Registering a Trademark Using the Madrid System
While it is not possible to secure worldwide trademark protection with a single registration, the Madrid System offers a streamlined international procedure for registering trademarks in multiple countries. Trademarks and brands play a crucial role in distinguishing businesses from their competitors in target markets. Registering a trademark is typically necessary to safeguard intellectual property rights, as most countries only provide protection to registered trademarks.
The Madrid system greatly simplifies and reduces the cost of obtaining global trademark protection. Traditionally, trademark applications had to be filed individually with the respective national trademark offices of each country. However, the Madrid system enables applicants to submit a single centralized application for trademark registration across multiple countries.
What is the Madrid system and why use it?
The Madrid system is an international trademark application and registration system that enables the filing of a single trademark application, currently encompassing 114 member countries and covering 130 nations. These members collectively represent over 80% of global trade, and the system continues to grow with potential for expanded membership (as of March 2023).
The primary advantage of utilizing the Madrid trademark Registration lies in its centralized administration through the World Intellectual Property Office (WIPO). This centralized approach eliminates, in most cases, the need to engage local attorneys in each individual country, thereby reducing costs.
By opting for the Madrid system, you can save money when registering your trademark in multiple countries. Instead of undergoing separate trademark registration processes in each country, you can streamline the process and achieve cost efficiencies through the Madrid system.
Additionally, the international trademark registration system allows for the inclusion of additional countries at a later stage. This flexibility enables you to manage your international trademark portfolio with ease and in a cost-effective manner.
For a full list of the countries available via the Madrid system, please click here.
What steps should I take when preparing to file a Madrid trademark application?
When you are prepared to file an application, you can submit your Madrid system application through the online filing system provided by WIPO (World Intellectual Property Organization). Typically, the international trademark application process takes approximately 12 to 18 months for completion in a simple case.
To gain more insight into the Madrid system application procedure, please refer to the following sections for detailed information.
1. Filing your application
To file a Madrid system Application, you need to meet certain criteria as an Applicant. The Applicant must possess a trademark application/registration for the same trademark and corresponding or broader goods/services in their home country or another country. This is referred to as the "home" application or registration. If the "home" registration is less than 6 months old, it may also be possible to claim "priority," which allows you to backdate the Application to the earliest filing date, thereby extending your protection for up to 6 months.
At DAEILPAT, we assist in filing Madrid system registrations through the Korean Intellectual Property Office (KIPO). Once filed, the KIPO forwards the registration to the World Intellectual Property Office (WIPO) in Geneva. WIPO examines the registration for compliance with formalities and classification.
2. Publication and International Registration
Prior to publication, Madrid system applications are reviewed by the World Intellectual Property Office (WIPO) to ensure compliance with specific formal requirements necessary for international registration.
Once the formalities examination is completed, the Madrid system Registration is published in the Official Gazette, and a Registration Certificate is issued. At this stage, the trademark offices in the designated countries have the opportunity to examine the registration and potentially raise objections to the trademark's registration within their respective jurisdictions.
3. National Phase Examination
Following the examination by WIPO, the international trademark registration is transmitted to the national trademark offices of each designated country. At this stage, the Application is treated as a national trademark application and undergoes examination based on the relevant national laws and regulations.
Each national trademark office is given a timeframe of up to 18 months to notify WIPO of any objections raised during examination or the filing of opposition by third parties. If the examination is not completed or if the Application remains vulnerable to third-party opposition even after the 18-month period, the national trademark office is required to inform WIPO accordingly.
In the event of objections or opposition, it becomes necessary to engage local trademark attorneys who specialize in the specific country involved.
4. Renewal
The Madrid system registration can remain valid indefinitely as long as the trademark is used for the registered goods/services and the renewal fees are paid every 10 years.
However, it's crucial to note that specific countries under the Madrid system have additional requirements after registration. Failing to submit the correct documentation within the specified deadlines can result in the loss of your rights. DAEILPAT diligently monitors all these deadlines to safeguard the maintenance of your rights.
With our team of skilled trademark attorneys and extensive network of international legal professionals, DAEILPAT is dedicated to safeguarding your brand by providing comprehensive and proactive trademark protection. We ensure that you obtain the necessary trademark rights to establish a strong presence in your market and explore profitable licensing and assignment opportunities.
For further details, please reach out to us via email at daeilpat@gmail.com to speak with one of our qualified trademark attorneys.
Why file with DAEILPAT?
Our service offers several advantages for processing trademark applications in Madrid System. Here are some key benefits:
Simplified Process:
DAEILPAT streamlines the entire Madrid trademark application process, making it easier and more efficient for businesses to protect their trademarks globally. We handle the administrative tasks, paperwork, and communication with the relevant authorities, saving you time and effort.
Cost-effective Solution:
With a basic fee of 0 USD (includes one class of goods/services) and an additional fee of 0 USD for each designated country and additional classes cost 0 USD per class, DAEILPAT's service prodes a cost-effective solution for filing Madrid trademark applicaitions. By leveraging our expertise, you can avoid potential mistakes or rejections that could result in additional expenses.
note:
It's important to note that the our fees mentioned exclude the official fees payable to the Korean Intellectual Property Office (KIPO) and WIPO.
Extensive International Coverage:
Madrid System allows for the protection of trademarks in multiple countries through a single application. DAEILPAT supports applicants in filing trademark applications in various countries worldwide, providing extensive international coverage to protect your brand effectively.
Expertise and Experience:
DAEILPAT has considerable experience in handling trademark applications, including Madrid trademark filings. Our team consists of trademark attorneys who are well-versed in the intricacies of the Madrid System and the specific requirements of each designated country. Our expertise can help maximize the chances of successful registration.
Time Efficiency:
By entrusting your Madrid trademark application to DAEILPAT, you can save valuable time. We are familiar with the Madrid System's procedures and requirements, enabling them to expedite the application process. This efficiency can be crucial, especially when filing trademark applications in multiple countries simultaneously.
Simplified Communication:
DAEILPAT acts as an intermediary between you and the World Intellectual Property Organization (WIPO) during the Madrid trademark application process. They handle the communication and correspondence, ensuring that all necessary information and documents are properly submitted and addressing any queries or issues that may arise.
Comprehensive Service:
DAEILPAT provides a comprehensive service that covers the entire Madrid trademark application process, from initial filing to monitoring and maintenance of your trademarks. They can assist with responding to office actions, renewals, and other post-registration matters, offering a holistic approach to trademark protection.
DAEILPAT
DAEILPAT is a renowned IP law firm specializing in international trademark registration services. With a team of highly qualified trademark attorneys, we offer expert advice and guidance to clients seeking to protect their trademarks globally.
Our dedicated team of trademark attorneys possesses extensive knowledge and experience in navigating the complex landscape of international trademark laws and regulations. We understand the importance of safeguarding your brand identity and intellectual property rights in the global marketplace.
DAEILPAT boasts a vast network of foreign trademark attorney contacts, enabling us to provide cost-effective services for trademarks across the globe. We understand the complexities and nuances of trademark laws in various jurisdictions and can leverage our extensive network to streamline the trademark registration process for our clients. Whether you need assistance with trademark registration in Europe, Asia, the Americas, or any other region, our network of trusted foreign trademark attorneys allows us to offer comprehensive and efficient services.
At DAEILPAT, we prioritize client satisfaction and strive to provide personalized solutions tailored to meet your specific trademark registration needs. Our attorneys work closely with you to understand your business objectives and develop a trademark strategy that aligns with your goals. From conducting thorough trademark searches and assessing potential conflicts to preparing and filing trademark applications, we handle every aspect of the registration process with utmost professionalism and attention to detail.
By choosing DAEILPAT as your international trademark registration service provider, you gain access to a dedicated team of experts who are committed to protecting your brand identity on a global scale. With our in-depth knowledge, international reach, and client-centered approach, we ensure that your trademarks are safeguarded effectively, allowing you to focus on building and expanding your business with confidence.
If you have any questions or needs related to this, please feel free to contact us.
