Wipo Madrid Agreement concerning the International Registration of Marks

An application for international registration (international application) may be filed only by a natural or legal person who, by establishment, residence or nationality, has a connection with a Party to the Agreement or Protocol. The international application must contain, inter alia, a representation of the mark (which must be identical to that of the registration or basic application) and a list of the goods and services for which protection is sought, classified according to the International Classification of Goods and Services (Nice Classification). The refusal shall be communicated to the holder of the registration or his representative to the International Bureau, recorded in the International Register and published in the Official Journal. The procedure after a rejection (e.B. an appeal or a review) is conducted directly by the competent administration and/or tribunal of the Party concerned and the Holder without the participation of the International Bureau. However, the final decision on the rejection must be communicated to the International Bureau, which registers and publishes it. An international application must be filed with the International Bureau through the Office of origin. An international application filed by the applicant directly with the International Bureau will not be considered as such and will be returned to the sender. The Office of a designated Contracting Party examines the international registration in the same way as an application filed directly. If, in the course of the ex officio examination, grounds for opposition are established or an opposition is filed, the Office shall have the right to declare that the mark is not eligible for protection in that Contracting Party. The Madrid system offers several advantages to brand owners.

Instead of filing a separate national application in several different languages in each country of interest in accordance with different national or regional procedural rules and paying several different (and often higher) fees, an international registration can be obtained by simply filing an application with the International Bureau (through the Office of the country of origin). in one language (English, French or Spanish) and payment of a number of fees. At the end of the five-year period referred to in paragraph 34, the international registration shall become independent of the basic registration or basic application. An international registration is valid for 10 years. It may be extended for further periods of 10 years from the payment of the prescribed fee. The International Bureau will send a reminder to the holder and his representative (if any) six months before the renewal expires. Any State that is a Party to the Paris Convention for the Protection of Industrial Property may become a Party to the Convention or to the Protocol, or both. In addition, an intergovernmental organization may become a party to the Protocol (but not to the Convention) if the following conditions are met: at least one of the Member States of the Organization is a Party to the Paris Convention and the Organization has a regional office for the registration of marks with effect in the territory of the Organization. The Contracting Party whose Office is the Office of origin may not be designated in an international application; Nor can it be named retrospectively. The mark which is the subject of an international registration may not be modified at the time of renewal or at any other time. Nor can the list of goods and services be modified in such a way as to extend the scope of protection.

For a period of five years from the date of its registration, an international registration shall remain subject to the mark registered or applied for at the Office of origin. If and to the extent that the basic registration loses its effects within that five-year period, whether by deletion due to a decision of the Office of origin or a court, by voluntary erasure or by non-renewal, the international registration shall no longer be protected. Where the international registration is based on an application addressed to the Office of origin, it shall also be cancelled if and to the extent that the application is refused or withdrawn within the five-year period or if and to the extent that the registration resulting from that application ceases to have effect within that period. The Office of origin is required to inform the International Bureau of the facts and decisions concerning such cessation of effect or refusal and, if necessary, to request the cancellation (if any) of the international registration. The repeal shall be published in the Official Journal and notified to the designated Contracting Parties. . . .