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  For Patent or Trademark Inquiries:
Call: 1-866-387-5386, or
E-mail: ash@ipprocure.com
 
IP Legal Services
36 Greenleigh Drive, Sewell, NJ 08080
90 Great Oaks Blvd., San Jose CA 95119, Tel: 1-866-387-5386
 
IP Legal Services
www. ipprocure.com
E-mail:ash@ipprocure.com
Tel: 1-866-387-5386 
INTERNATIONAL TRADEMARK APPLICATIONS
In addition to obtaining federal registration of the mark in the United States by filing a trademark application with the U.S. PTO, international protection of the mark may also be obtained by filing an international trademark application with the World Intellectual Property Organization (WIPO), Geneva, Switzerland under the Madrid Protocol designating the WIPO contracting states where the mark is sought to be protected. Filing an international application under the Madrid Protocol saves the applicant time and money compared to filing individual trademark applications in each foreign country where the applicant seeks to register the mark.
THE MADRID PROTOCOL
The Madrid Agreement of 1891 and the follow-up Madrid Protocol of 1989 (hereinafter referred to as the “Madrid Protocol”) provides a mechanism for obtaining trademark protection in Madrid Agreement And Protocol treaty member countries by the filing and registration of one (1) trademark application with the World Intellectual Property Organization (WIPO), Geneva, Switzerland.
The Madrid Protocol is administered by the International Bureau of the World Intellectual Property Organization (WIPO), Geneva, Switzerland. Countries and organizations party to the Madrid System are each referred to as a “contracting party”. Under the Madrid Protocol, an applicant can register his mark in any member states by filing one international application directly with his country’s national trademark office. A single international application of a trademark simplifies the process of prosecution and maintenance of the international trademark, as a single prosecuted and allowed mark can be registered as a trademark in each Madrid Protocol member country that the applicant wishes to register the mark in. Once the international trademark application is allowed, the applicant can subsequently designate additional countries for registration of the international mark.

An international trademark application is required to be based on a prior foreign trademark application/registration or a trademark application/registration filed in the applicant’s country of origin. Usually, in order to get the priority date of the first trademark application, the applicant files the international application within two months of the filing or receipt date of the first filing.

To file an international application through the U.S. PTO as the office of origin, a trademark application for the mark is first filed with the U.S. PTO. When the serial number of the trademark application is received from the U.S. PTO (generally within a day after the mark is filed), an international application for the mark is filed with the Madrid Processing Unit, U.S. PTO. The international application must designate at least 1 foreign country where the mark is to be registered. The following fee is payable with the international application: U.S. PTO certification fee of $100 per class per mark, international application filing fee (approximately $650), and the individual country application fee for each country where the international mark is to be registered. The number of classes of products and services for the mark in the international application should be the same as identified in the basic national application or a subset of it.
On receipt of the international application, the Madrid Processing Unit, U.S. PTO examines the mark for preliminary compliance with the requirements of the International Bureau, WIPO. If the Madrid Processing Unit, U.S. PTO finds any deficiencies with the mark as filed, the Madrid Processing Unit, U.S. PTO issues a Notice of Irregularity to the applicant explaining the deficiency in the application, which the applicant can correct. If the Madrid Processing Unit, U.S. PTO finds the application in order, it certifies the international application and submits it to the International Bureau, WIPO, Geneva, Switzerland for examination.
On receipt of the international application by the International Bureau, the International Bureau reviews the international application to determine whether it meets the Madrid Protocol filing requirements. If the International Bureau finds that the filing requirements are met and the required fees paid, the International Bureau registers the mark, publishes it in the WIPO Gazette, and sends a certificate to the registrant. However, if the International Bureau finds any deficiencies in the international application, the International Bureau sends a Notice of Irregularity to the registrant. The applicant must respond to this notice within the time period specified in the notice. If the irregularities are rectified within the specified time period, the International Bureau registers the mark and issues a Certificate of Registration of the international mark to the applicant and records the registration in the International Register of Marks, Geneva, Switzerland.
After the international registration of the mark, the International Bureau requests each country designated in the international application to extend the trademark registration in their country. Pursuant to such request, the contracting Madrid Protocol parties are given 18 months to examine the international mark for an extension of protection in their jurisdiction and notify the applicant regarding any refusals to the mark. If any contracting party objects to the allowance and registration of the mark within 18 months after the filing of the international registration, the mark is provisionally refused registration in all the contracting states. The applicant is then given an opportunity to contest the non-allowance of the mark. If the registration requirements of the designated countries are met, the International Bureau sends the mark to the Office of Harmonization which forwards the mark to each of the countries where the mark is to be registered.
The Madrid Protocol also simplifies the management of the international mark after the mark is registered in one or more member states as it allows an applicant to record subsequent changes or to renew registrations by a single procedure with WIPO. Also, the Madrid Protocol allows the applicant to register the mark in additional member states subsequent to the registration of the mark in any member state at any point in time.
MEMBER COUNTRIES OF THE WIPO
Albania
Ghana
Sao Tome and Principe
Algeria
Greece
Serbia13
Antigua and Barbuda.
Hungary
Iceland
Armenia
Kazakhstan
Iran
Australia
Kenya
Ireland
Austria
Kyrgyzstan
Italy
Azerbaijan
Latvia
Japan
Bahrain
Lesotho
Sweden
Belarus
Liberia
Switzerland
Belgium
Liechtenstein
Syrian Arab
Bhutan
Lithuania
Swaziland
Bosnia and Herzegovina
Luxembourg
Sierra Leone
Bulgaria
Madagascar
Singapore

China

Monaco
Singapore
Croatia
Mongolia
Slovakia
Cuba
Montenegro
Slovenia
Cyprus
Morocco
Spain
Czech Republic
Mozambique
Turkey
Democratic People's Republic of Korea
Namibia
Turkmenistan
Denmark
Netherlands
Ukraine
Egypt
Norway
United Kingdom
Estonia
Oman
United States of America
European Community
Poland
Uzbekistan
Finland
Portugal
Viet Nam
France
Republic of Korea
Zambi
Georgia
Republic of Moldova
Germany
Romania
Russian Federation
San Marino
SCHEDULE OF FEES
International applications governed exclusively by the Agreement
Swiss Francs
The following fees shall be payable and shall cover 10 years:
1.1 Basic fee (Article 8(2)(a) of the Agreement)
Swiss Francs
1.1.1 where no reproduction of the mark is in color
653
1.1.2 where any reproduction of the mark is in color
903
1.2 Supplementary fee for each class of goods and services beyond three classes (Article 8(2)(b) of the Agreement)
100
1.3 Complementary fee for the designation of each designated Contracting State (Article 8(2)(c) of the Agreement)
100
2. International applications governed exclusively by the Protocol
100
The following fees shall be payable and shall cover 10 years:
2.1.1 where no reproduction of the mark is in color
653
2.1.2 where any reproduction of the mark is in color
903
2.2 Supplementary fee for each class of goods and services beyond three classes (Article 8(2)(ii) of the Protocol), except if only Contracting Parties in respect of which individual fees (see 2.4, below) are payable are designated (see Article 8(7)(a)(i) of the Protocol)
100
2.3 Complementary fee for the designation of each designated Contracting Party (Article 8(2)(iii) of the Protocol), except if the designated Contracting Party is a Contracting Party in respect of which an individual fee is payable (see 2.4 below) (see Article 8(7)(a)(ii) of the Protocol)
100
2.4 Individual fee for the designation of each designated Contracting Party in respect of which an individual fee (rather than a complementary fee) is payable (see Article 8(7)(a) of the Protocol): the amount of the individual fee is fixed by each Contracting Party concerned
3. International applications governed by both the Agreement and the Protocol
The following fees shall be payable and shall cover 10 years:
3.1 Basic fee
3.1.1 where no reproduction of the mark is in color
653
3.1.2 where any reproduction of the mark is in color
903
3.2 Supplementary fee for each class of goods and services beyond three classes
100
3.3 Complementary fee for the designation of each designated Contracting Party in respect of which no individual fee is payable
100
3.4 Individual fee for the designation of each designated Contracting Party in respect of which an individual fee is payable (see Article 8(7)(a) of the Protocol), except where the designated State is a State bound (also) by the Agreement and the Office of origin is the Office of a State bound (also) by the Agreement (in respect of such a State, a complementary fee is payable): the amount of the individual fee is fixed by each Contracting Party concerned
4. Irregularities with respect to the classification of goods and services
The following fees shall be payable (Rule 12(1)(b)):
4.1 Where the goods and services are not grouped in classes = 77 plus 4 per term in excess of 20
4.2 Where the classification, as appearing in the application, of one or more terms is incorrect = 20 plus 4 per incorrectly classified term provided that, where the total amount due under this item in respect of an international application is less than 150 Swiss francs, no fees shall be payable
5. Designation subsequent to international registration
The following fees shall be payable and shall cover the period between the effective date of the designation and the expiry of the then current term of the international registration:
5.1 Basic fee
300
5.2 Complementary fee for each designated Contracting Party indicated in the same request where an individual fee is not payable in respect of such designated Contracting Party (the fee covers the remainder of 10 years)
100
5.3 Individual fee for the designation of each designated Contracting Party in respect of which an individual fee (rather than a complementary fee) is payable (see Article 8(7)(a) of the Protocol): except where the designated Contracting Party is a State bound (also) by the Agreement and the Office of the Contracting Party of the holder is the Office of a State bound (also) by the Agreement (in respect of such a Contracting Party, a complementary fee is payable) the amount of the individual fee is fixed by each Contracting Party concerned
6. Renewal
100
The following fees shall be payable and shall cover 10 years:
6.1 Basic fee
653
6.2 Supplementary fee, except if the renewal is made only for designated Contracting Parties in respect of which individual fees are payable
100
6.3 Complementary fee for each designated Contracting Party in respect of which an individual fee is not payable
100
6.4 Individual fee for the designation of each designated Contracting Party in respect of which an individual fee (rather than a complementary fee) is payable (see Article 8(7)(a) of the Protocol): the amount of the individual fee is fixed by each Contracting Party concerned
653
6.5 Surcharge for the use of the period of grace = 50% of the amount of the fee payable under item 6.1
653
6.5 Surcharge for the use of the period of grace = 50% of the amount of the fee payable under item 6.1
653
7. Miscellaneous recordings
7.1 Total transfer of an international registration
177
7.2 Partial transfer (for some of the goods and services or for some of the Contracting Parties) of an international registration
177
7.3 Limitation requested by the holder subsequent to international registration, provided that, if the limitation affects more than one Contracting Party, it is the same for all
177
7.4 Change of name and/or address of the holder of one or more international registrations for which recordal of the same change is requested in the same request
150
7.5 Recording of a license in respect of an international registration or amendment of the recording of a license
177
8. Information concerning international registrations
177
8.1 Establishing a certified extract from the International Register consisting of an analysis of the situation of an international registration (detailed certified extract), up to three pages
155
for each page after the third
10
8.2 Establishing a certified extract from the International Register consisting of a copy of all publications, and of all notifications of refusal, made with respect to an international registration (simple certified extract),
up to three pages
77
for each page after the third
2
8.3 A single attestation or information in writing
2
for a single international registration
77
for each additional international registration if the same information is requested in the same request
10
8.4 Reprint or photocopy of the publication of an international registration, per page
5
9. Special services
5
The International Bureau is authorized to collect a fee, whose amount it shall itself fix, for operations to be performed urgently and for services not covered by this Schedule of Fees.
5

 

 
 
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