What is the Madrid International Trademark? Madrid International Trademark Review

history

The Madrid Agreement Concerning the International Registration of Marks was signed in Madrid, Spain, on April 14, 1891, requiring the use of French as the language, and came into force in July 1892. On June 27, 1989, the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks was signed in Madrid, Spain, stipulating that applicants can choose to use English or French.

Madrid Union

According to the Madrid Agreement Concerning the International Registration of Marks (hereinafter referred to as the "Madrid Agreement") or the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (hereinafter referred to as the "Madrid Protocol"), trademark registration applicants can submit a trademark registration application through the Trademark Office or directly to WIPO, and can apply for trademark registration in 117 countries (extracted from the WIPO official website data). That is, through the Madrid system, by submitting one trademark application document, you can specify the European Union, African Intellectual Property and any of the union countries shown in the table below.

Conditions and requirements

Conditions that applicants for international trademark registration must meet

Have a real and effective industrial and commercial business office in China;

Have a residence or headquarters in China;

Have Chinese nationality, including Taiwan compatriots and Chinese expatriates around the world.

The trademark applied for international registration must be based on the trademark already registered by the China Trademark Office

The trademark applied for international registration must be a trademark that has been registered in China or has been preliminarily examined and announced. The content of the trademark applied for international registration must be completely consistent with the content of the trademark registered by the applicant domestically, and the goods designated for use must be the same as the goods registered domestically or not exceed the scope of the original registered goods.

material

1. Materials proving the subject's qualifications

Natural person: Copy of the front and back of the ID card with signature

Enterprise: Copies of the original and duplicate of the business license of the corporate legal person with official seal;

2. A copy of the "Trademark Registration Certificate" registered in China or a certificate of having submitted a trademark registration application;

3. Trademark image;

4. Other information: designated country; if priority is claimed, a priority certificate should be attached; a copy of the trademark registration certificate or a copy of the acceptance notice

Validity

Once registered, a Madrid trademark is valid for 10 years. After passing the formal review by the International Bureau, a Madrid trademark certificate will be issued, calculated according to the date marked on the certificate.

After the expiration of the validity period, if you want to continue to use it, you can apply for renewal 6 months before the expiration of the validity period. If you do not apply for renewal within the grace period, the International Bureau will cancel the international trademark registration.

advantage

1. Multiple countries can be specified at the same time

One international registration application can be used to apply for territorial extension protection in multiple countries at the same time, which is equivalent to submitting registration applications to these countries one by one.

2. Simplified trademark registration procedures

An international registration application is submitted in two languages ​​(English or French) and the fees are paid to one institution (International Bureau). This avoids the problem of having to use different languages ​​in different countries when applying one by one, and the problem of paying fees separately to the trademark registration authorities of different countries.

3. Reduce the fees and costs of international trademark registration

One international registration application can achieve the purpose of applying for registration in multiple countries at the same time, avoiding the procedural requirements of entrusting an agent in each country for each application, as well as other procedural requirements such as notarization and certification fees, thereby greatly reducing the cost required to achieve the same protection effect.

defect

1. The Madrid System cannot be used to handle procedures where a trademark is officially rejected or opposed by a third party. If a trademark is officially rejected or opposed by a third party, we need to bypass the Madrid System and directly respond or defend to the trademark authority of the designated country.

2. Application time limit: The prerequisite for Madrid trademark registration is to apply for domestic trademark registration or application as the basic application premise, that is, the submitted application must be based on the domestic registration or preliminary application announcement of the same trademark. When the applicant takes the domestic application as the premise, the application for international trademark registration will be delayed in time.

3. Unstable trademark rights: Since the Madrid trademark registration requires a domestic application or registration as the basis, it can only be decoupled from the registration in the country of origin after five years. If the registered trademark is revoked within five years, the Madrid trademark will also be revoked. This situation is usually called the "central strike principle."

develop

At the end of 1991, the Madrid Union had 29 member states.

On October 23, 2006, the Madrid Union had 78 member states (or contracting parties, which has now increased to 80).

As of December 2015, there were 97 States Parties.

With the accession of Thailand in 2017, the number of Madrid Union member states (including regional organizations) increased to 99.

China joined the Madrid Agreement and the Madrid Protocol in 1989 and 1995 respectively.

Application for change in my country

1. In August 2017, it was announced that when applying for a new application for Madrid International Trademark Registration, it is not necessary to submit a copy of the Trademark Registration Application Acceptance Notice or the Trademark Registration Certificate. The acceptance or registration information in our trademark examination system shall prevail.

3. When handling the change of the name and/or address of the registrant, the approval of the change of the basic trademark is not a prerequisite.

Big Events

In February 2017, sellers on Amazon Canada, the United States, Germany, the United Kingdom and other sites had their accounts frozen because the Scorpio brand name "generic" was judged to be infringing. The complainant used the Madrid trademark.

References

• 1. Registering a Madrid Trademark can enjoy five major advantages and effectively avoid three major disadvantages: Baidu [cited on 2017-01-15T16:00:00.000Z]