International Registration Process
The Madrid Protocol allows trademark owners to apply for an international trademark protection in several or all the member states of the World Intellectual Property Organization (WIPO), with a single application.
The number of member states is currently 128 countries, including the European Union, China and the US.
An international application can be filed online with the Madrid e-filing system. The application must be based on a national application or a pre-existing national registration. Hence, if a national registration is not in place, an application for registration in Iceland must be filed with the Icelandic Intellectual Property Office (ISIPO), before or at the same time as the international application is filed. The mark applied for in the international application must be identical to the national mark and the list of goods and services cannot be expanded.
If an international application is filed within 6 months from the filing date of the national application/registration it is based on, it will receive the same filing date as the national application. It will subsequently have priority over applications filed within this period.
Fees for handling the international application are paid to the ISIPO in accordance with the list of fees. Application fees are paid directly to WIPO, which include handling fees and individual fees for each designated country in the application. Application fees to WIPO can be calculated and estimated using the WIPO fee calculator.
The ISIPO reviews the international application and notifies the applicant if corrections need to be made. When the ISIPO has completed its review, the Office sends the application to WIPO for further processing. If irregularities are found during WIPO’s examination, the applicant is given a deadline to resolve them and respond to WIPO through ISIPO. Once WIPO’s inspection is completed, the application receives an international registration number and is sent to all the countries designated in the application. Each designated country examines the international registration substantively and reaches an independent decision on the registrability of the mark applied for, i.e., whether to register it or refuse protection. The decision of each respected member state is communicated to the applicant via WIPO.
The holder of an international registration can designate more countries at a later stage using WIPO’s online subsequent designation form. Application fees are calculated using the WIPO fee calculator and the application process is the same as for a basic application (see Examination process).
Request for changes or corrections
Changes and corrections to an international registration can be submitted to WIPO using their online forms or via the ISIPO using writable versions. Examples include change of ownership, restrictions of the claimed goods and services, appointment of a representative etc.
An international registration is valid for 10 years from the date of registration. The registration can be renewed for 10 years at a time using WIPO’s online renewal form.
How to monitor my application/registration?
The Madrid Monitor database allows applicants and holders of an international registrations to track the status and processing of their applications or registrations. The database allows for viewing application statuses, decisions on registrability from designated countries, changes made to an international registration and more.
In a nutshell:
Apply in more than 120 countries
You can apply anytime
must be based on a national application or a pre-existing national registration
Priority from date of application
if filed within 6 months
renewable every 10 years at WIPO