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An Iryna

Head of Commercial and Civil Law Practice

Lawyer, specialist in intellectual property. Specializes in registration and protection of copyrights, inventions, patents, trademarks, as well as development of intellectual property transfer agreements, license agreements.

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Registration of an international trademark through the Madrid system

In today’s globalized world, where business crosses borders and markets span continents, the protection of intellectual property rights has become a paramount concern. One of the key components of protecting your brand and ensuring its exclusivity is registering your trademark. For companies with international ambitions, the Madrid System offers an efficient and effective solution for the simultaneous registration of trademarks in multiple jurisdictions.

The Madrid System, established by the Madrid Agreement (1891) and the Madrid Protocol (1989), is an international trademark registration system administered by the World Intellectual Property Organization (WIPO). This allows trademark owners to seek protection for their marks in multiple countries with a single application. This system simplifies the process of obtaining international trademark protection, making it an invaluable tool for companies seeking to expand their operations worldwide.

Advantages of trademark registration through the Madrid system

  • Cost Effectiveness: Traditionally, registering a trademark in multiple countries required filing separate applications with each national or regional trademark office. The Madrid system eliminates this need by reducing the administrative costs associated with multiple applications.
  • Simplicity and convenience: The Madrid system streamlines the entire process thanks to one application in one language and one set of fees. Changes of ownership, name or address can be managed centrally, saving time and effort.
  • Global reach: The Madrid system covers more than 120 countries, covering significant economies around the world. This ensures that your trademark is protected in the regions that matter most to your business.
  • Flexibility: new countries can be added to the registration later than the application date with the Madrid system, this is a great adaptation option for companies with a development and expansion strategy.
  • Global search: Prior to the Madrid system, this search was complex and required careful research into each jurisdiction of interest. While this examination does not replace the need for due diligence, it does provide a degree of preliminary assessment.
  • No need for patent attorneys in every country: Traditionally, obtaining international trademark protection required hiring attorneys who have knowledge of each country’s trademark laws. This significantly increased costs and created complexities that can hinder business, especially small businesses with limited resources. Using the Madrid system, trademark owners can file their applications directly through their national or regional trademark office, using a single application form and a single language.

The process of registering a trademark through the Madrid system

  • Basic Application: To initiate the process, a trademark owner must have an existing national trademark application or registration in their country (known as a “basic application” or “basic registration”). This serves as a basis for obtaining international protection.
  • Filing an international application: A trademark owner files an international application through the national or regional trademark office in their country. This application contains information about the mark, the goods/services it covers, and the countries where protection is sought.
  • WIPO Examination: The international application is then examined by WIPO to ensure that it meets the necessary criteria. If approved, WIPO registers the mark in the International Register and publishes it in the WIPO Bulletin of International Marks.
  • Review by Designated Contracting Parties: After approval by WIPO, the application is sent to designated countries/regions for review in accordance with their national laws. Each country evaluates the application individually.
  • National or Regional Registration: If no objections are raised in designated countries/regions within a certain period of time (usually 12 to 18 months), the mark is registered in those jurisdictions as if it had been filed directly with the national or regional trademark office.

Legal assistance in the registration of trademarks through the Madrid system

The intricacies of international trademark registration require experience and knowledge of both global trademark law and administrative procedures. A specialized legal company with knowledge in the field of intellectual property law can provide invaluable assistance in the following areas:

  • Application preparation: lawyers can ensure that your international application meets the specific requirements of each jurisdiction, minimizing the risk of rejection due to technicalities.
  • Choosing a country: Legal experts can help you choose the countries where trademark protection best suits your business goals and target markets.
  • Proactive monitoring: the law firm monitors the status of your trademark in various jurisdictions, promptly resolving any issues that may arise during the examination process.
  • Handling of objections: In the event of objections or refusals, experienced professionals can negotiate and respond with local trademark offices.
  • Renewal and support: trademark registration is not a one-time process; it needs updating and constant maintenance. Lawyers can ensure that your trademark will be protected and will have legal force over time.

In an increasingly interconnected global marketplace, protecting your brand identity is paramount. The Madrid system offers an efficient and cost-effective solution for companies seeking to protect their trademark internationally. With the help of a specialized law firm, navigating the intricacies of the Madrid System becomes a smooth process, allowing companies to focus on expanding their market presence while protecting their intellectual property rights.

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An Iryna
Head of Commercial and Civil Law Practice

Lawyer, specialist in intellectual property. Specializes in registration and protection of copyrights, inventions, patents, trademarks, as well as development of intellectual property transfer agreements, license agreements.

Contact now
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