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International Registration

 





























The Madrid Protocol for the international registration of marks is a treaty administered by the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva. It has been in operation since April 1996 and has been ratified by many countries around the world, including most European countries, the USA, Japan, Australia, China, Russia, and, in October 2004, by the European Union (EU) as such.
The Madrid Protocol gives trade mark owners the possibility of having their trade marks protected in several countries by simply filing one application directly with their own national or regional trade mark office.

For further information regarding the Madrid Protocol, please visit our Strategy section and click on the ‘Develop’ tab.


Since the EUIPO is the European Union office for the purposes of registering marks with effect across the whole of the European Union (EU), it is the point of contact for WIPO in all international application proceedings based on an EU trade mark or designating the EU. The EUIPO can act either as the office of origin if an international application is based on an EU trade mark or as the designated office if the EU has been designated in an international application originating elsewhere. The EUIPO’s role in the international system is similar to the role played by national offices.

WIPO, through its International Bureau, administers the Madrid Protocol together with the Madrid Arrangement (the two treaties forming the so-called Madrid System). When receiving an international application from an office of origin, it checks in particular that all the filing requirements are met and that the goods and services are correctly classified. If so, it registers the mark in the International Register and it publishes it in the International Gazette. The International Bureau then notifies the international registration to the offices of the designated countries.
The International Bureau does not examine whether the mark as such qualifies for protection, or whether an identical or similar mark has already been registered; that is a matter for the offices of the designated countries.

Yes, It is possible to designate the European Union in an international application as a territory where you wish to have your trade mark protected. The EUIPO is the EU office administrating a trade mark valid across the entire territory of the EU.
 

To file an international application, it is compulsory to use the form on the WIPO website in English, French or Spanish.

The following information can be found on the WIPO website.

When the EU is designated in an international application, it is generally not necessary to appoint a representative before the EUIPO. Nevertheless, in the case of provisional refusal, or more generally, if the international holder needs to communicate directly with the Office (e.g. sending documents) the normal representation rules apply (see more details on representation).

If the holder of the international registration is not domiciled in the EEA ( European Economic Area), he or she will be requested to appoint an EEA representative. If no representative is appointed, the refusal will be confirmed to the extent identified in the provisional refusal.

For further information, see the Guidelines, Part M, International Marks.
 

Learn more about the international registration process, also known as the Madrid System.

An international registration designating the EU must indicate a second language from the EUIPO’s official languages (English, French, German, Italian and Spanish). If a second language is not chosen, the EUIPO will object to the application and will postpone the republication until the second language has been duly indicated.
 

The examination of formalities is limited to whether a second language has been indicated, whether the application is for a collective or a certification mark (which must include the submission of the regulations governing the use of the mark), whether the limited lists for the EU designation fall within the scope of the IR’s main list, whether there are any seniority claims and whether the list of goods and/or services meets the requirements of clarity and precision as described in the Guidelines, Part B, Examination, Section 3, Classification.
If there is any ground for refusal, the EUIPO must send a notice of provisional refusal to WIPO within 6 months of the republication. If the provisional refusal concerned only part of the goods and services, and the holder does not deal with it, only those goods and services will be refused and the remaining goods and services will be accepted.

Upon request of the IR holder within a period of 1 month from when WIPO informs the EUIPO of the designation, the EUIPO will draw up a European Union search report for each IR, which will cite similar EUTMs and IRs designating the EU pursuant to Article 195 of the EU trade mark regulation.
 

Immediately after receipt, the EUIPO automatically republishes the international registration in the EUTM Bulletin in Part M dedicated solely to international registrations (consult eSearch plus, Daily publication section).
 

The first communication is sent to the holder via WIPO. Thereafter, the communication channel is established directly between the EUIPO and the holder or the holder’s representative.
The EUIPO has 18 months to inform WIPO of all possible grounds for refusal of the EU designation. The 18‑month period starts on the day on which the EUIPO is notified of the designation. If an objection is not overcome, a final decision is sent to the holder. The final decision may be appealed before the Boards of Appeal. Once the appeal procedure has been exhausted and the decision is final, a refusal notification is sent to WIPO.
If there are no grounds for refusal the Office will issue an interim status to WIPO. This statement will be transmitted to the holder, published in the International Gazette and entered in the International Register.

Seniority claims and searches are dealt with in parallel by the EUIPO. Seniority of a prior registration can be claimed using a separate official form (MM17) to be annexed to the international application.
The seniority examination is based only on the documents that are provided by the applicant. Seniority of a prior registration can be claimed using a separate official form (MM17) to be annexed to the international registration.

When the EU is designated in an application for international registration, the EUIPO has the right to refuse protection of a mark within 18 months of receipt of the application from WIPO. Refusal may be made on any of the grounds (absolute and relative) for which an application for registration filed directly with the EUIPO might be refused.
 

Opposition notices may be filed within the period of 3 months beginning 1 month following the date of republication in the EUTM Bulletin in Part M dedicated solely to international registrations (consult eSearch plus, Daily publication section).
Oppositions filed prior to this period will be deemed to have been filed on the first day of the opposition period.
If an opposition is filed, the EUIPO will verify its admissibility and then notify WIPO with a provisional refusal based on the opposition proceedings. If the opposition is successful the Office will inform WIPO of the refusal of the international registration.
 

When all procedures are over and the international registration is accepted for the European Union for all or part of the goods and services, it is republished in the EUTM Bulletin and a statement of grant of protection is sent to WIPO.
 

If the international registration’s designation of the European Union is rejected by the EUIPO it is possible to convert it under Article 202 of the EU trade mark regulation into:
  • a national trade mark application for EU Member States;
  • a designation of a Member State party to the Madrid Protocol (so-called ‘opting back’).

Yes, since the European Union (EU) has joined the Madrid Protocol, an EU trade mark may serve as a basis for an international application. In that case, the EUIPO will act as office of origin and will certify the identity between the EU trade mark (applied for or registered) and the international application.

You can now file an international trade mark application based on an EU trade mark online.
Alternatively, you can use one of the two following forms.
  • The WIPO MM2 form in English, French or Spanish (available on the WIPO website), or
  • The EUIPO EM2 form in one of the 23 official languages used at the EUIPO, available in two different versions. The first version of the EUIPO form is for applications made in one of the three languages of the Madrid Protocol (English, French or Spanish). The second is for applications made in the 20 other languages (both versions of this form are available on the EUIPO website).
Further information on international application forms.

Once an international application is filed via the EUIPO a fee will have to be paid.
Further information on fees and payments.

The international application may be based on a registered EU trade mark or on an EU trade mark application. It must be filed directly at the EUIPO by the trade mark’s owner or representative and can be done online. The EUTM owner or applicant must be a national of a country of the European Union or must have a real and effective industrial or commercial establishment or domicile within the European Union.
If the international application is made in an official language of the European Union that is not a language of the Protocol, a Madrid Protocol language must be indicated (English, French or Spanish) which will be the language of the international application. If translations of the goods and services are not provided by the applicant, he or she must authorise the EUIPO to provide them.
The EUIPO verifies the content and completeness of the international application (in particular, the trade marks, the owner and the scope of the list of goods and services).
The international application is then forwarded electronically to the International Bureau of WIPO.

Further information concerning representatives can be found in the Guidelines, Part M, International Marks.

No. Our regulations do not contemplate mergers for registrations, so the Office is not bound by this new provision of the Madrid Agreement and Protocol since according to Article 182 EUTMR only provisions contained in our regulations will apply to international registrations designating the EU.

Yes. Our regulations allow for the division of applications and registrations (Articles 50 and 56 EUTMR). Per Article 182 EUTMR, the provisions contained in our regulations also apply to international registrations designating the EU (please see the 1 February 2019 amendment to the Common Regulations under the Madrid Agreement and Protocol — Rule 27bis — division of an international registration).

You can now submit a division application by using WIPO Form MM22 (available in the Madrid System languages, English, French and Spanish).
 
The application form must be submitted together with an additional page containing the list of goods/services that are to remain in the initial international registration (IR).
 
The application form must be filed via official means of communication, either online (via eComm), by fax or by post / special courier. To file your division application online, please log in to your User Area, go to eSearch plus, enter your IR number and under ‘Actions and communications’ select the option ‘send communication’.
 
Please read our guidelines on means of communication and Decision No. EX‑17‑4 of the Executive Director of the Office of 16/08/2017 concerning communication by electronic means.
 
The division application process entails the following steps:
 
  • the user presents the request to the Office by submitting Form MM22 in the language of the international registration;
 
  • EUIPO examines the request and transmits it to WIPO (if it is admissible under our regulation);
 
  • if the request complies with the requirements of Rule 27bis of the Common Regulations under the Madrid Agreement and Protocol, including the payment of the international fee, WIPO records the division and creates the divisional international registration in the International Register;
 
  • WIPO then notifies EUIPO which creates the divisional application in its database.

EUIPO does not charge for this service. However, please note that a CHF 177 fee is charged by WIPO to record the divisional application.

The division of an international registration will be recorded using the date of receipt by the WIPO of the request or, if there is an irregularity in the request, the date the irregularity was remedied. Please see the 1 February 2019 amendment to the Common Regulations under the Madrid Agreement and Protocol — Rule 27bis — division of an international registration.

The questions and answers provided on this page serve a purely informative purpose and are not a legal point of reference. Please consult the European Union Trade mark and Community Design Regulations or Trade mark / Design Guidelines for further details.

For more information about how the Office handles your personal data, please consult the Data Protection Statement.
 

Page last updated 14-03-2019
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