Madrid Trademark International Registration Process

A legal person or natural person who determines that China is the country of origin in accordance with the Agreement and the Protocol applies for international trademark registration through the Agreement or the Protocol. , you must first obtain trademark registration and preliminary approval in China or the application has been accepted. To apply for international trademark registration, you can directly go to the Trademark Office or mail it, or entrust an agency to handle it.

When applying for late designation, transfer, deletion, abandonment, cancellation, change of the registrant’s name or address, change of the agent’s name or address, renewal, designation of an agent and other related matters for international trademark registration, the applicant shall You can go to the Trademark Office directly or entrust an agent to handle it; you can also entrust an agent or go directly to the International Bureau of the World Intellectual Property Organization (hereinafter referred to as the International Bureau). However, applications for later designation, transfer, deletion, abandonment, and cancellation of international trademark registrations related to member states of the Madrid Agreement must be handled through the Trademark Office.

Trademark announcement, registration certificate, renewal certificate and other notices. Once a trademark applying for international registration is registered in the International Register, the International Bureau will be responsible for publishing it in the "World Intellectual Property Organization International Trademark Announcement". It is announced once a week and anyone can order it; trademark registration certificate and renewal certificate and other relevant notifications shall be sent directly by the International Bureau to the applicant, holder or their agent.

Conditions for international trademark registration in Madrid

Chinese applicants must meet one of the following conditions to submit an international trademark registration:

1. Submit an application in accordance with the Madrid Agreement (Designate countries as agreement countries): Trademarks applying for international registration must be approved by the Trademark Office of the State Administration for Industry and Commerce of China (hereinafter referred to as the Trademark Office).

2. Submit a registration application in accordance with the Madrid Protocol (designated countries as agreed countries): Trademarks applying for international registration must be accepted by the Trademark Office, or the registered trademark must be approved.

3. The content of the trademark applied for international registration must be completely consistent with the content of the applicant’s domestically registered trademark, and the designated goods should be the same as the domestically registered goods or not exceed the scope of the originally registered goods.

Benefits of international trademark registration in Madrid

1. Low cost

When registering a trademark internationally through the Madrid Agreement, you have to pay a fee for each country you designate. A designation fee. However, the cost of designation in each member state is less than the cost of registering in each country individually. First of all, the designation fees within the three categories of Madrid Agreement countries are unified at 100 Swiss francs, which is lower than the actual trademark official fees in most of these countries. Secondly, although the fees of Madrid Protocol countries vary from country to country, Basically, it is just the actual trademark official fees in these countries, and no additional costs are incurred.

2. Save time

The date of international trademark registration shall be the date when the National Trademark Office receives the application documents. When the application procedures are complete, the Trademark Office will prepare an application number and send the application documents to the International Bureau within 2-3 months. If the trademark international registration application procedures are complete, it will take about 3-4 months, and the International Bureau can issue a trademark registration certificate. Counting from the date of international registration, if you do not receive a rejection notice from an agreement country or a protocol country within 18 months from the date of international registration, it means that the trademark has been registered in the agreement country or the protocol country. For those countries where the actual examination period is very long, this provision greatly shortens the time that applicants have to wait to obtain trademark registration protection in that country.

3. The procedure is simple

The applicant for international trademark registration submits an application to the Trademark Office of his or her country by himself or through an agency in his country, and directly submits the application to the International Bureau of the World Intellectual Property Organization through the Trademark Office. When handling international trademark registration, you can designate many countries to apply for protection. There is no need to entrust a foreign agency to apply on your behalf, and the procedure is simple.

Disadvantages of Madrid International Registration

1. The number of countries with international registration is limited

Because the Madrid Agreement was first proposed by countries that implement the principles of trademark registration , therefore, obtaining domestic registration in the country where it belongs is a prerequisite for applying for international registration, which limits the enthusiasm of some countries that implement the principles of trademark use;

As of now, there are only more than 80 countries that are members of the Madrid Union. There are also some important countries with close trade ties with my country that are not yet members. Most countries in North America, South America, the Middle East, Africa, and Southeast Asia are still outside the system, including Canada, Brazil, Argentina, Malaysia, Thailand, Indonesia and other important trading partners of our country. Chinese companies are unable to obtain trademark registrations in these countries through the Madrid international registration route, and have to choose country-by-country routes to apply for trademarks at the same time.

2. It is required to be based on domestic application and registration

International registration must be based on domestic trademark application and registration. Under the Madrid Agreement, the application must be based on the domestic registration or preliminary application announcement of the same trademark; under the Madrid Protocol, the application must be based on the national registration application for the same trademark, therefore, there are certain restrictions on the time of application .

3. Limitations of advance search methods for internationally registered trademarks

In the Madrid International Trademark Registration System, only international trademark information registered through this system can be searched. However, in the Madrid System, There is no unified search and query capability for trademark information in each member country. Therefore, for a trademark that is to be registered as a national standard, if you need to know in advance the feasibility of registration of the trademark in the designated country and region, you can only search it one by one through the country's trademark agency or lawyer's office and the specific trademark situation in the country. Inquiry and analysis judgment. And, as is the case when registering on a country-by-country basis, there are additionally high search search fees, the results of which depend on the agency and agent conducting the search.

4. The handling of matters that arise during the registration application process is the same as when registering one by one country

The International Trademark Office is only responsible for the Madrid and international registration applications submitted by the applicant. The competent trademark authorities of designated countries transmit relevant application documents, and the trademark authorities of each designated country will review the applied trademark in accordance with the laws and regulations of their own country. If the trademark administration authority of a certain country considers that the trademark application does not comply with the legal provisions of the designated country and requires modification, or is rejected (partially or completely), or is opposed by others, and requires a defense, reexamination, etc. When a matter arises, the International Trademark Office is only responsible for transmitting relevant notifications, and is not responsible for forwarding legal documents such as reexamination or defense documents that the applicant needs to submit to the contracting party. At this time, the applicant can only entrust an agency recognized by the contracting party. submit. It is necessary for the trademark applicant to entrust an agent (lawyer) from the designated country to handle the relevant legal procedures through the relevant agency, and to pay the corresponding defense, review and other fees and (attorney fees) fees. The handling of these trademark matters is the same as when registering on a country-by-country basis, and there are no advantages to Madrid international registration.

5. There is no unified registration certificate

Although Madrid International Registration can quickly receive an international registration certificate and international registration issued by the International Trademark Office after filing an international registration application No., but the international registration certificate of the trademark is very simple, and is only a certificate for the international registration application of the trademark. Its effect is only equivalent to the domestic acceptance notice, and is not a valid legal document that can protect the trademark in the designated country. At present, only a few contracting parties can issue a trademark registration certificate for the designated country after approving the international registration application (such as the United States, Japan, etc.), and the trademark authorities of most contracting parties generally after review No registration certificate or approval notice is issued, but only a notice stating that it is protected in that country. Some countries do not even have a protection declaration document, and it only means that it is automatically protected. A notice of rejection will be issued to the applicant only if the trademark has been rejected in whole or in part. Therefore, the applicant can only infer whether his trademark has been approved by the competent authority of the relevant contracting party by calculating the rejection period.

For domestic applicants who are used to having a registration certificate stamped by the trademark authority, not having a registration certificate will make them feel a little unreliable. Applicants from most countries also have the same idea. .

If you really need to prove that the trademark is protected in the designated country, you will need to issue a trademark registration certificate to the trademark authority of that country and pay relevant fees.

6. The instability of the registration effect

Since international registration requirements are based on domestic applications and registrations, they can only be decoupled from the registration in the country of origin after five years. Therefore, once the registration in the country of origin is If a registration is revoked within five years, the international registration will also be revoked. This situation is also known as the central strike principle.