This page sets out the procedure under the Madrid Protocol after the World Intellectual Property Office (WIPO) has sent details of your registration or subsequent designation(s) to each of the designated offices. The future procedure is set out below.
Objections may be made by the designated office itself, or by third parties for some designations, if there are reasons to object under the law of that designation. If there is an objection for any of the designations, then that objection will be sent to WIPO by the designated office(s). If there are such objections, WIPO will tell us and we will report to you. If the objections are to be contested, then in general local trade mark attorneys will have to be appointed.
If there are no objections for a designation, the designation becomes fully effective.
There are time limits of either 12 or 18 months (depending upon the designated office) in which the designated offices have to give notice of the objections or to issue a Statement of Grant of Protection. The 18 month period may be extended where an opposition is filed against the relevant designation. The time limit runs from the date of notification which appears on the registration certificate.
Designated offices which have a 12 month time limit include:
Austria, Benelux, Cuba, Czech Republic, France, Germany, Hungary, Moldova, Monaco, North Korea, Portugal, Russian Federation, Serbia and Spain.
Those having an 18 month time limit include:
Australia, Canada, China, European Union Intellectual Property Office, Denmark, Estonia, Eire, Finland, Greece, Iceland, India, Italy, Japan, Lithuania, Mexico, New Zealand, Norway, Poland, Singapore, South Korea, Sweden, Switzerland, Slovakia, Turkey and the United States.
The international registration or subsequent designation(s) will be advertised in the WIPO Gazette of International Marks which is published electronically on WIPO's website; we will send you a copy of the advertisement.
Notes:
The European Union Intellectual Property Office (EUIPO)1 treats these somewhat differently to directly filed EUTM2 applications; please see our separate information sheet for details.
Some designated offices (including the EUIPO) will sometimes write directly to the applicant on matters that are advisory (for example reporting publication of the designation) and which consequently do not require a response. Please forward us copies of such letters in order that we can monitor progress of the designation; there is not a mechanism for us to be sent them directly.
It is usually possible to add additional designations to an existing international registration, though these designations will have a later date than the original date of the international registration. For example it may be that a country/region was not a member of the Madrid Protocol at the time the original application was made and so it is decided to add it once it has joined. Or it might be that the existing designation in a given country did not cover all the goods/services in the International Registration and it is wished to extend the coverage.
Some countries additionally issue registration certificates, or will do so on request though in the latter case, that will incur a charge. Obtaining national registration certificates for China is strongly recommended, as they are required for enforcement purposes.
In particular, the United States issues a registration certificate with a United States registration number.
Some offices send registration certificates directly to the applicant; if they do, please send us a copy so that we can keep our file up to date.
The international registration is due for renewal every ten years on the anniversary of the application date. It is possible to drop designations at renewal, and this will give some cost saving.
Some countries have special, additional, requirements for maintenance; these are detailed below.
If Algeria is designated then a Declaration of Use has to be submitted to the Algerian Trademark Office when the designation is renewed.
If Cambodia is designated then it is additionally necessary to file a Declaration of Actual Use within a one year period following five years counting from the date on which protection was granted for Cambodia, and also within a one year period following five years counting from the date of each renewal of the International Registration. If valid reasons exist, it may be possible to file a declaration of Non-Use instead of a Declaration of Actual Use.
If Eswatini is designated then evidence of actual use has to be submitted to the Eswatini Trademark Office when the designation is renewed.
If Mexico is designated then a Declaration of Actual and Effective Use needs to be submitted to the Mexican Trademark Office:
a) within the three months following from the date on which the designation reaches three years from the granting date
and
b) on renewal of the designation at WIPO.
If Mozambique is designated a Declaration of Intent to Use must be presented to the Mozambique Office within five years from the date that the Office is notified of the International Registration or the subsequent designation. Where the Office is notified of a subsequent designation less than five years before the due date for renewal, this declaration must be presented within five years from the date of renewal. Additional declarations must be presented within five years from each date on which the International Registration is subsequently renewed.
If The Philippines are designated then a notarized Declaration of Actual Use (DAU) has to be submitted to The Philippines Trademark Office:
• within three years from the date of the international registration or the date of recording of the territorial extension to the Philippines made subsequently to the international registration, as appropriate (3rd year DAU);
• within one (1) year from the fifth anniversary of the statement of grant of protection of the mark and within one (1) year from the fifth anniversary of the date of renewal of registration of the mark (5th year DAU); and
• within one (1) year from the date of renewal of registration of the mark (renewal DAU)
If the United States is designated then it is additionally necessary to submit a Declaration of Use/Excusable Reasons for Non-Use between five and six years from the date of issuance of the certificate of protection by the United States Patent and Trademark Office and within six months before each ten year anniversary of the issuance date. We will advise you of these dates when we forward the certificate of protection.
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We make it a practice to send reminders before renewals and other maintenance deadlines occur.
Currently two countries, Cuba and Brazil, split their designation fees into two, one part being payable with the application for International Registration, and the second part when the designation is found allowable for protection. Failure to pay the second part of the fee by the set deadline will result in the designation being cancelled.
1 previously known as Office for Harmonization in the Internal Market (OHIM)
2 previously known as Community Trade Mark (EUTM)
This information is simplified and must not be taken as a definitive statement of the law or practice.
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