Title page
Contents
PREFACE 3
PART A. INTRODUCTION 19
THE GUIDE 19
THE MADRID SYSTEM: BASIC FEATURES 20
The Madrid Agreement and the Madrid Protocol 20
Who May Use the System? 20
Brief Description of the System 21
Advantages of the System 22
Comparison Between the Agreement and the Protocol 22
Applicable Treaty 23
Change in the Treaty Applicable to the Recorded Designation of a Contracting Party Bound by Both the Agreement and the Protocol 25
BECOMING PARTY TO THE AGREEMENT OR PROTOCOL 26
DECLARATIONS AND NOTIFICATIONS BY CONTRACTING PARTIES 27
Common Office of Several States 27
Territorial Effect 27
Limitation Concerning Existing Marks 28
Under the Agreement 28
Under the Protocol 28
Extension of Time for Notifying Refusal 28
Notification of Decisions Following a Provisional Refusal of Protection 29
Individual Fees 30
Presentation of Subsequent Designations 31
Declaration of Intention to Use the Mark 31
Declaration that the Recording of Licenses in the International Register Has No Effect 32
Collecting and Forwarding Fees 32
Continuation of Effects in Successor State 32
Publication of Notifications and Declarations 32
FEE REDUCTION FOR APPLICANTS FROM LEAST DEVELOPED COUNTRIES (LDCS) 33
FURTHER INFORMATION ABOUT THE MADRID SYSTEM 33
PUBLIC INFORMATION ABOUT INTERNATIONAL APPLICATIONS AND INTERNATIONAL REGISTRATIONS 35
The Gazette 35
ROMARIN 35
Extracts from the International Register 37
Annual, Monthly and "In Progress" Statistics 38
Online Services Assisting in the Filing of Applications and Management of International Registrations 36
Madrid Goods and Services Manager (MGS) 36
Madrid Portfolio Manager (MPM) 37
Madrid Real-time Status (MRS) 37
Madrid Electronic Alert (MEA) 37
PART B. PROCEDURE 39
CHAPTER I: GENERAL 39
INTRODUCTION 39
COMMUNICATIONS WITH THE INTERNATIONAL BUREAU 39
Modalities of Communications 40
Communications in Writing 40
Facsimile 40
Electronic Communications 41
Official Forms 42
Continuation Sheets 43
Indication of Dates 43
Optional Forms 43
Calculation of Time Limits 44
Irregularities in Postal and Delivery Services and in Communications Sent Electronically 45
Continued Processing 46
Languages 47
General Principles 47
Trilingual Regime 47
Regime Applicable to Certain International Registrations Resulting from International Applications Made Before April 1, 2004 or International Applications Governed Exclusively by the Agreement Made Between April 1, 2004 and August 31, 2008, Inclusively 48
PAYMENT OF FEES TO THE INTERNATIONAL BUREAU 49
Currency of Payment 49
Mode of Payment 49
Date of Payment 51
Change in the Amount of Fee 51
Fee Reduction for Applicants from Least Developed Countries (LDCs) 52
REPRESENTATION BEFORE THE INTERNATIONAL BUREAU 52
Appointment of Representative 53
Method of Appointment 53
In International Application, Subsequent Designation or Request to Record a Change 53
In a Separate Communication 53
Only One Representative 54
Irregular Appointment 54
Recording and Notification of Appointment 54
Effect of the Appointment 54
Cancellation of Appointment 55
Cancellation at the Request of the Representative 56
Notification of Cancellation 56
No Fee for Recording 56
CHAPTER II: THE INTERNATIONAL PROCEDURE 57
INTRODUCTION 57
THE INTERNATIONAL APPLICATION 57
Substantive Requirements 57
Basic Registration or Application 57
The Office of Origin 58
What Kind of International Application? 59
Several Applicants 61
Presentation of the International Application 62
Language of the International Application 62
The Application Form 62
Item 1: Contracting Party Whose Office Is the Office of Origin 63
Item 2: Applicant 64
Item 3: Entitlement to File 65
Item 4: Appointment of a Representative 66
Item 5: Basic Registration or Basic Application 67
Item 6: Priority Claimed 68
Item 7: The Mark 69
Item 8: Color(s) Claimed 71
Item 9: Miscellaneous Indications 71
Item 10: Goods and Services for Which International Registration Is Sought 73
Item 11: Designated Contracting Parties 74
Item 12: Signature by Applicant or Representative 76
Item 13: Certification and Signature by Office of Origin 76
Premature Request for International Application 81
Irregularities in the International Application 83
Irregularities with Respect to the Classification of Goods and Services 83
Irregularities with Respect to the Indication of Goods and Services 85
Other Irregularities 86
Registration, Notification and Publication 90
THE INTERNATIONAL REGISTRATION 90
Effects of the International Registration 90
Date of the International Registration 90
Irregularities: Date in Special Cases 91
Period of Validity 92
Registration in the International Register 92
Content of the International Registration 92
Publication of the International Registration 93
Language of Registration and Publication 93
REFUSAL OF PROTECTION 94
Grounds for Refusal 94
Time Limits for Refusal 95
Procedure for Refusal of Protection 99
Notification of Refusal of Protection 99
Contents of the Notification 99
Additional Contents of the Notification when Provisional Refusal Based on Opposition 100
Recording and Publication of the Provisional Refusal: Transmittal to the Holder 100
Language of the Notification of Provisional Refusal 101
Irregular Notifications of Provisional Refusal 101
Procedure Following Notification of Provisional Refusal 103
STATUS OF A MARK IN A DESIGNATED CONTRACTING PARTY 104
Interim Status of a Mark 104
Final Disposition on the Status of a Mark 105
Statement of Grant of Protection where no Notification of Provisional Refusal has been Communicated 105
Statement of Grant of Protection Following a Provisional Refusal 106
Confirmation of Total Provisional Refusal 106
Further Decision 107
Recording, Information to the Holder and Transmittal of Copies 107
Rules and amendments to the Common Regulations, which came into effect on January 1, 2013 107
SUBSEQUENT DESIGNATION 108
Entitlement to Make the Subsequent Designation 108
No Subsequent Designations Possible in Certain Cases 109
Presentation of the Subsequent Designation 110
Language of the Subsequent Designation 110
Official Form 110
Item 1: International Registration Number 111
Item 2: The Holder 111
Item 3: Appointment of a Representative 111
Item 4: Contracting Parties Subsequently Designated 111
Item 5: Goods and Services for Which the Subsequent Designation Is Made 112
Item 6: Miscellaneous Indications 112
Item 7: Request Relating to the Date of Effect 113
Item 8: Signature of the Holder or His Representative 113
Items 9 and 10: Date of Receipt of the Request by the Office and Signature by the Office 113
Effect of Subsequent Designation 115
Date of Subsequent Designation 115
Irregular Subsequent Designation 116
Recording, Notification and Publication 117
Period of Protection 118
Refusal of Protection 118
A Particular Case of Subsequent Designation: Subsequent Designation Resulting from the Conversion of the Designation of a Contracting Organization (the European Union) 118
Official Form and Contents 119
Presentation of the Subsequent Designation Resulting from Conversion 120
Date of Subsequent Designation Resulting from Conversion 120
CHANGES IN THE INTERNATIONAL REGISTRATION 120
Change of Name or Address of the Holder or of His Representative 120
Change of Name or Address of the Holder 120
Official Form (MM9) 120
Item 1: International Registration Number 120
Item 2: Name of the Holder 121
Item 3: Change in Name and/or Address of the Holder 121
Item 4: New Contact Details 121
Item 5: Appointment of a Representative 121
Item 6: Signature by the Holder or His Representative 121
Item 7: Signature of the Office 122
Change of Name or Address of the Representative 122
Irregular Requests 123
Recording, Notification and Publication 123
Limitation, Renunciation and Cancellation 124
Effects and Consequences of Limitation, Renunciation or Cancellation 124
Request for Recording 125
Presentation of Request to Record Renunciation or Cancellation Following Change in Applicable Treaty 126
Official Form 126
International Registration Number 126
Holder 126
Appointment of a Representative 127
Contracting Parties 127
Goods and Services 127
Signature by the Holder or Representative 127
Signature of the Office 128
Fee Calculation Sheet (Limitation Only) 128
Irregular Requests 128
Recording, Notification and Publication 129
Declaration that a Limitation Has No Effect 129
Change in Ownership 130
Entitlement of the Transferee to Be the New Holder 130
Change of Applicable Treaty Following the Recording of a Change in Ownership 132
Request to Record a Change in Ownership 133
Official Form 134
Item 1: International Registration Number 134
Item 2: Holder 134
Item 3: Transferee 134
Item 4: Entitlement of the Transferee to Be the Holder 134
Item 5: Appointment of a Representative 135
Item 6: Scope of the Change in Ownership 135
Item 7: Miscellaneous Indications 136
Item 8: Signature by the Holder or His Representative 136
Item 9: Signature of the Office 136
Irregular Requests 137
Recording, Notification and Publication 137
Partial Change in Ownership 137
Merger of International Registrations Following Change in Ownership 138
Declaration that a Change in Ownership Has No Effect 139
Corrections in the International Register 140
Refusal Following a Correction 141
No Other Change in the International Register 141
RENEWAL OF INTERNATIONAL REGISTRATION 142
Renewal Following Refusal, Renunciation or Invalidation 142
International Registrations Effected Before the Entry into Force of the Common Regulations 143
Procedure for Renewal 144
Fees for Renewal 145
Renewal Fees Following Change in Applicable Treaty 147
Insufficient Fees Paid 147
Recording of the Renewal; Notification, Certificate and Publication 148
Complementary Renewal 149
Non-Renewal 149
DEPENDENCE AND INDEPENDENCE 149
Ceasing of Effect During the Dependency Period 149
Ceasing of Effect of the Basic Application or Registration 151
Procedure for Notification of Ceasing of Effect 152
Change in Ownership of the International Registration During the Dependency Period 155
Division or Merger of the Basic Application, the Registration Resulting Therefrom, or the Basic Registration 155
Transformation 156
Transformation Following Change in the Applicable Treaty 157
FACTS IN CONTRACTING PARTIES AFFECTING INTERNATIONAL REGISTRATIONS 157
Invalidation in a Designated Contracting Party 157
Restriction of the Holder's Right of Disposal 158
Licenses 159
Presentation of Request 159
Irregular Request 161
Recording and Notification 162
Declaration that the Recording of a Given License Has No Effect 162
Declaration that the Recording of Licenses in the International Register Has No Effect in a Contracting Party 162
Amendment or Cancellation of the Recording of a License 163
Replacement of National or Regional Registration by International Registration 163
Facts Concerning Seniority Claims 165
CONTINUATION OF EFFECTS OF INTERNATIONAL REGISTRATIONS IN CERTAIN SUCCESSOR STATES 166
CONDITIONS FOR OPENING, USING AND CLOSINGA CURRENT ACCOUNT AT WIPO 167
ANNEX. FOR THE ATTENTION OF WIPO CURRENT ACCOUNT ADMINISTRATORS 171