Trade mark registration using the Madrid protocol

Trade mark registration using the Madrid protocol

*Approximate time scale (from filing date)

Notes

1. Applications must be based on a corresponding application or registration in the applicant’s ‘home’ territory. Where the applicant’s home territory is the UK, applications are filed through the UK Trade Marks Registry which then dispatches the papers to WIPO, the World Intellectual Property Organisation, in Geneva. They can also be based on EUTMs. The application must designate one or more member countries of the Madrid Protocol and must list the goods or services for which protection is sought. These goods and services must be ones that are covered in the earlier ‘home’ application or registration. The costs vary according to which, as well as how many, countries are designated.
2. The response can include argument or amendment of the registration or the withdrawal of the designation of a country where an objection has been raised. The result is that a registration may have different specifications of goods/services for different countries and may ultimately cover fewer countries than were originally applied for.
3. Depending on local laws, the designation may still be open to opposition post acceptance and therefore could still be refused. In the UK, and most of the other member countries, acceptance is published locally for opposition purposes. If no objections are raised within the 12-18 month period, registration in the relevant territories is automatic.
4. Renewal fees must be paid every 10 years to maintain registration. The cost varies according to the number of countries for which protection was accepted. Protection in a particular country can be abandoned by non- payment of renewal fees for that country.

Additional countries may be designated at a later stage.