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Concerning the International Registration of Marks

Question:
Concerning the International Registration of Marks
Answer:
1. What are the advantages available in the system of international registration of trademarks?
2. What is the main difference between the Agreement and Protocol?
3. Where can I see which states are party to the Madrid Agreement Concerning the International Registration of Marks and its Protocol?
4. What are the conditions for filing an international application?
5. Where should I file an international application?
6. How does the Madrid system?
7. How long is the renewal of the international registration?
8. How can I calculate the fee in connection with international applications, and to make payment of WIPO?
9. Can the international application claims priority from an earlier application?
10. What types of forms used for filing an international application?
11. What changes can be made in the International Register?
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1. What are the advantages available in the system of international registration of trademarks?
 
The Madrid System is a universal solution from the point of view of the international registration of marks and management. Apply one application, in one language, please pay one set of fees - and for you to open the possibility of protection of a mark in the territory of 97 Member States.
The main advantages of the international registration of trademarks:
1) the possibility of filing a single international application, drawn up in one language, and one of the international payment fee.
2) a decrease in the international fee size compared to the cost to the national accounts, due to the exclusion of the applicant's costs and fees of patent attorneys reduce application fees, etc.
3) the possibility of additional indications of countries in which the holder of an international registration may seek protection in the future by means of a subsequent designation (territorial expansion).
4) the fixed term of consideration of not more than 1 year under the Madrid Agreement and not more than 1.5 years in the framework of the Protocol
5) the absence of a response by the Office of the country within the specified period, the international registration is valid on the territory of the country.
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2. What is the main difference between the Agreement and the Protocol?
 
The main differences introduced by the Madrid Protocol in the system of international registration:
1) The international application can be based on a basic application, and the basic registration;
2) The international application may be prepared, not only French, but also in English or Spanish;
3) The term of consideration of the international registration in each designated by the applicant country may be 18 months or more (instead of 12 months under the Madrid Agreement);
4) The Office of any Member State the right to establish an individual duty size;
5) The international registration which is canceled at the request of the office of origin of the country for five years from the date of the international registration may be converted into the national (regional) application to the respective participating countries, which operated the international registration.
6) In addition, the Madrid Protocol allows communication with a regional trademark registration systems
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3. Where can I see which states are party to the Madrid Agreement Concerning the International Registration of Marks and its Protocol?
 
Lists of States Parties to the Madrid Agreement Concerning the International Registration of Marks and its Protocol are available on WIPO's website via the link http://www.wipo.int/treaties/ru/ShowResults.jsp?lang=en&treaty_id=21 and http://www.wipo.int/treaties/ru/ShowResults.jsp?lang=ru&treaty_id=8,resp....
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4. What are the conditions for filing an international application?
 
According to paragraph 1 of Article 47 of the Law of the Republic of Kazakhstan "On Trademarks, Service Marks and Appellations of Origin", the application for international registration of a trademark shall be filed through the expert organization - RSE "NIIP".
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5. Where should I file an international application?
 
The international application is filed with the Office of the country of origin. Office certifies that the sign indicated in the international application is identical to the basic registration or basic application, the applicant of the international application is the same person as the owner of the basic registration or basic application, as well as the fact that the list of goods and services international Patent application corresponds to the list of goods and services specified in the basic application or basic registration.
After that, the international application is sent to the country of origin by the Office to the International Bureau.
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6. How does the Madrid system?
 
The Madrid system includes 3 stages:
Stage 1- Applying through your national or regional IP office (Office of origin)
Before filing an international application, you must create an account or have to apply to the ministry of the country of origin.
Then you need to file an international application through the same agency that will reassure her and send her to the WIPO.
Stage 2 - Formal examination carried out by WIPO
WIPO conducts a formal examination of the international application. After receiving approval mark is entered in the International Register and published in the WIPO Gazette of International Marks. WIPO then sends the applicant a certificate of international registration and notify the authorities in all the territories in which the applicant sought to ensure the protection of the mark.
Stage 3 - The substantive examination carried out by national or regional authorities (Office of a designated Contracting Party)
Offices in the territories in which the applicant wishes to receive the mark protection, will take a decision within the applicable time limit (12 or 18 months) in accordance with its legislation. WIPO will produce a record of the decisions of the IP Offices in the International Register, and then notifies the applicant.
If an IP Office refuses to protect your mark, either fully or in part, this decision does not affect the decisions of other IP Offices. You can challenge the decision to refuse directly to the sacrament of IP Office in accordance with its legislation. If an IP Office agrees to protect your mark, it will make a statement of grant of protection.
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7. How long is the renewal of the international registration?
 
The international registration is valid for 10 years. The applicant can renew the registration at the end of each 10-year period directly to WIPO so that it acted in accordance designated Contracting Party.
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8. How can I calculate the fee in connection with international applications, and to make payment of WIPO?
 
Information on fees in connection with international applications, including the calculation of fees and payment methods, see "How to Apply".
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9. Can the international application claims priority from an earlier application?
 
The priority in the international application may be claimed within six months from the filing date of the basic application.
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10. What types of forms used for filing an international application?
 
There are three official form of international applications by the International Bureau of WIPO, namely: MM1, MM2 and MM3, available on the WIPO website http://wipo.int/madrid/en/forms/ are used depending on whether the application is filed only part of the Madrid agreement, the Madrid Protocol only, or both the agreement and the Protocol respectively.
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11. What changes can be made in the International Register?
 
The International Register is subject to change in relation to changes in the name and address of the owner of the international registration, change of the owner of the international registration (which can either be complete or touch the part of these countries, as well as goods and services), etc.
To do this, the owner of the international registration shall send to the International Bureau an application form and pay the prescribed fee.
 
 
Published: 1 February, 2018 - 12:26 All questions
 
August 2021
 
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