5. Madrid Agreement concerning the International Registration of Marks

/5. Madrid Agreement concerning the International Registration of Marks

5. Madrid Agreement concerning the International Registration of Marks

(d) Any declaration referred to in points (b) or (c) may be made in the instruments referred to in Article 14 (2) and the date of entry into force of the declaration shall be the date of entry into force of this Protocol in respect of the State or intergovernmental organization which made the declaration. Such a declaration may also be made at a later date; in such a case, the declaration shall take effect three months after its receipt by the Director General of the Organization (hereinafter referred to as the ”Director General”) or at any later date specified in the declaration for any international registration the date of which is equal to or greater than the date of entry into force of the declaration. 2. A request for territorial extension may also be submitted retrospectively with a view to an international registration. The application is made on the form required by the regulation. It shall be recorded without delay by the International Bureau, which shall immediately communicate it to the Office or Offices concerned. This registration shall be published in the Official Journal of the International Bureau. Such territorial extension shall take effect from the date of its recording in the International Register; it ceases to be valid on the expiry of the international registration to which it relates. The process of attacking the base application or registry for this purpose is commonly referred to as a ”central attack”. Under the Madrid Protocol, the effects of a successful centralized attack can be mitigated by converting the international registration into a series of applications in each jurisdiction designated by the international registration, a process called ”transformation.” Although conversion is an expensive option of last resort, the resulting applications receive the date of registration of the international registration as the filing date. Such a refusal can only be based on the grounds that would apply under the Paris Convention for the Protection of Industrial Property in the case of a trademark filed directly with the Office notifying the refusal.

However, protection cannot be refused, even in part, only because the applicable law would allow registration only in a limited number of classes or for a limited number of goods or services. 5. For the purpose of publicizing marks entered in the International Register, each Office shall receive free of charge from the International Bureau a certain number of copies of the said Official Journal and a certain number of copies at a reduced price, under the conditions laid down by the Assembly referred to in Article 10 (hereinafter referred to as ”the Assembly”). Such publicity shall be considered sufficient for the purposes of all Contracting Parties and no further publicity shall be required of the holder of the international registration. The Madrid System provides a mechanism by which a trademark owner who has an existing trademark application or registration (known as a ”basic application” or ”basic registration”) in a member country can obtain an ”international registration” for his mark from WIPO. The trademark owner can then extend the protection granted to the international registration to one or more member jurisdictions, a process called ”designation.” A useful feature of the Madrid system is that, in general, this protection can be extended to other jurisdictions at any time, so that international trademark protection can be extended to new jurisdictions that come to Madrid later or to other jurisdictions that the trademark owner may choose. 2. The applicant shall indicate the goods and services for which protection of the mark is sought and, if possible, the corresponding class or classes corresponding to the Classification of the Nice Agreement Relating to the International Classification of Goods and Services for the Purposes of the Registration of Marks. If the applicant does not indicate this information, the International Bureau shall classify the goods and services in the corresponding classes of that classification.


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