Madrid Protocol - Procedure after Registration (2023)

This page sets out the procedure under the Madrid Protocol after the World Intellectual Property Office (WIPO) has sent details of your registration or subsequent designation(s) to each of the designated offices. The future procedure is set out below.

Possibility of objection

Objections may be made by the designated office itself, or by third parties for some designations, if there are reasons to object under the law of that designation. If there is an objection for any of the designations, then that objection will be sent to WIPO by the designated office(s). If there are such objections, WIPO will tell us and we will report to you. If the objections are to be contested, then in general local trade mark attorneys will have to be appointed.

If there are no objections for a designation, the designation becomes fully effective.

(Video) Trademark Registration under Madrid Protocol | How to protect your brand worldwide

Time limits for objections

There are time limits of either 12 or 18 months (depending upon the designated office) in which the designated offices have to give notice of the objections or to issue a Statement of Grant of Protection. The 18 month period may be extended where an opposition is filed against the relevant designation. The time limit runs from the date of notification which appears on the registration certificate.

Designated offices which have a 12 month time limit include:

Austria, Benelux, Cuba, Czech Republic, France, Germany, Hungary, Moldova, Monaco, North Korea, Portugal, Russian Federation, Serbia and Spain.

Those having an 18 month time limit include:

Australia, Canada, China, European Union Intellectual Property Office, Denmark, Estonia, Eire, Finland, Greece, Iceland, India, Italy, Japan, Lithuania, Mexico, New Zealand, Norway, Poland, Singapore, South Korea, Sweden, Switzerland, Slovakia, Turkey and the United States.

Advertisement of registration or subsequent designation(s)

The international registration or subsequent designation(s) will be advertised in the WIPO Gazette of International Marks which is published electronically on WIPO's website; we will send you a copy of the advertisement.

Notes:

  1. The international registration is dependent for its first five years upon the basic application/registration remaining valid. If the basic application/registration fails for any reason and it is desired to maintain trade mark protection in any or all of the designated territories, then the new applications will have to be made in the relevant territories. However they will have a date going back to the date of the international registration including any priority.
  2. A designation of Denmark in an International Registrations and subsequent designations dated 11 January 2011 or later cover Greenland; International Registrations and subsequent designations dated 13 April 2016 or later also cover the Faroe Islands.
  3. A designation of China does not cover Hong Kong or Macau.
  4. A designation of France includes all overseas Departments and Territories.
  5. A designation of the European Union covers Gibraltar and Jersey, though the status of an EU designation under Gibraltarian law is not absolutely clear; there are conflicting views on this point.
  6. A designation of the United Kingdom covers the Isle of Man, Jersey and the Falkland Islands.

Designation of the European Union

The European Union Intellectual Property Office (EUIPO)1 treats these somewhat differently to directly filed EUTM2 applications; please see our separate information sheet for details.

(Video) Madrid Protocol: Applications originating from the United States

Direct communications from the designated office

Some designated offices (including the EUIPO) will sometimes write directly to the applicant on matters that are advisory (for example reporting publication of the designation) and which consequently do not require a response. Please forward us copies of such letters in order that we can monitor progress of the designation; there is not a mechanism for us to be sent them directly.

Adding designations to the registration

It is usually possible to add additional designations to an existing international registration, though these designations will have a later date than the original date of the international registration. For example it may be that a country/region was not a member of the Madrid Protocol at the time the original application was made and so it is decided to add it once it has joined. Or it might be that the existing designation in a given country did not cover all the goods/services in the International Registration and it is wished to extend the coverage.

Grants of protection

Some countries additionally issue registration certificates, or will do so on request though in the latter case, that will incur a charge. Obtaining national registration certificates for China is strongly recommended, as they are required for enforcement purposes.

In particular, the United States issues a registration certificate with a United States registration number.

Some offices send registration certificates directly to the applicant; if they do, please send us a copy so that we can keep our file up to date.

Maintenance of the registration

The international registration is due for renewal every ten years on the anniversary of the application date. It is possible to drop designations at renewal, and this will give some cost saving.

Some countries have special, additional, requirements for maintenance; these are detailed below.

Algeria

If Algeria is designated then a Declaration of Use has to be submitted to the Algerian Trademark Office when the designation is renewed.

(Video) How to apply International Trademark Online- Madrid Protocol of WIPO World Intellectual Property Org

Cambodia

If Cambodia is designated then it is additionally necessary to file a Declaration of Actual Use within a one year period following five years counting from the date on which protection was granted for Cambodia, and also within a one year period following five years counting from the date of each renewal of the International Registration. If valid reasons exist, it may be possible to file a declaration of Non-Use instead of a Declaration of Actual Use.

Eswatini

If Eswatini is designated then evidence of actual use has to be submitted to the Eswatini Trademark Office when the designation is renewed.

Mexico

If Mexico is designated then a Declaration of Actual and Effective Use needs to be submitted to the Mexican Trademark Office:

a) within the three months following from the date on which the designation reaches three years from the granting date
and
b) within three months following the renewal of the designation at WIPO.

Mozambique

If Mozambique is designated a Declaration of Intent to Use must be presented to the Mozambique Office within five years from the date that the Office is notified of the International Registration or the subsequent designation. Where the Office is notified of a subsequent designation less than five years before the due date for renewal, this declaration must be presented within five years from the date of renewal. Additional declarations must be presented within five years from each date on which the International Registration is subsequently renewed.

Phillipines

If The Philippines are designated then a notarized Declaration of Actual Use (DAU) has to be submitted to The Philippines Trademark Office:

• within three years from the date of the international registration or the date of recording of the territorial extension to the Philippines made subsequently to the international registration, as appropriate (3rd year DAU);
• within one (1) year from the fifth anniversary of the statement of grant of protection of the mark and within one (1) year from the fifth anniversary of the date of renewal of registration of the mark (5th year DAU); and
• within one (1) year from the date of renewal of registration of the mark (renewal DAU)

The United States

If the United States is designated then it is additionally necessary to submit a Declaration of Use/Excusable Reasons for Non-Use between five and six years from the date of issuance of the certificate of protection by the United States Patent and Trademark Office and within six months before each ten year anniversary of the issuance date. We will advise you of these dates when we forward the certificate of protection.

(Video) The Madrid Protocol and International Trademarking - Updated for 2019

---------------

We make it a practice to send reminders before renewals and other maintenance deadlines occur.

Two part designation fees

Currently two countries, Cuba and Japan, split their designation fees into two, one part being payable with the application for International Registration, and the second part when the designation is found allowable for protection. Failure to pay the second part of the fee by the set deadline will result in the designation being cancelled.

1 previously known as Office for Harmonization in the Internal Market (OHIM)
2 previously known as Community Trade Mark (EUTM)

This information is simplified and must not be taken as a definitive statement of the law or practice.

Topics: Trade Marks - General , Trade Marks - International , IP Protection

FAQs

Should I send my international registration to WIPO directly? ›

Submit the application to your Office of origin.

(Warning: Do not send it to WIPO!) They will check that it corresponds to the particulars of your basic mark. The Office certifies the international application and sends it to us.

How long does Madrid Protocol take? ›

In due course the national office will either register the mark or issue a rejection. The Protocol requires that they do so within 12 months to 18 months.

What is the process of Madrid Agreement? ›

The Madrid Protocol is an international treaty designed to simplify the international trademark registration process. Using this process, registrants are able to complete a single application, in their home language, that can then be applied to over 90 member countries.

How long does it take to get an international trademark? ›

How long does it take to obtain a registration? As a general rule, it takes approximately three to four months from filing the application to receiving the international registration certificate, assuming the application proves straightforward.

How do I check the status of my WIPO patent? ›

The PATENTSCOPE search is the free of charge search service provided by the World Intellectual Property Organization (WIPO) that allows you to access millions of patent documents, namely: International Patent Applications under the PCT Regional and national patent collections from all participating countries.

What is WIPO proof? ›

A WIPO PROOF token is a time-stamped digital fingerprint that proves the existence of a digital file at a specific date and time.

What is an international registration number? ›

WIPO will examine the information that your trademark office submits to make certain it is complete and that you have paid all of the appropriate fees. At that point, your trademark will become “registered” with WIPO. A registration number will be assigned to it and it will be known as an International Registration.

How much is the Madrid Protocol application? ›

The cost of an international trademark registration includes the basic fee (653 Swiss francs 1), plus additional costs depending on the nature of your mark, where you want to protect it, and how many classes of goods and services will be covered by your registration.

What is a provisional refusal? ›

provisional refusal means a declaration by the Office, outlining the grounds on the basis of which protection cannot be granted; it also outlines the deficiencies to be remedied by the holder; Sample 1.

Who can file Madrid application? ›

Who can use the Madrid System? You can use the Madrid System if you have a personal or business connection to one of the System's members. This means you must either: be domiciled, have an industrial or commercial establishment in, or be a citizen of one of the 128 countries covered by the Madrid System's 112 members.

Who can file Madrid Protocol application? ›

Who can use the Madrid System? You can file for international trademark protection if you are a national of – or have a domicile or business in – any Madrid System member. The intellectual property (IP) Office of that Madrid System member will be your "Office of origin".

How do I register for an international trademark? ›

You can file an international trademark application through the USPTO if: Your trademark is registered with the USPTO, or you have filed an application for registration; and. You are a national of, or domiciled in, the United States, or you have an industrial or commercial business in the United States.

How long does a Madrid trademark take? ›

Each office will decide, within 12 or 18 months, whether or not your trademark can be protected in their territories. WIPO will inform you of their decisions.

How many days will it take to get trademark approved? ›

7. How long does it take to register a trademark? Trademark Registration is a lengthy process and it takes around 18-24 months to obtain registration in a straight-forward case, without any objections or oppositions. However, the trademark application number is usually issued within one or 2 days after filing.

Why is my trademark taking so long? ›

There are several reasons it takes so long to get a trademark, including a 4-6 month backlog, applicant delays, and the multi-stage review process that all applications undergo. The U.S. Patent and Trademark Office (USPTO) receives so many new applications that it takes between 4-6 months just to start to review them.

How do I check if a patent is registered? ›

Patents may be searched using the following resources:
  1. Patent Public Search.
  2. Global Dossier.
  3. Patent Application Information Retrieval (PAIR)
  4. Public Search Facility.
  5. Patent and Trademark Resource Centers (PTRCs)
  6. Patent Official Gazette.
  7. Common Citation Document (CCD)
  8. Search International Patent Offices.
18 Oct 2018

Can you fast track a patent? ›

Track One is a program where applicants pay the USPTO for a faster disposition of their patent applications. Anyone can get Track One status for their patent application by paying $4,200 (reduced for smaller companies and individuals) at the time of filing the patent application.

Is WIPO certificate useful? ›

WIPO PROOF is also useful in managing valuable data sets such as scientific research data or data for training AI models, because the existence and possession of each iteration of a data set can be formally recorded in a matter of seconds.

What are the five main principle of WIPO? ›

- prioritizing research and development needs, - promoting research and development, - building and improving innovative capacity, - improving transfer of technology, and - improving delivery and access.

How many countries are under WIPO? ›

WIPO's member states determine the direction, budget and activities of the Organization through the decision-making bodies. We currently have 193 member states.

What registration code means? ›

noun. a sequence of letters and numbers assigned to a motor vehicle when it is registered, usually indicating the year and place of registration, displayed on numberplates at the front and rear of the vehicle, and by which the vehicle may be identified.

How do I check if a company is registered internationally? ›

To Check a Foreign Company Eligibility:
  1. Find information about its history, services, products, team, past clients, and references.
  2. Ask the company for missing information.
  3. Look for the company's reviews and verify them.
  4. Contact with past clients.
  5. Check if the company's email, phone number work.

How does the Madrid System work? ›

The Madrid System for the international registration of trademarks allows brand owners to apply and maintain protection in the different member states of the system via one single procedure, in one language and one set of fees. However, levels of protection can vary and the process is not without its shortfalls.

How much does it cost to register a brand worldwide? ›

You can file online for international trademark registration through TEAS for a filing fee of $100 per trademark class. Under a treaty called the Madrid Protocol, international trademark registration protects your mark in the 80 countries that are signatories, of which the U.S. is one.

How do I pay in Madrid? ›

In Spain you can pay in cash in almost all cases, and usually only Euros are accepted. In some cases, if the payment is made through a machine, it may be necessary to pay by card. The option to pay with credit and debit cards, mainly Visa and Mastercard, is very widespread.

How much does an international copyright cost? ›

The cost of filing a direct trademark application in any given country via a local attorney are about $1500-$2500. The cost will vary country by country (depending on the filing fee) and will vary depending on how much service and time you need from the local attorney.

How do I renew my Madrid Protocol registration? ›

You can file a request online for the renewal of an international registration, from three months before its expiration date until the end of the six-month grace period following this date and to pay the due fees using a Current Account at WIPO or a credit card.

How do I file a subsequent designation in WIPO? ›

A request for subsequent designation can be made directly to WIPO online using their E-subsequent designation. Once on the webpage you will be prompted to: enter an international registration number. elect the contracting party/parties to which protection of an international registration is to be extended.

Is UK part of Madrid Protocol? ›

International trade mark registrations protected in the EU under the Madrid Protocol will no longer enjoy protection in the UK after 1 January 2021.

How do I check my application status for Madrid? ›

View status online

Simply select “realtime search” in the left-hand column of the Madrid Monitor homepage, then indicate your basic application or registration number, or your international registration number.

How do I apply to Madrid? ›

You must:
  1. designate at least one Madrid System member. (this cannot be the member through which you are filing your international application);
  2. compile the list of goods and service to be covered by your trademark;
  3. provide a quality copy of the image of your trademark;
  4. pay all relevant Madrid System fees.

How do I register my business name globally? ›

You can apply for international trademark protection by filing an MM2 form, which is available on the WIPO website. Then, you can submit a hard copy to the U.S. office. There are 113 countries that currently offer protection under the Madrid Agreement, including China, France, Italy, Australia and the European Union.

How long does a trademark last? ›

Unlike patents and copyrights, trademarks do not expire after a set period of time. Trademarks will persist so long as the owner continues to use the trademark. Once the United States Patent and Trademark Office (USPTO), grants a registered trademark, the owner must continue to use the trademark in ordinary commerce.

Do I need an international trademark? ›

Whether you plan to manufacture goods overseas or your online retail shop reaches customers in Europe, you should consider registering your trademark internationally.

How do I register a brand with WIPO? ›

Trademarks are protected by intellectual property rights. How can I protect my trademark? At the national/regional level, trademark protection can be obtained through registration, by filing an application for registration with the national/regional trademark office and paying the required fees.

What are the four 4 steps to register the trademark? ›

The four steps to registration are: [1] business name search, [2] preparing the registration application, [3] submitting the registration application, and [4] responding to the USPTO examiner. Trademarks and Service Marks are used to protect business names, logos, and slogans.

Can I put TM on my logo without registering? ›

Anyone can use a TM symbol regardless of whether they've successfully registered the trademark, or whether they've applied for a trademark at all. Even if the trademark application is rejected, the owner can continue to use the TM symbol.

Can I register trademark by myself? ›

So, an individual can file for the registration of his trademark himself. The application can be filed online through the e-filing gateway available at the official website or in writing with the Indian Trademark Office (TMO).

How much time is required for a trademark to get registered after getting the status accepted & advertised? ›

After filing a trademark application, registering your trademark at Trademark Registry in India generally takes at least 6 -12 months.

How long does it take to register an EU trademark? ›

How long does the EU trademark registration procedure usually take? Registering an EU trademark usually takes around 4 to 6 months, if the trademark does not receive objections from the office or receive opposition/s from third parties.

How long does it take to register a trademark in Spain? ›

How do you obtain a Spanish trademark? By filing an application at the Spanish Patents and Trademarks Office (SPTO). The application process takes approximately between 6 and 15 months.

How do I know if my trademark was approved? ›

You can check the status of your application online at any time by using the Trademark Status and Document Retrieval (TSDR) system. Once your application is filed with us, you'll receive a serial number in your filing receipt.

What do I do after my trademark is approved? ›

  1. Use ® instead of ™ Once your trademark is registered, you are allowed to stop using the TM (™) or SM (℠) symbols and switch to the circled R (®). ...
  2. Monitor to prevent infringement. ...
  3. File renewals. ...
  4. Post-registration actions for your trademark.

What comes after formality check pass? ›

The status after the Formalities Chk Pass are as follows: Marked for Exam. Exam Report Issued. Accepted/ Objected.

Can I use my trademark while its pending? ›

Trademark applicants must wait until they have been given official approval from the USPTO before using the registered trademark symbol (®). Although using TM or SM is allowed at any time, using the registered symbol while a trademark is still pending is a criminal or civil offense in many jurisdictions.

How often do trademarks get rejected? ›

If you've filed a trademark application, you're probably excited to get started using your mark. But not so fast — according to the United States Patent and Trademark Office (USPTO), about 18% of applications are rejected.

What happens if my trademark gets rejected? ›

If your trademark has been refused by the USPTO, you can still use it in the marketplace. However, if it was refused because the government considered it to be too similar to another mark, then it's important to study the judgement carefully before continuing to use the trademark in commerce.

Can WIPO forms be signed electronically? ›

Electronic submission of forms to WIPO: Signatures

A handwritten signature is not mandatory. As usual, forms must be submitted using the online Contact Madrid service.

How do I register a trademark with WIPO? ›

Trademarks are protected by intellectual property rights. How can I protect my trademark? At the national/regional level, trademark protection can be obtained through registration, by filing an application for registration with the national/regional trademark office and paying the required fees.

Is WIPO a reliable source? ›

WIPO PROOF uses Public Key Infrastructure (PKI) technology to generate WIPO PROOF tokens. PKI technology is a well-established and reliable cryptographic technology that is one of the most internationally accepted and recognized digital certification methods.

Does WIPO protect copyright? ›

Using WIPO PROOF complements voluntary copyright registration systems by offering creators the possibility of recording and digitally certifying possession of the work. This digitally encrypted proof, which cannot be modified, can certify the existence of the work at a moment in time.

Are WIPO courses free? ›

The general courses are self-study and offered free-of-charge.

How do I get a form electronically signed? ›

  1. Open the email with a request to digitally sign your document.
  2. Click the link. ...
  3. Agree to electronic signing. ...
  4. Click each sign tag and follow the instructions to add your electronic signature where required to sign or initial.
  5. Adopt a signature to save your signature information.
  6. Confirm your signature by clicking FINISH.

Does WIPO issue renewal certificates? ›

A mark registered through WIPO's Madrid System is valid for 10 years, and can be renewed directly with WIPO every 10 years.

Who can file a Madrid Protocol application? ›

Who can use the Madrid System? You can file for international trademark protection if you are a national of – or have a domicile or business in – any Madrid System member. The intellectual property (IP) Office of that Madrid System member will be your "Office of origin".

What are the two main objectives of WIPO? ›

WIPO's two main objectives are (i) to promote the protection of intellectual property worldwide; and (ii) to ensure administrative cooperation among the intellectual property Unions established by the treaties that WIPO administers.

What are the 4 types of copyright? ›

« Back to FAQs What are the different types of copyright?
  • Public Performing Right. ...
  • Public Performance License. ...
  • Reproduction Right. ...
  • Mechanical Licenses. ...
  • Synchronization License.

What are 3 limitations of copyright? ›

Limitations of Copyright - Plagiarism Today.
...
Fair Use
  • The nature and character of the use. ...
  • The nature of the copyrighted work. ...
  • The amount and substantiality of the portion used. ...
  • The effect of the use upon the potential market for or value of the copyrighted work.

Who is owner of copyright? ›

The general rule is that the creator of the work is the owner of all copyright interests in the work.

Videos

1. How to Register a Trademark Internationally
(Gerben Intellectual Property)
2. International Trademark Registration process in English | Madrid Protocol Trademark Registration
(Sonisvision International)
3. Explained: What is WIPO's Madrid System?
(World Intellectual Property Organization – WIPO)
4. What Is Madrid Protocol?
(Trademark Factory)
5. Pros and Cons of Registering International Trademark under Madrid Protocol
(Jitendra Consulting Group)
6. How to use WIPO's Madrid System for International Trademark Registration
(World Intellectual Property Organization – WIPO)
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