Our role in the application process
After your international application (and MM18 form if required) is filed with us, we will perform a check to ensure that all requirements under the Madrid Protocol are met. An 'unable to certify' letter will be sent to remedy any irregularities in the application, this letter will not include a request for a MM18 or for any fees outside of the $100 handling fee.
When the international application is in order it will then be certified, a notification of certification will be issued by us and the application is sent to the International Bureau (IB).
International Bureau (IB)'s role
After a notification of certification is issued by us, the IB will then examine the international application.
If there are irregularities in the application, the IB will issue an irregularity notice. You will need to address the irregularities within the specified times in order to proceed. When the application has been deemed suitable the IB they will issue an international registration number, record the details on their register and published in the IB Gazette.
The IB will then issue a Registration certificate and advise the designated countries of the international trade mark registration. This certificate of registration does not mean the trade mark is protected in all the countries designated, it is simply a statement that the details have been recorded on the international register.
It should be noted that WIPO's acceptance of certain words in your list of goods and services does not guarantee that all countries will accept them.
Designated Countries' Role
The designated countries (the individual countries that were selected on your application) will then check the international registration in accordance with national legislation and notify the IB of either extension of protection within that country or raise objections (provisional refusal). If a provisional refusal is raised, you will receive the notification from the IB. You must however reply direct to the country about their refusal, and you may need to meet other requirements of their particular trade mark laws, for example, providing a contact address within the country. We are unable to provide guidance in relation to a provisional refusal raised by another IP Office.
Once any objections are overcome, the designated country may advertise your international registration for opposition. If opposition is filed, the designated country must notify the IB. The designated country will then notify the IB either of full or partial protection or full refusal within that country.
If a country does not object to your application within the set time limits being either 12 or 18 months, your mark will be protected in that country. For further information regarding the application process please refer to WIPO's website.
Last Updated: 27/3/2014