How to use Madrid system ? The Madrid system of international TM registration. In order to file an international application through Madrid system, firstly, you need to have already registered, or have filed an application, in your National Intellectual Property Office (Office of origin).
The registration or application is known as the basic mark. You then need to submit your international application through this same Intellectual Property Office, which will certify and forward it to the World Intellectual Property Organization (WIPO). After that, your application shall go through two stages: formal examination and substantive examination.
In the formal examination, WIPO only conducts a formal examination of your international application. Once approved, your mark is recorded in the International Register and published in the WIPO Gazette of International Marks.
WIPO will then send you a certificate of your international registration and notify the IP Offices in all the territories where you wish to have your mark protected. You should notice that the scope of protection of an international registration is not known at this stage in the process.
It is only determined after substantive examination and decision by the Intellectual Property Offices in the territories in which you seek protection.
After passing the formal examination, your application’s substance shall be examined by the IP Office of the designated Contracting Party.
The IP Offices of the territories where you want to protect your mark will make a decision within the applicable time limit (12 or 18 months) in accordance with their legislation. WIPO will record the decisions of the IP Offices in the International Register and then notify you.
If an IP Office refuses to protect your mark, either totally or partially, this decision will not affect the decisions of other IP Offices. You can contest a refusal decision directly before the IP Office concerned in accordance with its legislation. If an IP Office accepts to protect your mark, it will issue a statement of grant of protection.
The international registration of your mark is valid for 10 years. You can renew the registration at the end of each 10-year period directly with WIPO with effect in the designated Contracting Parties concerned.
