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Advantages and procedure International Registration of Marks

Advantages and procedure International Registration of Marks

The Madrid system for regulating relations in the field of international protection of trademark rights, functions under the Madrid Agreement Concerning the International Registration of Marks (the Madrid Agreement) and the Protocol Relating to the Madrid Agreement (the Protocol). The administrative management of the system implemented by the International Bureau of the World Intellectual Property Organization.

The Republic of Kazakhstan is a party to the Madrid Agreement from 25 December 1991 and the Protocol since 8 December 2010.

The Madrid system offers a trademark owner the possibility of protection of marks in several member countries of the Madrid Union by filing a single application and payment of a fee. Also simplifies the subsequent management of the trademark, as through a single procedural step, you can make changes to limit the scope of the rights to renew the registration, etc.

Member countries of the Madrid system

International application

The mark may be filed for international registration if it has already been registered or filed an application for trademark registration in the national office.

The international application filed with the International Bureau through the Office of origin, which confirms that the data indicated in the international application correspond to the national application or registration. Under the Office of origin is understood the agency, which serves national application or where the trademark is registered.

The international application can ask for priority pursuant to Article 4 of the Paris Convention. The basis for the emergence of the right of priority in other member countries of the Paris Convention recognizes the supply of a national application.

There are three types of international applications:

  1. the international application is governed exclusively by the Madrid Agreement (Form MM1);
  2. an international application governed exclusively by the Protocol (form MM2);
  3. an international application governed Madrid Agreement and Protocol (Form MM3).

The international application can be filed in one of the three languages ​​of the Madrid system, namely English, French or Spanish. Kazakhstan's Office prepares the application in English and French.

Registration of a mark at the International Bureau shall be subject to the advance payment of an international fee which shall include:

  1. a basic fee;
  2. additional fee for each class exceeding three;
  3. a complementary fee for any request for extension of protection.

In accordance with Article 8 (7) of the Protocol, any Contracting Party may declare that, in respect of each international registration in which it is listed in accordance with Article 3 ter the, as well as on the extension of such international registration, instead of the deductions from supplementary and complementary fees it wants to receive a fee (hereinafter referred to as "the individual fee").

These fees are paid directly to the International Bureau.

The International Bureau checks that the international application requirements stipulated by the Madrid Agreement, the Protocol and the Common Regulations. If the application does not meet the requirements, the International Bureau shall notify the Office of origin and the applicant and provide three months to correct these observations. If the application meets all the requirements, the mark is registered in the International Register and published in the Official Gazette. The International Bureau then notifies each Contracting Party in which protection is sought.

What is needed for the application for international registration

  1. the applicant's / holder, containing a request for the registration of the international application and the direction of the International Bureau (if the application is made out of RSE "BRE") or an application for the direction of the international application to the International Bureau (if the application is independently executed by the applicant / right holder) ;
  2. filled in official form the International Bureau in accordance with the requirements of the Common Regulations (in the case of self-registration). Official forms are available on the WIPO website;
  3. a document confirming payment of the fee to the International Bureau for the International Registration of Marks;
  4. a document confirming payment of RSE "NIIP" of services for processing the application, the translation of the list of goods / services in English or French, processing and forwarding the application to the International Bureau. In the case of self-registration rate is paid only for the processing and forwarding the application to the International Bureau.


The subsequent designation

The action of the international registration can be extended to any Contracting Party not listed in the original international application by filing a form MM4.


The term of registration. Renewals.

The international registration is valid for 10 years. It can be renewed for the next 10 years by paying a renewal fee. The International Bureau shall send a reminder to the owner and his representative in the case of 6 months prior to the expiry of the international registration.

The international registration may be renewed in respect of all the Contracting Parties, or only some of them.


Dependence of the international registration on the base plate

Within five years from the date of the international registration of an international registration remains dependent on the basic application or registration. If the basic registration ceases to operate as a result of the cancellation by the decision of the Office of origin or a court, or as a result of voluntary renunciation of the owner or the extension of activities during this five-year period, the international registration will no longer be protected. Similarly, the international registration filed on the basis of the basic application ceases to have effect if the basic application is withdrawn or it has been denied for five years, or if such an application registration has ceased to have effect within that period.

the Office of origin must notify the International Bureau of the facts and decisions concerning the termination or refusal and, if necessary, sends a request for the cancellation of the international registration to the extent necessary. Cancellations published in the Official Journal and forwarded to the Contracting Parties.

If within three months from the date of cancellation of the owner submits an application to the national authorities of the Contracting Parties, which have been specified in accordance with the Protocol, the filed application enjoys a priority of the international registration. This action is not available for Contracting Parties designated under the Madrid Agreement.

After the expiry of the five-year period, the international registration becomes independent of the national registration or application.


Changes in the International Register

Change the name or address of the holder or his representative may be recorded in the International Register on request.

In the same way, change the owner of the international registration may be made in respect of all or part of goods and services and in respect of all or some of the Contracting Parties.

The International Registry can be made to:

  1. limitation of the list of goods and services in respect of all or some of these in the international registration of the Contracting Parties;
  2. refusal in respect of some of the Contracting Parties for all the goods and services;
  3. termination (cancellation) of the international registration in respect of all the Contracting Parties for all or part of goods and services;
  4. license issued in respect of all or some of the Contracting Parties for all or part of goods and services.


Information about the changes and the termination of the licenses shall be published in the Official Journal and forwarded to the designated Contracting Parties.

Changes can not be made in the international registration of marks either during extension or at any other time. The list of goods and services can not be changed in a way that will expand the scope of protection.


November 2022