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International trademark

To extend the trademark abroad it is possible to use a unified filing system, regulated by the Madrid Agreement and Protocol, which covers several countries at the same time, designating the countries concerned at the time the application is filed. By using this procedure it is possible to obtain, in each of the countries which have signed the Convention to the Madrid Agreement and Protocol, the same protection and the same means of defence against every infringement of the trademark that the laws of that country give to national trademarks.

Contracting States

The countries which have signed the Convention to the Madrid Agreement and/or Protocol are:

Albania, Algeria, Antigua and Barbuda, Armenia, Australia, Austria, Azerbaijan, Bahrain, Belarus, Belgium, Bhutan, Bosnia-Herzegovina, Botswana, Bulgaria, Cambodia China, Colombia, Croatia, Cuba, Cyprus, Czech Republic, Denmark, Egypt, Estonia, European Union, Finland, France, Georgia, Germany, Ghana, Greece, Hungary, Iceland, Iran, Ireland, Israel, Italy, Japan, Kazakhstan, Kenya, People's Democratic Republic of Korea, Republic of Korea, Kyrgyzstan, Latvia, Lesotho, Liberia, Liechtenstein, Lithuania, Luxembourg, Republic of Macedonia, Madagascar, Mexico, Moldova, Monaco, Mongolia, Montenegro, Morocco, Mozambique, Namibia, Netherlands, New Zealand, Norway, Oman, Republic of the Philippines, Poland, Portugal, Romania, Russian Federation, Rwanda, San Marino, Sao Tome and Principe, Serbia, Sierra Leone, Singapore, Slovak Republic, Slovenia, Spain, Sudan, Swaziland, Sweden, Switzerland, Syria, Tajikistan, Tunisia, Turkey, Turkmenistan, Ukraine, United Kingdom, United States of America, Uzbekistan, Vietnam, Zambia, Zimbabwe.

Connections

An Italian applicant can therefore file an International Trademark using either the Madrid Agreement or the Madrid Protocol. The International trademark is dependent on the national trademark previously registered in the country of origin for a period of 5 years from the registration date. During these 5 years, the International trademark follows the vicissitudes of the national trademark on which it is based, so that if the latter were abandoned or lapsed or were cancelled, so too would the International trademark. After the 5 year period has elapsed, the International trademark becomes independent of the national trademark which was previously registered in the country of origin. This clause protects those who take legal action against anyone who has illegally obtained the registration of the trademark and the subsequent extension of the protection thereof to the countries signatory to the Convention. According to this clause, legal action can be taken only in the country of origin; in this way, it is not necessary to undertake numerous legal actions in all the countries where the International trademark has been applied for.

Procedure

The advantage of choosing the International trademark to extend one's rights in the above-mentioned countries is a purely economic one. In order to file an International trademark, the holder of the trademark must have his residence, or in the case of a company, its activity, in one of the countries which has signed the Convention, and he must first have filed and obtained the trademark in his own country. The International trademark lasts 10 years from the date of its registration and can be renewed an unlimited number of times. Within 12 months from filing, for the signatory States of the Madrid Agreement, and within 18 months for the signatory States of the Madrid Protocol, the different national Authorities can raise objections as to whether the trademark can be registered in their country. Once this period of time has elapsed without any rejections being received, the trademark is considered to be accepted, except for the rights of third parties deriving from identical or similar prior trademarks. These rights of third parties, should there be any, can be upheld through the Courts. Most member countries of the Convention, such as Italy, do not in general raise any objection, and so the trademark is automatically accepted. Other countries, such as for example the Russian Federation and Egypt, check first to see if the International trademark is identical or similar to other prior trademarks. If so, the national Authorities of these countries give notification of their refusal with a list of the prior trademarks. In order to overcome these objections, it is necessary to check the validity of the prior trademarks cited by the national Authorities which have given their refusal. Still other countries, such as for example Germany, Austria and Switzerland, do not carry out research into the prior documents and therefore do not give refusals founded on the trademark's lack of novelty. Usually, refusals are normally given because the trademarks are not considered distinctive. There is also the case (for example, in Germany, Spain and Switzerland) where the local law allows third persons to present an opposition against the trademark being registered if it is identical or similar to their own and covering identical or similar products. The range of possible objections is very wide and the criteria for trying to overcome them may vary from country to country. It may even happen that the same type of objection is overcome in one country and not in another. This is fundamentally due to the diversity of the different legislations and, in the case of trademarks being confused, to the different criteria used by the individual examiners to decide on whether they might be confused or not.

Differences between Agreements

The substantive differences between the Madrid Agreement and the Madrid protocol are as follows:

  • an International Trademark based on the Madrid Protocol can be filed based on an application for a trademark and not on a registration for a trademark (as required by the States belonging exclusively to the Madrid Agreement);
  • the period within which the member States of the Madrid Protocol can present objections and refusals is 18 months from the provisional registration date (and not 12 months as in the Madrid Agreement);
  • the fees for the individual countries of the Madrid protocol are not fixed as for the countries of the Madrid Agreement, but vary from country to country, and in some cases (Japan for example) are rather high;
  • in the event that the International Trademark is subjected to an action of annulment within 5 years of registration, the owner can transform it into different national Trademarks in the countries of the Madrid Protocol where there are no impediments.
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