To submit the international application for IP (intellectual property), one should have already registered or applied for the mark in the one’s home IP (intellectual property) office.
This guide illustrates more about the process, including one’s eligibility to use the Madrid System, how to finish the application form, required fees, and how to track the status of your application as it moves via the examination process.
To be entitled to use the Madrid system, you should first have a connection with one of its members (referred to as contracting parties). This connection would decide your office of origin (regional or national IP office). You should file your application via this office of origin.
To fulfil the requirement, you should;
– Have a business (such as effective or real industrial or commercial establishment) in the contracting parties).
– Be domiciled in the contracting parties.
– Be a national of the contracting parties.
For instance, if you a national of or have a business in America, your connection would be with America (a member of the Madrid system), and you should file your international application via America’s IP (intellectual property) office.
Suppose you have a connection with various members, for instance. In that case, you might be a Mexican living in America, and you can opt for any one of those members to submit your international application.
To check your eligibility to submit an international application under the Madrid System, you can use the International application simulator.
Basic registration or requirement (Basic mark)
If you have the requisite connection to the Madrid System member (as mentioned above), you should have either applied for or acquired a mark with the IP office of that member (such as your office of origin). A basic mark is needed before you can submit an international application for your mark via the same office (your office of origin).
How to submit?
Once you have done trademark registration in your country with your office of origin (from which you have acquired the basic mark), you can submit an international application under the Madrid System. This application has to be filed to your office of origin, which would check that it corresponds with the particulars of your basic work, certify the international application, and then file it to WIPO.
Finishing your international application.
To submit an international application, form MM2 (available in French, English, and Spanish) must be used. You can finish it by using the Madrid application assistance that can retrieve all the needed information directly from the database of your local office of origin of IP or through manually filing or downloading the form MM2.
Madrid e-submission is available for international applications submitted via several IP offices. WIPO advises using the Madrid application assistance to complete international applications where online submission is not made available by the office of origin.
List of goods and services.
You must classify the list of goods and services as per the latest international classification of goods and services (nice classification). You can take help from the Madrid goods and services manager.
Using the Madrid application assistance would save your time. The list of goods and services of your basic mark can be directly imported from your database from the office of origin, translated automatically and examined for classification via integration of Madrid goods and services manager.
Examining the guidelines related to the classification of goods and services.
Remember that you cannot broaden or expand the list of goods and services after filing your international application, not even to cover goods and services stated in the basic mark. If you intend to expand your list after filing the form MM2, you will have to submit a new international application.
Fees and payment.
The fees include;
– Basic fee.
– Each designated contracting party’s complimentary fee.
– Each class of goods and services’ supplementary fee in excess of time.
For specific contracting parties, the complementary fee will be replaced by an individual fee. To obtain the confirmation of whether or not a contracting party applies to the individual fee (and the amount of it), you should check the list given on the website.
Put your email address and you would be automatically signed up for e-notifications. All the notifications related to your application will be sent to your Email. Use the Email which is associated with all other marks.
Tracking the status of the application via Madrid monitor online
It offers the status of documents being processed by WIPO. Select the real-time search in the left-hand column, then indicate your basic application or registration number.
Submitting your international application
Use Madrid application assistance to submit your international application. It stores all required information to complete an international application linearly and intuitively.
Once completed, the international application would be made available in PDF format for you to file to the office of origin for certification.