about the madrid (international trademark) system

One of the best ways to maintain trademark protection in several countries (outside the EU) is the international trademark application (the Madrid system). It is administered by the International Bureau of WIPO located in Geneva, Switzerland. The Madrid System is a convenient and cost-effective solution for registering and managing trademarks worldwide. File a single application and pay one set of fees to apply for protection in up to 130 countries. Modify, renew or expand your global trademark portfolio through one centralized system. In case there are other countries (e.g. Argentina, which is not a member of the Madrid system) your company is interested in seeking trademark protection, the best way is to file direct national registrations.

Any applicant can only use the Madrid system if he
– is a national of that Contracting State, or
– is domiciled, or
– has a real and effective industrial or commercial establishment, in the Contracting State (the Office of Origin).

INTERNATIONAL TRADEMARK application process

The international trademark application has to be filed to the WIPO, but WIPO only conducts a formal examination of the application. The designated Contracting Parties will examine the application in more details, and they may have specific requirements and procedures regarding applications.

Do not forget to order a trademark search before filing.

STAGE 1 – APPLICATION THROUGH YOUR NATIONAL OR REGIONAL IP OFFICE (OFFICE OF ORIGIN)

Before you can file an international application, you need to have already registered, or have filed an application, in your “home” IP office. The registration or application is known as the basic mark. You then need to submit your international application through this same IP Office, which will certify and forward it to WIPO.

STAGE 2 – FORMAL EXAMINATION BY WIPO

WIPO only conducts a formal examination of your international application. Once approved, your mark is recorded in the International Register and published in the WIPO Gazette of International Marks. WIPO will then send you a certificate of your international registration and notify the IP Offices in all the territories where you seek trademark protection.

STAGE 3 – SUBSTANTIVE EXAMINATION BY NATIONAL OR REGIONAL IP OFFICES (OFFICE OF THE DESIGNATED CONTRACTING PARTY)

The designated offices will make a decision within the applicable time limit (12 or 18 months) in accordance with their legislation. WIPO will record the decisions of the IP Offices in the International Register and then notify you.

requirements

Filing an international trademark application through the Madrid System always requires a "basis trademark", a domestic registration which can be a national trademark or an EU trademark. In your case, the international application can be based on a Hungarian trademark filed with our help.

We would like to draw your attention to the so-called five-year rule. If the national application is refused, that will have a corresponding effect on the international registration. There is a dependent relationship between the national protection and the international protection for a period of five years. Where the national application is refused within the five-year period, this would result in the international registration being cancelled.

We always recommend to base the international trademark application on a national trademark or trademark application as the risk of an invalidity process is lower than in case of an EU trademark. 

INTERNATIONAL TRADEMARK costs

The cost of an international trademark application depends on many factors:
– the number of the designated countries (that is the most important),
– the number of the related classes,
– if it is a colour figurative mark or a black and white sign.

The cost of the application is in “inverse proportion” to the number of countries (the more countries you designate the less it will cost per country).

We can provide a quote for the application if you give a list of the countries you are interested in. Please note that the number of countries cannot be raised during the registration process (it is possible to add further countries later, after registration, which is called ‘subsequent designation’).

You should also take into consideration that during the registration process, the national offices often issue objections (provisional refusals) for various reasons. (The United States Patent and Trademark Office /USPTO/ is among the offices that have a higher tendency to do so.) These refusals need the attention and the expertise of local legal representatives, which means that in the registration phase, there will probably be further costs that are not possible to estimate.