The Madrid System at a glance
The Madrid System, made up of the Madrid Protocol and the Madrid Agreement, lets trademark owners use a single route to extend a trademark application to other countries. The process has a few moving parts, so it helps to know the basics before you start.
Who can apply
Not everyone qualifies. You can file an international registration application if at least one of the following applies to you:
- You have a genuine and active industrial or commercial presence in a country that is a member of the Madrid Agreement or Protocol.
- You are domiciled in such a country.
- You are a national of such a country.
- You have a genuine and active industrial or commercial presence in the territory of an intergovernmental organization that is a member of the Protocol, or you are domiciled there.
- You are a national of a Member State of such an organization.
Applicants can be individuals or legal entities.
A practical example
Say you live in the USA. You would first register your trademark there, and then extend it to other countries through the Madrid System. The same logic applies if you are a national of another country. In this context, the "country in which the trademark you wish to extend is registered" means your home country or domicile, as described above.
How the extension process works
To extend your trademark to other members of the Madrid System, you submit your request to WIPO through the trademark's Office of origin. Each country where you want protection then reviews the trademark and can accept or reject it. Once the member countries accept it, WIPO publishes and records the trademark, notifies the designated parties and issues the certificate.
Examination, objections and oppositions are handled individually by each trademark office. From the registration or recordal date, the mark's protection in each Contracting Party is the same as if it had been filed directly with that Party's Office. Likewise, if no refusal is notified to the International Bureau, or if a refusal is later withdrawn, the mark's protection in that Contracting Party is the same as if that Party's Office had registered it.
What happens if there is an objection or opposition
If a trademark office objects to your application, or a third party files an opposition, the attorney in your base country cannot respond to the trademark office directly. That attorney will need to hire a local attorney to do it.
Already filed a WIPO registration and need an attorney to handle an objection or opposition? Please fill out the contact form below and the Marcaria.com team will get back to you.