International - Madrid Protocol
The Madrid Protocol is an international system of registration, which is administered by the International Bureau of the World Intellectual Property Organisation (WIPO) which maintains the International Register of Marks. The international system of registration gives a trade mark owner the option to apply to protect his or her trade mark in several countries by simply filing one application with a single Office, in one language, with one set of fees in one currency (Swiss francs).
Ireland ratified the Madrid Protocol on 19 July 2001 and the Protocol entered into force, with respect to Ireland, on 19 October 2001. Consequently, the Madrid Protocol governs international trade mark applications received in the Irish Patents Office.
Important points to note:
- The Madrid Protocol requires that an international application must be based on a national trade mark application or registration (referred to as the basic application or registration) filed through the Irish Patents Office which is known as the "Office of Origin".
- The International Bureau will not accept applications direct from an applicant.
- Pursuant to Article 2(1) of the Protocol, only a person who is a national of Ireland (referred to as the "Country of Origin"), or is domiciled, or has a real and effective industrial or commercial establishment, in Ireland, has the right to file an international application using the Irish Patents Office as the Office of Origin.
- International applications will only be accepted at the Irish Patents Office where Ireland is the Country of Origin. Applications received where Ireland is not the correct Country of Origin will not be accepted.
- At least one Contracting Party to the Protocol must be designated in the International Application. The Country of Origin cannot be designated. Details of Countries party to the Madrid Protocol can be viewed at the website of the World Intellectual Property Organisation.
International applications must be:
- on the official form, form MM2
- typed (on one side of A4 paper only),
- in English.
A series of trade marks cannot be applied for in an International Application, However the elements that make up the series in the national application/registration can be applied for individually in separate International Applications.
The mark applied for in the international application must be identical to the mark protected in the basic application or registration. This identity must include, if applicable, a colour claim or a written description of the mark. If such identity is not present, the international application will be rejected.
The specification of the international application cannot be broader than the list of goods and services protected in the basic application or registration on which it is based. If, during the progress of the basic application to register the trade mark or as a result of part-cancellation after registration, the specification is limited, then the goods and services of the international registration obtained under the Madrid Protocol must also be limited to the same extent.
The international application can claim up to six months convention priority, in the usual way.
Note: Failure to complete form MM2 correctly may adversely affect the filing date.
Applicants should ensure that their full postal address and daytime telephone number are included in the application form in order to allow contact to be made in case of error. Any delay effecting the filing date might also affect the claim to priority. Therefore, the onus is on the applicant to ensure that the application form is completed correctly and in the event of a query in relation to the application being raised by the Patents Office, that such queries are dealt with promptly.
Where Ireland is the correct Office of Origin, the Irish Patents Office will acknowledge receipt and forward the application form to the International Bureau.
Upon receipt of the application, the International Bureau examines it to see if it complies with the applicable requirements and, if not, informs the applicant and the Office of Origin. There is a time limit to remedy the irregularities and in some cases the application will be deemed abandoned if not remedied within the specified time.
If the applicable requirements are met, the mark is published in the Official WIPO Gazette and allocated an International Registration Number. The International Bureau then forwards details of the International Registration to the designated countries. Each designated Country will then carry out an examination of the mark in accordance with the relevant trade mark legislation pertaining to that Country and ultimately decide whether to grant or refuse protection in that Country. If there are objections during examination, or opposition is lodged, the designated Country must notify the International Bureau, which in turn advises the international registration holder.
An international registration produces the same effects as a separate application for national registration of the mark made in each of the Countries designated by the applicant. The Madrid system also simplifies the subsequent management of the mark in foreign countries, since it is possible to record subsequent changes (such as a change in ownership or a change in the name or address of the holder) or to renew the registration through a single procedural step with the International Bureau.
An International registration remains dependent on the basic application/registration in the Country of Origin for a period of 5 years from the filing date of the international registration. This means that if the Irish application/registration is refused, withdrawn, or ceases for any reason as a result of a procedure initiated in this 5 year period, then the international registration will also cease.
All fees relating to an international trade mark application must be paid directly to the WIPO. A schedule of international fees and a fee calculator are available on the WIPO website.
Note: The above is a brief summary of the main points to be considered when submitting an International Application through the Irish Office and should not be taken as a definitive guide to the international system for registration of trade marks. For more comprehensive information, applicants should refer to the GUIDE TO THE INTERNATIONAL REGISTRATION OF MARKS UNDER THE MADRID AGREEMENT AND PROTOCOL and in particular the text of the Protocol and the common regulations.