that the application is officially approved by the designated trademark office. It also doesn’t mean that the applicant officially hold an active international trademark for their product(s).

Step 3:  Examination by dedicated National office

The designated IP offices will review the application and will communicate its decision within the prescribed time limit (12 or 18 months, as applicable). WIPO will record the decision of the office in the international register and inform the applicant, accordingly.

Benefits of international trademark registration

If you have a global presence and seek to register your brand in different territories, then filing under Madrid system host a number of advantages, few of which are:

1. The centralised filing system is effective, low cost and time saving.
2. One application for multiple territory, in one language and in one currency.
3. Only one date to attend to renewal of the trademark, in multiple jurisdiction.
4. Process and time line is predictable.
5. No need to appoint local representative for each designated territory.

If you would want to move further with your international application, or want to conduct a search prior to filing or want us to monitor your existing international application  or want to get a better understanding on how to manage a registration then please contact IMC group, today.