Since the signing of the Madrid Agreement in 1891, a system for the international registration of trademarks (the Madrid System) has developed in parallel with national procedures. This system makes it possible for trademark owners to obtain trademark protection simultaneously in multiple countries by filing only one application in one language with one Office and paying a low fee.

1. Madrid System for International Registration of Trademarks

The main features of the Madrid System:

First, from the date of registration, the international registration has the same characteristics as the applicant in each A designated country has the same effect as a normal domestic application. Unless the trademark protection request is rejected within the specified time limit in accordance with its domestic laws in the designated country, this international registration is equivalent to a domestic registration in the designated country.

The Madrid System is a procedural system; as for the substantive requirements for trademark protection, the Madrid System does not affect the application of domestic laws.

Second, an international registration under the Madrid System can be regarded as multiple domestic registrations because it can be effective in multiple countries at the same time. Therefore, the post-management tasks of international registration, such as renewals, transfers, etc. for each relevant designated country, will be greatly simplified through a single simple operation at the International Bureau of the World Intellectual Property Organization (WIPO).

The Madrid System is a "closed system". It can only be used among member countries. Protection can only be obtained among member countries of the system, and it can only be obtained by doing business in one of the countries or because of other countries. National trademark owners obtain.

2. How does a country become a member of the Madrid System?

All members of the Paris Convention can become members of the Madrid System. Any country that is a member of the Paris Convention can accede to either the Madrid Agreement, the Madrid Protocol, or both if it wishes. Details of the accession procedure are provided in Article 14 of the Agreement and Protocol. In addition, intergovernmental organizations may accede to the protocol but not the agreement if certain conditions are met. To date, no such organization has joined the Madrid System.

The member states of the Madrid Agreement and the Madrid Protocol have formed an alliance called the Madrid Union, which is a special alliance formed in accordance with Article 19 of the Paris Convention. Each member of the Madrid Union is a member of the Madrid Union Assembly. The conference has two most important tasks: 1. Adopt the Alliance's program and budget. 2． Adopt and amend the Implementing Regulations, including determining the costs associated with the Madrid System.

The Madrid System is administered by the International Bureau of the World Intellectual Property Organization (WIPO), which is also the secretariat of the Madrid Union.

3. Who can apply for international registration?

Any natural or legal person who has an industrial and commercial place of business, residence or is a national of a member state of the Madrid Union and has a relationship with a member state of the Madrid Union can apply for international registration using the Madrid System. Chinese citizens can apply for international registration.

4. How to apply for international registration?

To apply for international registration, you must first go to your own national office to apply for national registration of the same trademark. Under the Madrid System, an application for registration must be submitted to the International Bureau of the World Intellectual Property Organization (WIPO) through the Office of origin (rather than directly). The basis for the application must be a national registration of the same trademark. Under the Madrid Protocol, it can be National registration application based on the same trademark.

Secondly, the applicant needs to fill out an international application form to specify the member country of the Madrid System in which he or she intends to seek trademark protection. ***There are three forms that are similar to the domestic application form. A. This application is only bound by the Agreement, B. It is only bound by the Protocol, and C. It is bound by both the Agreement and the Protocol.

Finally, the international application fees are paid, which include a basic fee of CHF 653 and a designation fee for each designated country. The designation fee may be the standard fee of CHF 73, or it may be a separate fee established by some member states of the protocol. When applying for an international registration in a country and the goods and services do not exceed three categories according to the Nice International Classification, the minimum fee is 726 Swiss francs.

However, if it is a relevant country designated under the protocol to charge individual fees, you must replace the 73 Swiss francs with the corresponding individual fees; for example, for three categories of individual fees, China’s standard is 689 Swiss francs, and the British standard is 689 Swiss francs. The standard is CHF 892, the Benelux standard is CHF 163, and the Italian standard is CHF 186. These fees may be paid directly to the International Bureau or through the Office of origin, provided that the Office of origin agrees to collect and transfer the international registration fees.

This is what applicants basically do when applying for international registration. Thereafter, the Office of the country concerned transmits the international application to the International Bureau of the World Intellectual Property Organization in Geneva.

How does the International Bureau process this international application?

The International Bureau only conducts formal examination of international applications, including classifying goods and services according to the Nice Classification. When the international application is deemed to be in order, the International Bureau will record the mark with the international registration number and international registration date in the International Register. The International Bureau will notify the country designated to protect the trademark, announce the trademark in the International Trademark Gazette of the World Intellectual Property Organization, and issue an international registration certificate to the applicant. The initial term of protection for an international registration is 10 years.

From the date of international registration, a trademark enjoys the same protection in each designated country as a trademark submitted directly to that country.

How do the Offices of designated countries apply their domestic trademark laws to international applications?

Basically speaking, the Office of the designated country has a time limit of one year (or 18 months under the Protocol, or longer due to objections) to conduct a substantive examination of the international registration in accordance with domestic law. The Office may refuse to grant protection in its home country if grounds for refusal exist under domestic law. In doing so, the Office of the designated State subjects it to the same domestic examination procedures and the same rejection, opposition, review and appeal procedures as applicable to domestic direct applications. When filing a review or appeal to the national authority or domestic court, registrants usually need to be represented by local lawyers. It can also be seen from this point that local lawyers can also actively participate in registration matters under the Madrid System.

If the designated country does not send a notification of refusal to the International Bureau within the prescribed period, or if it sends a notification of refusal and subsequently revokes the notification of refusal, the international registration in the designated country will have the same rights as in the International Bureau. Equivalence of trademarks registered in the State Register.

The Madrid System provides a simple way to manage trademark protection. If the holder of an international registration wishes to extend this protection to other member states of the Madrid Union that are not included in this registration, he may extend the effectiveness of the internationally registered mark in those countries by a simple application for subsequent designation. This also applies to registrations such as change of owner, deletion of goods and services or renunciation of protection in certain designated countries.

5. Under the Madrid System, how does the national competent office intervene in registration?

Under the Madrid System, the Offices of member states are directly involved in international registration matters and international registration management. On the one hand, the Office can receive and transmit international applications to the International Bureau as the Office of origin; on the other hand, the Office can become the Office of a designated country.

As the Office of Origin

——The international application must be based on an application or registration filed with the Office of origin, and must be submitted through the Office of origin; the Office may require the applicant Pay a handling fee to cover related expenses.

——The international application must be based on the same trademark that has been registered domestically in the relevant national office or a registration application has been filed with it. During the first 5 years of international trademark registration, the validity of the international trademark depends on the continued validity of this basic application or basic registration. If any relevant changes occur within the above period and affect the basic application or basic registration, the Office of origin shall notify the International Bureau.

——In addition, various applications can (and in some cases must) be submitted through the Office of origin; these applications include matters such as subsequent designation, registration of changes to international registrations, cancellation and renewal.

As the Office of the designated country

——The international registration or subsequent designation will be notified to the Office of each country designated by the applicant or holder.

The Office will conduct a substantive examination in accordance with domestic law. After examination, if the Office determines that the trademark cannot be protected in its own country, it will notify the International Bureau within the time limit specified in the agreement or protocol. The above-mentioned Offices will receive the relevant separate fees from the International Bureau or will be used to cover the fees for the international application or subsequent designation.

——Wherever possible, and at the request of the holder, the Office must enter in its register the situation in which an international registration replaces the relevant domestic registration. If the international registration in that country subsequently becomes invalid, the Office must notify the International Bureau of this fact.

As the Office concerned

An Office may be involved in the management activities of an international registration, in particular where a transfer makes it the national Office of the new holder of the international registration This is especially true (see “Office concerned” in the Implementing Regulations). In this case, various applications that might have been submitted by the Office of origin can instead be submitted by the national Office of the new owner.

6. Comparison between the Madrid Agreement and the Madrid Protocol

1. Compared with the Madrid Agreement, the Madrid Protocol has introduced some innovations. The Madrid Protocol was adopted to eliminate the difficulties that prevented certain countries from joining the Madrid Agreement. The main innovations in the protocol include the following:

——Applicants can apply for international registration based on national applications submitted to the Office of origin. Under the Agreement, international applications must be based on national registration with the Office.

——Contracting countries to the Protocol may choose a period of 18 months (instead of one year under the Agreement), or a longer period in the event of an opposition, to declare that the trademark cannot be protected within their own country.

——The Office of each designated country may receive more fees than under the Madrid Agreement.

——At the request of the Office of origin, if the international registration is canceled within 5 years from the date of international registration, the international registration can be converted into a national registration in the country where it is effective without losing the international registration. registration date and the original priority date, whereas this possibility does not exist under the Madrid Agreement.

2. The Madrid System is bound by two treaties: the Madrid Agreement on the International Registration of Trademarks signed in 1891 and the Protocol Relevant to the Madrid Agreement on the International Registration of Trademarks adopted in 1989. The latter was established to make the Madrid system more flexible and more adaptable to the domestic legislation of certain countries that failed to join the Madrid Agreement. In addition, the Madrid Protocol opens the door to members of intergovernmental organizations that implement regional trademark registration systems. The two treaties are parallel and independent but can be operated jointly. Their joint implementation rules came into effect in 1996.

The Madrid Protocol was adopted to eliminate the difficulty of certain countries not being able to join the Madrid Agreement. Technically speaking, compared with the Madrid Agreement, the Madrid Protocol introduces some innovations:

- Applicants can apply for international registration based on a national application filed with the Office of origin. Under the Agreement, the international application must be based on a national registration with the Office;

- Contracting States to the Protocol may choose a time limit of 18 months (instead of one year under the Agreement), or in the event of an objection longer period to declare that protection of the mark cannot be granted in that country;

—the Office of each designated country may receive a higher fee than under the Madrid Agreement (in other words, a separate fee );

——At the request of the Office of origin, if the international registration is canceled within 5 years from the date of international registration, the international registration can be converted into a national registration in the country where it is effective without loss. The international registration date and the original priority date (this possibility does not exist under the Madrid Agreement);

-The protocol makes it compatible with regional trademark systems (such as the European Union) the possibility of establishing contact.

7. Differences between the Agreement and the Protocol

The international registration of trademarks in Madrid is divided into contracting parties to the Agreement and contracting parties to the Protocol because there are some differences between the Agreement and the Protocol. The main differences are As follows:

(1) National basic registrations are different

If a trademark applies for international registration, and the country designated for protection is a member of the agreement, the trademark must be a registered trademark. File an application for international registration; when the country designated for protection is a member of the pure protocol, the trademark is either a registration application that has been accepted by the Trademark Office or a registered trademark.

(2) Different working languages

The working language used in the agreement is only French; the working language used in the agreement can be selected from French or English.

(3) Fees are different

If the country for which the trademark applied for international registration is designated for protection is a member of the Agreement, the application only needs to pay the unified fees stipulated in the Madrid Agreement. Yes; if the country designated for protection of the trademark is a member of the pure protocol, in addition to paying the unified fee stipulated in the Madrid Agreement, the application also needs to pay individual fees in accordance with the regulations of each country.

(4) Different rejection periods

The examination period for member states of the Agreement is twelve months, that is to say, an internationally registered trademark starts from the date when the international registration is registered by the International Bureau. , the applicant has not received a rejection notice for about 12 months, and the trademark has generally been protected in the designated country; and the review period for member countries of the Protocol can be 12 months or 18 months.

(5) The relationship between national basic registration and international trademark registration is different

An internationally registered trademark designated for protection in a member country of the agreement, within five years from the date of international registration, if the If the domestic registration of a trademark has been revoked or canceled in whole or in part, then, regardless of whether the international registration has been transferred, the internationally registered trademark will not be protected in all designated countries, that is to say, the international registration will be revoked at the same time; in a pure protocol For an internationally registered trademark designated for protection by a member country, within five years from the date of international registration, if the domestic registration of the trademark has been fully or partially revoked or canceled, the trademark owner may, after the trademark has been fully or partially revoked or registered, The trademark owner can convert the international trademark registration by submitting an application to the trademark authority of the designated member state of the Protocol within three months from the date of cancellation and paying a certain fee in accordance with the regulations of each member state. Register for the country.