1、 What is Madrid International Trademark Registration?

Madrid International Trademark Registration refers to the registration of trademarks between member states of the Madrid Union in accordance with the provisions of the Madrid Agreement on the International Registration of Marks (hereinafter referred to as the "Madrid Agreement") or the relevant protocols of the Madrid Agreement on the International Registration of Marks (hereinafter referred to as the "Madrid Protocol"). Compared to registering abroad separately, Madrid trademark international registration has the advantages of wide coverage, convenient and fast procedures, and relatively low costs.

The Madrid Union refers to the Special Union for the International Registration of Marks composed of countries or intergovernmental organizations to which the Madrid Agreement and the Madrid Protocol apply. As of now, the Madrid Union has a total of 115 contracting parties, covering 131 countries. China, the United States, Germany, France, the United Kingdom, Italy, Japan, South Korea, Russia, Australia, Switzerland and other major economies in the world are all members of the Madrid Union.

       

two、How to apply for international trademark registration in Madrid?

(1)Applicant Qualifications

The applicant must have certain subject qualifications. The applicant should have a genuine and valid business premises in China; Or have a residence within the territory of our country; Or possess Chinese nationality. In addition, legal persons or natural persons in Taiwan Province can apply for international registration through the Trademark Office. However, legal or natural persons in Hong Kong and Macau Special Administrative Regions are currently unable to file international registration applications through the Trademark Office.

(II)Application requirements

The trademark applied for international registration can be a trademark that has already been registered in China, or a trademark that has been registered and accepted in China.

(3)Application process

1. The applicant submits an online application on their own

Applicants can submit their applications online through the online service system on their own. The applicant should first register and log in to the "Trademark Online Application System", fill in the information and upload materials in the "International Registration Application" column according to the website instructions.

Trademark Online Service System URL: https://sbj.cnipa.gov.cn/sbj/wssq/

2. Applicants can apply at the following locations

(1) Go to the trademark business acceptance window established by the local market supervision department and intellectual property department commissioned by the Trademark Office to handle it. For information on the trademark business acceptance window, please refer to the relevant column on China Trademark Network.

(2) Go to the Trademark Examination Cooperation Center established by the Trademark Office outside of Beijing to handle it. For information such as the address of the Trademark Examination Cooperation Center, please refer to the relevant column on the China Trademark Network.

(3) Go to the Trademark Registration Hall of the Trademark Office to handle it

Trademark Office Office Address: No.1 Chama South Street, Xicheng District, Beijing Postal Code: 100055

Office hours: 8:30-11:30 13:30-16:30

Consultation hotline: 86-10-63218500

3. The applicant entrusts a trademark agency registered with the Trademark Office to handle it

(IV)Processing steps

Submit international registration application through online or paper application → pay registration fee according to the "Notice of Fees for International Trademark Registration" → obtain international registration certificate

(V)Application materials

1. Madrid Trademark International Registration Application;

2. Foreign language application form (MM2 form);

3. Qualification documents of the applicant with official seal or signature, such as copies of business license, ID card, foreigner residence permit, etc;

4. If entrusting an agent, a power of attorney should be attached;

5. Specify the United States and submit the MM18 form together.

(VI)Application Form Filling

Requirements for filling out the Chinese application form:

1. Applicant Information

(1) Applicant Name: Require consistency with the registrant/applicant name of the underlying trademark. If the applicant is a legal person, the full name should be filled in; If the applicant is a natural person, their name should be filled in. In addition, if the legal entity has an official English or French name, it should be filled in together with the Chinese version.

(2) Applicant's address: It is required to be consistent with the registered/applicant's address of the underlying trademark. You can fill in the order of province, city, street, house number, and postal code: No. 2 Jintai Road, Beijing, China, postal code: 100260.

(3) Applicant's mailing address: If the actual mailing address of the applicant is different from the applicant's address, this item can be added.

(4) Language selection for incoming text: Place a "×" mark in the box to the left of the selected language.

2. Eligibility of the applicant

The three situations available for applicants to choose from in this item should be selected sequentially, and the applicant only needs to choose one that meets the requirements.

3. Agent Information

If the applicant handles it directly, this column does not need to be filled in.

4. Basic application or registration

This refers to trademark applications and registrations in China, not international trademark applications and registrations. If the applicant files an international registration application for multiple basic applications or registrations of the same trademark, they should fill in each basic application number, application date, and/or basic registration number and registration date one by one.

5. Priority

If the applicant requests priority, the date and application number of the first application should be indicated.

6. Trademark

The applicant is required to paste the trademark design here, and the size of the trademark should be handled according to the requirements of the application.

7. Other matters

(1) Request for color protection: If the applicant requests color protection, specific instructions can be provided;

(2) Stereoscopic trademark: If the basic trademark is a three-dimensional trademark, this option is mandatory;

(3) Sound trademark: If the basic trademark is a sound trademark, this option is required;

(4) Collective or certification trademark: If the basic trademark is a collective or certification trademark, this option is required;

(5) Trademark transliteration: Only the standard Chinese Pinyin of the trademark can be filled in here.

8. Goods and/or services and their categories

(1) Goods and/or services and their categories

This refers to the filling of goods and services, which should be filled in the order of the categories of goods and services listed in the International Classification of Goods and Services for Trademark Registration. For example, the first type is ethanol, industrial alcohol; Category 5, aspirin, baby food; Class 9, audio and cathode ray tubes; When filling in, do not place the ninth category before the fifth category, or place the fifth category before the first category. Please note that the goods or services filled in must not exceed the scope of the basic application or registered goods/services.

(2) If there are restrictions on goods/services and categories for specific countries, please indicate the specific designated contracting party and all categories and goods/services for which protection is applied in that designated contracting party. The restricted goods/services shall not exceed the scope specified in item (1).

9. Designated protected contracting parties

The applicant should mark "×" in the box on the left side of the contracting party that wishes to obtain protection. If the applicant designates Germany, France, and Italy as the countries for protection, the applicant only needs to mark "×" in the box on the left side of these three countries. If the applicant has obtained a domestic acceptance notice, they may designate a contracting party to the same agreement or protocol, as well as a pure contracting party to the protocol; If a domestic registration certificate has been obtained, all contracting parties can be designated.

10. Payment method for this application

Mark "×" in the box on the left side of the selected payment method.

(7)Pay regulatory fees

After receiving the application documents with complete procedures, the Trademark Office registers the date of receipt, assigns an application number, calculates the fees required by the applicant, and issues a "Fee Notice" to the applicant or agent.

The applicant or agent shall pay the relevant fees to the Trademark Office within 15 days from the date of receipt of the "Fee Notice". The Trademark Office will only submit an application to the International Bureau after receiving the same amount of payment. If the applicant or agent fails to pay the fees on time, the Trademark Office will not accept their application and notify the applicant in writing.

(8)Collection of International Registration Certificate

The International Registration Certificate shall be directly issued by the International Bureau to the agent designated by the applicant or the applicant (if no agent is designated) via email

(9)precautions

1. International registration applications from designated countries such as the United States, Japan, South Korea, and Singapore often receive examination opinions or temporary rejection notices from these countries, causing certain losses in time and cost for Chinese applicants' international registration. The reason for the above problems is that these countries have made reservations or declarations to certain provisions of the Madrid Agreement or Protocol when joining the Madrid Union, and when reviewing certain elements of Madrid international registration applications, they mainly rely on their own laws and regulations.

Therefore, we specifically remind applicants to pay attention to the following when filling out foreign language application forms:

(1) Enterprise nature column: The United States requires it to be filled in, and acceptable options include Corporation, UNINCORPORATED ASSOCIATION, JOENT VENTURE, or PATERNERSHIP.

(2) Trademark translation column: Singapore requires Chinese trademarks to be translated into Chinese characters one by one, and the overall meaning of the trademark must also be explained; The United States requires clarification on whether a trademark has a meaning, whether it represents a geographical name, and whether it has a special meaning in the relevant product or service industry.

(3) Product column: The United States requires that the declaration of products must comply with its domestic Acceptable Identification of Goods and Services Manual, http://tess2.uspto.gov/netahtml/tidm.html ）The requirement is that the commonly used Nice International Classification for Madrid International Registration is only for reference. Japan and South Korea also have similar requirements. We suggest that applicants from designated countries such as the United States, Japan, and South Korea fill out the foreign language form (MM2) together with 10 (a) and 10 (b). Column 10 (b) refers to restrictions on goods in designated countries, which means that goods can be deleted or refined within the scope of the goods. For example, the United States does not accept "clothing," but accepts "clothing, including shirts, sweaters, windbreakers, pants, and sports jackets.

(4) When specifying the United States, the MM18 form must be filled out. The Signature column in the MM18 form must be a personal signature, the Signatory's Name (Printed) column must print the pinyin of the signatory's name, and the Signatory's Title column must print the signatory's position. The date of execution (dd/mm/yyyy) column should be filled in as day/month/year. For example, April 18, 2012 should be filled in as 18/04/2012. Information Required by THE INTERNATIONAL BUREAU should also be filled in together.

2. The validity period of international registration is ten years, calculated from the date of international registration. After the expiration of the validity period, if you want to continue using it, you should renew the registration.

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three、How to handle the follow-up business of Madrid trademark international registration

(1)How to handle the post registration designation of Madrid trademark international registration

(1) Introduction:Post registration designation refers to the process where the trademark registrant applies for territorial extension of all or part of the goods and services registered internationally to one or more countries.

(2) Application materials:

Madrid Trademark International Registration Post designation Application;

Foreign Language Application Form (MM4);

If entrusting an agent, a power of attorney should be attached;

Please specify the United States and submit the MM18 form together.

(3) Attention:

Later designated applications can be submitted directly to the International Bureau of the World Intellectual Property Organization, or forwarded to the International Bureau through the Trademark Office, or used on the World Intellectual Property Organization website (www.wipo. int)

The designated contracting party in the later stage shall renew the international registered trademark when it expires.

(II)How to handle the transfer of Madrid trademark international registrationlet

(1) Introduction:Transfer refers to the legal act of transferring the exclusive rights of an international registered trademark to another person by the owner of the international registration. The assignee shall have a genuine and valid business premises within the territory of the contracting party, or have a domicile within the territory of the contracting party, or be a national of the contracting party.

(2) Application materials:

Fill out and stamp the Madrid Trademark International Registration Transfer Application with the official seals of the transferor and transferee;

Foreign Language Application Form (MM5);

Qualification certificates of transferor and transferee, such as copies of business license, residence certificate, ID card, etc;

If an agent is appointed, a power of attorney should be attached.

(3) Attention:

The transfer application can be submitted directly to the International Bureau of the World Intellectual Property Organization or forwarded to the International Bureau through the Trademark Office.

(3)How to handle the deletion of Madrid trademark international registration

(1) Introduction:Deletion refers to the applicant's complete or partial removal of goods or services by a designated contracting party.

(2) Application materials:

Application for deletion of Madrid trademark international registration;

Foreign Language Application Form (MM6);

If an agent is appointed, a power of attorney should be attached.

(3) Attention:

The deletion application can be directly applied to the International Bureau of the World Intellectual Property Organization or forwarded to the International Bureau through the Trademark Office.

(IV)How to apply for abandonment of Madrid trademark international registration

(1) IntroductionAbandonment refers to the applicant giving up protection for all goods or services in some contracting parties.

(2) Application materials:

Application for Abandonment of Madrid Trademark International Registration;

Foreign Language Application Form (MM7);

If an agent is appointed, a power of attorney should be attached.

(3) Attention:

Abandoning the application can be directly submitted to the International Office of the World Intellectual Property Organization or forwarded to the International Bureau through the Trademark Office.

(V)How to handle the cancellation of Madrid trademark international registration

(1) Introduction:

Cancellation refers to the applicant canceling all or part of the goods or services in all contracting parties.

(2) Application materials:

Madrid Trademark International Registration Cancellation Application;

Foreign Language Application Form (MM8);

If an agent is appointed, a power of attorney should be attached.

(3) Attention:

The cancellation application can be submitted directly to the International Bureau of the World Intellectual Property Organization or forwarded to the International Bureau through the Trademark Office.

(VI)How to handle the change of name/address of the registrant of Madrid trademark international registration

(1) Introduction:If there is a change in the name or address of the registrant in Madrid trademark international registration, an application for a change in the registrant's name or address must be processed.

(2) Application materials:

Application for Change of Madrid Trademark International Registration;

Foreign Language Application Form (MM9);

Corresponding change proof documents: Corresponding change proof documents: If the basic trademark has been approved for change, there is no need to submit a copy of the Trademark Office's approval change certificate; If the basic trademark has not been approved for change, a copy of the change approval document from the registration authority or relevant files downloaded and printed from the official website of the registration authority can be submitted as proof of the change;

If an agent is appointed, a power of attorney should be attached.

(3) Attention:

The change of name or address of the registrant can be directly submitted to the International Bureau of the World Intellectual Property Organization or transmitted to the International Bureau through the Trademark Office.

(7)How to handle the name/address change of Madrid trademark international registration agent

(1) Introduction:If there is a change in the name or address of the agent registered in the Madrid International Trademark Registration, an application for a change in the agent's name or address must be processed.

(2) Application materials:

Application for Change of Name and Address of Madrid Trademark International Registered Agent;

Foreign Language Application Form (MM10);

(3) Attention:

This business can be directly applied to the International Bureau of the World Intellectual Property Organization or transmitted to the International Bureau through the Trademark Office. You can also directly send a letter to the International Bureau, specifying the matters that need to be changed.

(8)How to apply for renewal of Madrid trademark international registration

(1) Introduction:After the expiration of the validity period of the Madrid trademark international registration, if you want to continue using it, you should apply for renewal. The Madrid Agreement and Madrid Protocol stipulate that the validity period of internationally registered trademarks is 10 years. Six months before the expiration of the validity period, the International Bureau will informally notify the trademark registrant of any renewal matters, including the expiration date. If the registrant fails to apply for renewal before the expiration date, the International Bureau will grant a grace period of 6 months. If the renewal is not applied for within the grace period, the International Bureau will cancel the international registration. For those who apply within the above-mentioned period, the validity period of the trademark international registration can be extended for 10 years.

(2) Application materials:

Application for Renewal of Madrid Trademark International Registration;

Foreign Language Application Form (MM11);

If an agent is appointed, a power of attorney should be attached.

(3) Attention:

Renewal applications can be processed through the Trademark Office, directly to the International Bureau of the World Intellectual Property Organization, or online using the E-renewal tool on the World Intellectual Property Organization website (www.wipo. int).

(9)How to apply for the appointment of a designated agent for Madrid trademark international registration

(1) Introduction:If the Madrid trademark international registrant needs to appoint a new agent, they can apply for a designated agent.

(2) Application materials:

Application for Designated Agent for Madrid Trademark International Registration;

Foreign Language Application Form (MM12);

Trademark Agency Authorization Letter.

(3) Attention:

This business can be directly applied to the International Bureau of the World Intellectual Property Organization or transmitted to the International Bureau through the Trademark Office.

The applicant must handle the application through a trademark agency registered with the Trademark Office.

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four、International Objection

According to the relevant provisions of China's Trademark Law and the Implementing Regulations of the Trademark Law, within three months from the first day of the month following the publication of the World Intellectual Property Organization's International Trademark Announcement, an objector who meets the conditions stipulated in Article 33 of the Trademark Law may file an objection application with the Trademark Office for the extension of China's designated territory.

If the applicant for the objection is a domestic enterprise legal person or natural person, they can directly or through a trademark agency submit an objection application to the Trademark Office. If the applicant for the objection is a foreign enterprise or natural person, they must entrust a legally established trademark agency to handle it.

(1)Materials required for international objection application

1. Madrid Trademark International Registration Objection Application;

2. Copy of international registration announcement;

3. Reasons for objection and evidence materials;

4. If an agent is appointed, a power of attorney should be attached.

(II)International Objection Fee Standards

Trademark opposition is charged by category, with 500 yuan per category.

(3)International Objection Handling Institution

China National Intellectual Property Administration Trademark Office Contact address: Shouwenke, No. 1, South Chama Street, Xicheng District, Beijing Zip code: 100055

(IV)Objection defense

The Trademark Office shall notify the International Bureau of the relevant circumstances of the opposition application in the form of a rejection decision within the rejection period.

The objector may file a defense within 30 days from the date of receiving the rejection notice forwarded by the International Bureau. The defense statement and relevant evidence materials shall be submitted to the Trademark Office through a legally established trademark agency.

(V)precautions

1. If the objector is a foreign natural or legal person, the name and address of the objector must be filled in a foreign language.

2. If the opposed trademark is a jointly applied trademark, the name/address of the opposed party must be filled in with the name/address of the representative.

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Special statement: The above contents are not officially issued by the Trademark Office of the China National Intellectual Property Administration. Therefore, all contents are instructive and have no legal binding force.