IP Academy

Madrid system

Author: Danielle Carvey

The Madrid System for the International Registration of Marks facilitates the registration and maintenance of trademarks internationally, and is administered by the International Bureau (IB) of the World Intellectual Property Organisation (WIPO). The system is governed by the Madrid Agreement Concerning the International Registration of Marks of 1891, and the Protocol Relating to the Madrid Agreement of 1989.

The Madrid Union consists of 108 Member States, comprising a total of 124 countries and regions overall. The system affords applicants the opportunity to file one international application, accompanied by a single set of fees, covering any or all of the 124 Contracting States to the Madrid Protocol.

In order to file for international trademark protection by way of the Madrid System, it is necessary for an applicant to first file a national application with an IP Office of Origin. This must be an Office in a Contracting State to the Madrid Agreement/Protocol, in which the applicant either resides, is a national of, or has a commercial business in. This initial application is referred to as the "basic" one, and serves as the basis for further filing of the international application, which must be filed with the same IP Office of Origin.

The international application must be identical to the basic one, containing the same mark, along with the goods or services to which the mark relates in accordance with the Nice Classification. Furthermore, it is obligatory to detail the designated Contracting States for protection. The application can be filed with the IP Office of Origin in any of the three official languages of the System, namely English, French, or Spanish, depending on the language prescribed by the IP Office of Origin. Upon filing, the Office of Origin will check and certify that the international application corresponds to the basic one and all the necessary documents are submitted, before sending it on to the WIPO.

Once the international application has been received by the WIPO, the IB will conduct the formal examination of the same for compliance with the requirements of the Madrid System, and payment of the corresponding fees. If any discrepancies or issues with the application are found, the IB will inform the applicant and the Office of Origin, and they must be remedied within 3 months of notification, as failure to do so will result in the application being considered abandoned.

If the international application is approved by the IB, the mark will be published in the WIPO Gazette of International Marks and recorded in the International Register.

Thereafter the WIPO proceeds to notify each Contracting Party designated in the application. The substantive examination of the mark is conducted in each individual designated territory in accordance with the respective national or regional legislation of that state. As such, each independent Office has the right to refuse the grant of a trademark registration in light of any grounds for objection, or oppositions filed, and this decision will not impact those made by the Offices of the other states designated in the application.

If the examining Office reaches a decision of provisional refusal, this decision should typically be communicated within the standard 12-month time limit set forth by the Agreement or Protocol. However, some Contracting States may declare an extension to the time limit of up to 18 months. Moreover, in some jurisdictions, refusals based upon an opposition to a trademark application may be communicated even after the expiry of the period of 18 months.

Should an applicant opt to contest a refusal, for example, by appealing the decision, or by responding to an opposition, these actions will be conducted directly between the applicant and the respective Office itself. Once a final decision has been made, the Office will then notify the IB via a final statement, either confirming total grant of trademark protection, partial grant, or total refusal.

If no grounds for refusal are found, the examining Office should send the decision to register the trademark in that jurisdiction to the IB within the relevant aforementioned time limit.

The decisions made by each examining Office will be recorded in the International Register and published in the WIPO Gazette.

Once granted, an international trademark is valid for an initial period of 10 years from the date of international registration, which is typically recorded as the date on which the international application was received by the Office of Origin, and has the same effect in each respective designated jurisdiction as it would had it been filed directly with that state. The mark may be renewed for a further consecutive 10 year period before its expiry directly with the WIPO in any or all of the Contracting States in which the mark is effective.

For the first 5 years after registration, the international trademark is dependent upon the initial basic mark and everything that happens with the basic mark reflects on the international one. Therefore, if the basic trademark becomes ineffective in some or all goods/services within this time, the international registration will cease to protect the same goods/services. After this period, the international mark is deemed as independent in it's own right.

Overall, the Madrid System simplifies the process of obtaining trademark protection within the parties privy to the system, whilst also streamlining the process for trademark maintenance in a centralised manner, making it an advantageous method of filing for multi-national trademark protection. If you have any questions, or are interested in filing via the Madrid System, please contact us.

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Industrial design protection is widely utilised across the globe, with a registered design right preventing others from appropriating or imitating the appearance of a product. However, the obtainment of a design right, alongside a certificate of registration, is often not the final step of design protection.

Once granted, it is important to ensure that a design right is maintained in each jurisdiction in which the owner utilises the design. In order to uphold and maintain such rights, many countries require the filing of a request for design renewal and the payment of annuity/renewal fees.

The renewal process varies between countries and even between regional IP systems. As an example, some of the largest IP offices worldwide include the US, South Korea and China, and they all have different procedures in relation to the renewal of design rights and annuities.

In South Korea, for example, the validity term for an industrial design right consists of 20 years counted from the date of filing. The legislation in the country outlines that once the right has been granted, the registration fee for an industrial design should be paid within 3 months from receipt of the Notice of Allowance.

The registration fee in South Korea is inclusive of the payment for the first 3 years of the design right lifecycle, meaning that further annuity payments should be made in respect of the 4th years onwards. The payment of each annuity fee thereafter is due prior to the anniversary of the registration date for each respective year.

Whilst it is recommended that the payment of an annuity fee is made within the prescribed time, a grace period of 6 months exists in South Korea, allowing for the late payment of said fee when accompanied by payment of a surcharge.

In China, industrial designs with a filing date on or after June 1, 2021 are in force for 15 years from the date of filing, whilst those with a filing date occurring on or before May 31, 2021 are in force for 10 years from the date of filing.

Once granted, the official grant fee should be paid within two months from the date of receipt of the notification to grant a certificate, however, unlike South Korea, this fee is not inclusive of the first annuity. Instead, the first renewal payment, as well as a stamp tax for the design certificate in China, are to be paid separately upon registration of a design.

Further annual fees are to be paid in advance, during the month preceding the anniversary of the filing date. Late payment is possible within a six-month grace period by paying a corresponding surcharge.

In the US, design patents with an application filing date occurring on or after May 13, 2015 are valid for 15 years from the date of issuance, whilst those filed prior to May 13, 2015 have a term of 14 years from the date of issuance.

Unlike the aforementioned countries, as well as many other jurisdictions, design patents in the US are not subject to maintenance fees or annuities.

For those who wish to file for and obtain design rights in multiple jurisdictions, international and regional systems exist which allow applicants to obtain protection in several countries in an often more efficient and cost effective way than filing in individual states separately. As with each jurisdiction, these design right systems possess their own procedures for renewal fees and payment.

An industrial design right applied for via the Hague System, for example, has the same effect in each designated state as it would if it were filed directly in that jurisdiction. They are valid for an initial period of five years from the date of the international registration, which is defined as the date of filing of the international application.

International industrial design rights may be renewed for two initial further 5-year periods, prolonging the validity term for up to 15 years. Thereafter, a right can be renewed up to the limit of years prescribed in the national or regional law of each designated state in which the design is granted. The WIPO will remind the right holder to renew a design six months prior to the due date of the renewal.

A Community Design is a design right registered via the regional system of the European Union Intellectual Property Office (EUIPO). Once a community design has been granted, it is valid for a period of 5 years counted from the date of filing.

It is possible for rights owners to renew the design a further four times for periods of 5 years respectively, meaning a EUIPO registered community design can be valid for a full term of 25 years in total.

The renewal fees are due during the last 6 months of any given 5 year protection period, and late renewal is possible within a six-month grace period by paying a corresponding surcharge.

Industrial designs filed and granted through the African Regional Intellectual Property Organization (ARIPO) have a validity term of 10 years from the filing date. The annuity fees are due on each anniversary of the filing date and are payable in respect of each designated state. They can also be paid within 6 months after the due date on the condition that the corresponding surcharge is paid.

As industrial design renewal procedures are subject to variation from country to country, applicants should take note of any annuity payment deadlines and fees in each jurisdiction they wish to maintain design rights. If you require advice on the renewal of design rights, or simply further information, please contact us.

What’s priority right?

Priority right, which is activated by the first filing, shows that you’ve been the first to apply for an invention, industrial design or trademark. To make use of it, you need to claim your priority right when filing abroad.

What’s the time limit for claiming priority?

Applicants have “twelve months for patents and utility models, and six months for industrial designs and trademarks” (Paris Convention, Art.4) from the filing date of the initial application to take further actions.

Why shall I claim priority?

The Patent Office will decide on the novelty of your invention (check out our post on novelty) based on the priority date. If you filed without priority, all the information that became known in the world (including your first application, if published) would be a part of the state of the art, and your invention would no longer be considered new or novel.

All in all, priority claim preserves the rights of the applicants who want to obtain protection for their intellectual property in more than one country.

Today, we again discuss the three “pillars” of patent law and explore industrial application or applicability, which is one of the patentability requirements. The invention is considered to be industrially applicable if subject matter experts can reproduce and make use of it based on their general knowledge.

The definition is more or less the same in many European countries: the possibility to be “made or used in any kind of industry, including agriculture” (Art. 57, the EPC).

Until recently, interpretation of the industrial application was limited to what is stated above, but in 2005 the Boards of Appeal of the EPO ruled that the requirement of industrial application is only fulfilled if there is commercial benefit from the practical application of the invention.

Fun fact: this requirement excludes a range of absurd inventions from being considered as patentable. For example, if an invention contradicts the laws of physics, it cannot be industrially applicable and is, therefore, not patentable.

The first step on the way to securing your rights is filing of an application. However, there is one issue to consider before launching the process – can you make your first filing abroad?

In many countries, there is a foreign filing license requirement obliging inventors to file first in the country where they created an invention OR obliging nationals of the country to file in their home country before seeking protection abroad.

For example, India and Kenya apply this requirement to their nationals or residents only, while Russia, China, and the USA require first filing of applications for the inventions made in the country regardless of the inventor’s nationality.

If you are not sure where to file first, seek legal advice or feel free to contact us for support.