Madrid Agreement Concerning the International Registration of Marks

English title.

Entry into force (of the 1979 amendments): October 23, 1983.

Source: International Bureau of WIPO.

Note: Lists, updated on January 1 each year, of member States of the treaties administered by WIPO are published each year in the January issue of Industrial Property.

For the text of the Regulations under the Madrid Agreement, see Industrial Property Laws and Treaties, MULTILATERAL TREATIES - 3-005.

Bibliographic data

11E

Organization: WIPO

Short title: Madrid Agreement

Subject matter: MRK

Text Identifier: WO-MAA

Published in "Industrial Property": 1988.12

Reference in collection of L&T: WO 3-004

WIPO Publication N° 204(E)

WDN: 0683H

Article 1

Establishment of a Special Union.

Filing of Marks at International Bureau.

Definition of Country of Origin*

*

Articles have been given titles to facilitate their identification. There are no titles in the signed, French text.

(1)

The countries to which this Agreement applies constitute a Special Union for the international registration of marks.

(2)

Nationals of any of the contracting countries may, in all the other countries party to this Agreement, secure protection for their marks applicable to ods or services, registered in the country of origin, by filing the said marks at the International Bureau of Intellectual Property (hereinafter designated as "the International Bureau") referred to in the Convention Establishing the World Intellectual Property Organization (hereinafter designated as "the Organization"), through the intermediary of the Office of the said country of origin.

(3)

Shall be considered the country of origin the country of the Special Union where the applicant has a real and effective industrial or commercial establishment; if he has no such establishment in a country of the Special Union, the country of the Special Union where he has his domicile; if he has no domicile within the Special Union but is a national of a country of the Special Union, the country of which he is a national.

Article 2

Reference to Article 3 of Paris Convention

(Same Treatment for Certain Cateries of Persons as for Nationals of Countries of the Union)

Nationals of countries not having acceded to this Agreement who, within the territory of the Special Union constituted by the said Agreement, satisfy the conditions specified in Article 3 of the Paris Convention for the Protection of Industrial Property shall be treated in the same manner as nationals of the contracting countries.

Article 3

Contents of Application for International Registration

(1)

Every application for international registration must be presented on the form prescribed by the Regulations; the Office of the country of origin of the mark shall certify that the particulars appearing in such application correspond to the particulars in the national register, and shall mention the dates and numbers of the filing and registration of the mark in the country of origin and also the date of the application for international registration.

(2)

The applicant must indicate the ods or services in respect of which protection of the mark is claimed and also, if possible, the corresponding class or classes according to the classification established by the Nice Agreement Concerning the International Classification of ods and Services for the Purposes of the Registration of Marks. If the applicant does not give such indication, the International Bureau shall classify the ods or services in the appropriate classes of the said Classification. The indication of classes given by the applicant shall be subject to control by the International Bureau, which shall exercise the said control in association with the national Office. In the event of disagreement between the national Office and the International Bureau, the opinion of the latter shall prevail.

(3)

If the applicant claims color as a distinctive feature of his mark, he shall be required:

1.

to state the fact, and to file with his application a notice specifying the color or the combination of colors claimed;

2.

to append to his application copies in color of the said mark, which shall be attached to the notification given by the International Bureau. The number of such copies shall be fixed by the Regulations.

(4)

The International Bureau shall register immediately the marks filed in accordance with Article 1. The registration shall bear the date of the application for international registration in the country of origin, provided that the application has been received by the International Bureau within a period of two months from that date. If the application has not been received within that period, the International Bureau shall record it as at the date on which it received the said application. The International Bureau shall notify such registration without delay to the Offices concerned. Registered marks shall be published in a periodical journal issued by the International Bureau, on the basis of the particulars contained in the application for registration. In the case of marks comprising a figurative element of a special form of writing, the Regulations shall determine whether a printing block must be supplied by the applicant.

(5)

With a view to the publicity to be given in the contracting countries to registered marks, each Office shall receive from the International Bureau a number of copies of the said publication free of charge and a number of copies at a reduced price, in proportion to the number of units mentioned in Article 16(4)(a) of the Paris Convention for the Protection of Industrial Property, under the conditions fixed by the Regulations. Such publicity shall be deemed in all the contracting countries to be sufficient, and no other publicity may be required of the applicant.

Article 3bis

Territorial Limitation

(1)

Any contracting country may, at any time, notify the Director General of the Organization (hereinafter designated as "the Director General") in writing that the protection resulting from the international registration shall extend to that country only at the express request of the proprietor of the mark.

(2)

Such notification shall not take effect until six months after the date of the communication thereof by the Director General to the other contracting countries.

Article 3ter

Request for (Territorial Extension)

(1)

Any request for extension of the protection resulting from the international registration to a country which has availed itself of the right provided for in Article 3bis m, ust be specially mentioned in the application referred to in Article 3(1).

(2)

Any request for territorial extension made subsequently to the international registration must be presented through the intermediary of the Office of the country of origin on a form prescribed by the Regulations. It shall be immediately registered by the International Bureau, which shall notify it without delay to the Office or Offices concerned. It shall be published in the periodical journal issued by the International Bureau. Such territorial extension shall be effective from the date on which it has been recorded in the International Register; it shall cease to be valid on the expiration of the international registration of the mark to which it relates.

Article 4

Effects of International Registration

(1)

From the date of the registration so effected at the International Bureau in accordance with the provisions of Articles 3 and 3ter, the protection of the mark in each of the contracting countries concerned shall be the same as if the mark had been filed therein direct. The indication of classes of ods or services provided for in Article 3 shall not bind the contracting countries with regard to the determination of the scope of the protection of the mark.

(2)

Every mark which has been the subject of an international registration shall enjoy the right of priority provided for by Article 4 of the Paris Convention for the Protection of Industrial Property, without requiring compliance with the formalities prescribed in Section (4)D of that Article.

Article 4bis

Substitution of International Registration for Earlier National Registrations

(1)

When a mark already filed in one or more of the contracting countries is later registered by the International Bureau in the name of the same proprietor or his successor in title, the international registration shall be deemed to have replaced the earlier national registrations, without prejudice to any rights acquired by reason of such earlier registrations.

(2)

The national Office shall, upon request, be required to take note in its registers of the international registration.

Article 5

Refusal by National Offices

(1)

In countries where the legislation so authorizes, Offices notified by the International Bureau of the registration of a mark or of a request for extension of protection made in accordance with Article 3ter shall have the right to declare that protection cannot be granted to such mark in their territory. Any such refusal can be based only on the grounds which would apply, under the Paris Convention for the Protection of Industrial Property, in the case of a mark filed for national registration. However, protection may not be refused, even partially, by reason only that national legislation would not permit registration except in a limited number of classes or for a limited number of ods or services.

(2)

Offices wishing to exercise such right must give notice of their refusal to the International Bureau, together with a statement of all grounds, within the period prescribed by their domestic law and, at the latest, before the expiration of one year from the date of the international registration of the mark or of the request for extension of protection made in accordance with Article 3ter.

(3)

The International Bureau shall, without delay, transmit to the Office of the country of origin and to the proprietor of the mark, or to his agent if an agent has been mentioned to the Bureau by the said Office, one of the copies of the declaration of refusal so notified. The interested party shall have the same remedies as if the mark had been filed by him direct in the country where protection is refused.

(4)

The grounds for refusing a mark shall be communicated by the International Bureau to any interested party who may so request.

(5)

Offices which, within the aforesaid maximum period of one year, have not communicated to the International Bureau any provisional or final decision of refusal with regard to the registration of a mark or a request for extension of protection shall lose the benefit of the right provided for in paragraph (1) of this Article with respect to the mark in question.

(6)

Invalidation of an international mark may not be pronounced by the competent authorities without the proprietor of the mark having, in od time, been afforded the opportunity of defending his rights. Invalidation shall be notified to the International Bureau.

Article 5bis

Documentary Evidence of Legitimacy of Use of Certain Elements of Mark

Documentary evidence of the legitimacy of the use of certain elements incorporated in a mark, such as armorial bearings, escutcheons, portraits, honorary distinctions, titles, trade names, names of persons other than the name of the applicant, or other like inscriptions, which might be required by the Offices of the contracting countries shall be exempt from any legalization or certification other than that of the Office of the country of origin.

Article 5ter

Copies of Entries in International Register.

Searches for Anticipation.

Extracts from International Register

(1)

The International Bureau shall issue to any person applying therefor, subject to a fee fixed by the Regulations, a copy of the entries in the Register relating to a specific mark.

(2)

The International Bureau may also, upon payment, undertake searches for anticipation among international marks.

(3)

Extracts from the International Register requested with a view to their production in one of the contracting countries shall be exempt from all legalization.

Article 6

Period of Validity of International Registration.

Independence of International Registration.

Termination of Protection in Country of Origin

(1)

Registration of a mark at the International Bureau is effected for twenty years, with the possibility of renewal under the conditions specified in Article 7.

(2)

Upon expiration of a period of five years from the date of the international registration, such registration shall become independent of the national mark registered earlier in the country of origin, subject to the following provisions.

(3)

The protection resulting from the international registration, whether or not it has been the subject of a transfer, may no longer be invoked, in whole or in part, if, within five years from the date of the international registration, the national mark, registered earlier in the country of origin in accordance with Article 1, no longer enjoys, in whole or in part, legal protection in that country. This provision shall also apply when legal protection has later ceased as the result of an action begun before the expiration of the period of five years.

(4)

In the case of voluntary or ex officio cancellation, the Office of the country of origin shall request the cancellation of the mark at the International Bureau, and the latter shall effect the cancellation. In the case of judicial action, the said Office shall send to the International Bureau, ex officio or at the request of the plaintiff, a copy of the complaint or any other documentary evidence that an action has begun, and also of the final decision of the court; the Bureau shall enter notice thereof in the International Register.

Article 7

Renewal of International Registration

(1)

Any registration may be renewed for a period of twenty years from the expiration of the preceding period, by payment only of the basic fee and, where necessary, of the supplementary and complementary fees provided for in Article 8(2).

(2)

Renewal may not include any change in relation to the previous registration in its latest form.

(3)

The first renewal effected under the provisions of the Nice Act of June 15, 1957, or of this Act, shall include an indication of the classes of the International Classification to which the registration relates.

(4)

Six months before the expiration of the term of protection, the International Bureau shall, by sending an unofficial notice, remind the proprietor of the mark and his agent of the exact date of expiration.

(5)

Subject to the payment of a surcharge fixed by the Regulations, a period of grace of six months shall be granted for renewal of the international registration.