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- An Overview of The Madrid Protocol - Red Points
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- Madrid – The International Trademark System
- International registration of trademarks
The second approach, known as the Madrid System, is more streamlined. The purpose of the Madrid System is to simplify the procedure and reduce the cost of registering a trade mark in multiple countries. This is achieved by filing a single application for registration, designating the countries in which protection for the mark is required. The International Application is filed in one language and the application fee is paid in one currency. However, there some traps for the unwary and it is not possible to use the Madrid System to protect a trade mark in some countries.
New Zealand is a recent signatory of the Madrid Protocol, and it is expected New Zealand trade mark owners will be able to start using the System to register their trade marks internationally on 10 December The Madrid System refers to two treaties, the Madrid Agreement and the Madrid Protocol, the purpose of which is to simplify the procedure and reduce the cost of registering a trade mark in multiple countries.
This is achieved by filing a single application for registration, in one language and with one set of fees in one currency, designating the countries in which protection for the mark is required. Not every country is a member of the Madrid System, and as such it is not possible to use the System to protect a trade mark in those countries although protection can still be obtained by filing a national trade mark application in each country. New Zealand is a recent signatory to the Madrid Protocol, and it is expected New Zealand trade mark owners will be able to start using the System to register their trade marks internationally on 10 December To use the System, the applicant must have a real and effective industrial or commercial establishment in, or be domiciled in or a national of, a country which is a member of either the Madrid Agreement or the Madrid Protocol.
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The applicant must also have at least filed an application to register their trade mark in New Zealand, on which the International Application will be based. If there are any deficiencies in the application, the applicant will be notified of these and given an opportunity to correct them.
- Filing from New Zealand.
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At that point, each Office will examine the application according to its national trade mark law. If no objections are raised, each Office will issue a statement of grant of protection in the country concerned.
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If any objections are raised in respect of a particular country, these will be communicated to the applicant via IPONZ. The objections will need to be overcome before protection for the mark will be granted in that country. However, in order for the protection for the mark under the International Registration to take effect in each designated country, protection must not be refused by the national Trade Mark Office of each country within a specified period.
An Overview of The Madrid Protocol - Red Points
If an Office has no objection to the protection of the mark according to its national law, the mark will be protected in that country in the same way as if an application for registration had been lodged initially at that Office. Yes, New Zealand trade mark owners are now able to use the Madrid System to register their trade marks internationally. If you are interested in protecting your trade mark overseas in a number of countries, then the Madrid System is certainly worth considering as the means to achieve this goal.
However, the System may not be suitable for every situation. Our trade mark specialists will be able to prepare an appropriate strategy for protecting your trade mark in New Zealand and overseas. An International Application can be filed in the name of a legal entity or by a natural person. However, for New Zealand applicants the applicant must:. Obtaining trademark protection in several countries by filing separate applications is both a complicated and expensive process, as the trademark laws may significantly differ from one country to another.
By filing a single application for international registration under the Madrid Protocol, on the other hand, a trademark owner can obtain trademark protection in up to countries.
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Therefore, the Madrid Protocol provides a simple cost-effective solution to the problem of protecting trademarks in several countries. This article provides an overview of the Madrid Protocol describing its key features, member countries, its significance, Madrid Protocol filing and designation, and Madrid Protocol Database and Trademark Search. The Madrid Protocol is an international treaty, administered by the International Bureau of the World Intellectual Property Organization WIPO , that provides a cost-effective single application system for obtaining and maintaining trademark registrations in up to member countries.
Moreover, once the trademark is granted in designated countries, a trademark owner only needs to file a single request with WIPO to renew the international registration when required, which would take effect in all designated member countries. This further simplifies maintaining and managing trademarks in several countries and results in considerable cost savings. The members include three regions comprising several countries as provided below:. A list of all members of the Madrid Protocol is provided below listed in alphabetical order :. For example, to register American trademarks , the Applicant should register first in the United States, then the process may continue for other nations through the Madrid Protocols.
The application can be filed in either English, French or Spanish. When filing the international application, the Applicant is required to designate at least one member country of the Madrid Protocol other than the home country.
Madrid – The International Trademark System
WIPO checks that the basic filing requirements have been fulfilled, and if so, enters the mark in the international register granting international registration. The scope of protection of the trademark will be evaluated by the designated National IP Offices. After the mark has been entered on the international register, WIPO then sends copies of the international application to the trademark offices in the designated countries for examination and registration of the mark.
The designated member countries have a period of 12 or 18 months which is extendable if the trademark is opposed by a third party during examination to either grant the trademark issuing a Statement of Grant of Protection or reject the application. Fees for renewing trademark registrations vary from country to country.
To find out how much you have to pay in other countries, contact your patent attorney or the patent office in the country in question. Dato: mandag Ja Nei. Home Services Trademarks Apply for a trademark in other countries International registration of trademarks. International registration of trademarks If you are planning on using your trademark in several countries, it is a good idea to use the international application system known as the Madrid Protocol.
By filing one application you can apply for trademark registration in many countries at the same time.
International registration of trademarks
Norwegian basic application As a Norwegian applicant you must have a national application or registration as a basis before you can apply for international registration. Which countries should you choose? How to apply? Advantages of using Madrid e-Filing: Automatic import of data in the application. Data is imported from your basic application directly to your international application. Payment of all fees is made in the Madrid e-filing service. You can pay by credit card, through your WIPO account or bank account. NIPO validates your application directly in the Madrid e-filing service.
Communication about your application is done electronically through the service. Updated application status in real time in your WIPO account overview. The service covers the entire registration process. Read more about how to apply for international trademark registration More information on WIPO's website: Information on filing an application Application forms kode MM2 for downloading Processing time Processing time in each country may vary, but is not normally longer than 18 months.
Benefits of applying via the Madrid Protocol It is easier and cheaper to submit one international application under the Madrid Protocol than to apply in each country separately.