For a trademark to be protected in certain countries, the respective trademark must be registered in each country where protection is sought.
Such registrations can be done by either filing separate trademark applications before the national offices (where applicable, before the regional offices) of each country or by filing a single international trademark application covering all of the selected member states of the Madrid System.
As Turkey has been a party to the Madrid System with the Madrid Protocol since 1 January 1999, it is possible to provide trademark registration in up to 125 member countries with a single application from Turkey.
In this article, the main principles and advantages of international trademark registration through the Madrid System and the registration process will be discussed.
Entitlement to File an International Trademark Application
Under the Madrid System, an international trademark application can only be filed in Turkey by a real or legal person who,
has Turkish nationality, or
is a resident in Turkey, or
has a real and effective industrial or commercial establishment in Turkey.
Applicants who are entitled to at least one of the above-mentioned requirements can file an international trademark application through the Turkish Patent and Trademark Office (“Turkish Patent”) in designated countries that are party to the Madrid System.
However, applicants who do not meet one of the above-listed conditions and therefore cannot submit an international trademark application through the Madrid System, can protect their trademarks in other countries by applying directly in the country where they want to protect their trademarks and by taking advantage of the priority right within 6 months from the date of application.
Advantages of the Madrid System
Ease of Trademark Application
The trademark owner can apply for trademark protection in more than one country by filing a single application form in one language.
Extending Trademark Protection
In cases where the business strategy of the trademark owner changes or the financial situation develops at a later date, the Madrid System ensures the protection of the trademark in new markets.
International Protection
As of 1 February 2021, there are 125 member countries[1] in the Madrid System. Thanks to the Madrid System, it is possible for trademark owners to protect their trademarks in one or more of said 125 countries. You may access the list of Contracting Parties of the Madrid System here.
Controlling Trademark Applications from a Centralized System
It is possible to control international trademark applications submitted in more than one Contracting Party through the centralized system offered by the World Intellectual Property Organization (“WIPO”) and to perform various transactions. In addition, it is possible to make any changes after the registration of the international trademark (such as changes in the name or address of the trademark owner, assignment, restrictions on the goods and services lists) through the same system.
Cost-Effective
Thanks to the Madrid System, by filing a single application, rather than a bundle of national applications, the obligation to pay representative and official fees that are required with international applications in each country is eliminated.
Renewal of Trademarks with a Single Application
According to Article 7 of the Madrid Protocol, international trademark registrations are protected for a 10-year period. However, it is possible to renew the international trademark with a single application made through WIPO upon request at the end of each 10-year period provided that a renewal fee is paid.
Predictability of the Madrid System
According to Article 5 of the Madrid Protocol, the Contracting Parties'[2] offices are granted a 1-year period to indicate their decisions on international trademark applications submitted under the Madrid System. However, depending on the office of the Contracting Party where the trademark is wished to be protected, it is possible to decide to extend this 1-year period to a maximum of 18 months.[3] Thus, it will be possible to foresee that the international trademark application will be completed within the specified periods.
Process of International Trademark Registration Through the Madrid System
Application for an International Trademark Through the Office of Origin
According to the Madrid System, to ensure international trademark registration, the trademark must be registered or an application for registration must be submitted at the office of the origin. The office of origin is the office that carries out the trademark registration process of the relevant Contracting Party. For international trademark applications to be filed from Turkey, the relevant office of origin is the Turkish Patent and Trademark Office.
An international trademark application cannot exceed the scope of the basic registration[4] or the basic application[5]. For this reason, the international trademark application to be submitted under the Madrid System must be compatible with the basic mark[6] in terms of the trademark owner, trademark sign, goods and services.
Although applications for international trademark registration are to be forwarded to WIPO, applications must be filed through the office of origin, i.e., the Turkish Patent and Trademark Office.
Formal Examination by WIPO
WIPO shall conduct a formal examination of the international trademark application. If the application is deemed appropriate and correct, the application shall be registered by WIPO in the International Registry and published in the WIPO Gazette. Then, WIPO shall notify the Contracting Party offices where trademark protection is requested.
Substantive Examination by Offices of the Designated Contracting Party
Each Contracting Party receiving the notification from WIPO must examine the application under its own legislation and decide whether the trademark can be registered in the designated Contracting Party within 1 year or at the latest 18 months. The decision of the Contracting Party offices to accept or reject the trademark registration will be recorded in the International Registry by WIPO and the applicant will be informed.
If the offices of one or more of the Contracting Parties decide to reject or partially accept the trademark, this decision must be sent to WIPO by the Contracting Party’s office. WIPO shall record this refusal decision in the International Registry and publish it in the WIPO Gazette. The refusal of one or more of the offices of the Contracting Party shall not affect the decisions of the offices of the other Contracting Party.
International Trademark Registration
Following the examination carried out by the Contracting Parties, if the Contracting Parties decide that the international trademark application complies with the legislation of their own country, the international trademark shall be registered, and have national trademark protection in the respective jurisdiction.
International registered trademarks remain dependent on the basic marks for a 5-year period from the date of its registration. If the basic mark is rejected, cancelled or invalidated within the said 5-year period, the international trademark registrations related to the basic marks will also lose their effect. However, after the expiry of the stipulated 5-year period, the international trademark shall become independent from the basic mark.
Official Fees
There are two types of fees to be paid for an international trademark application. One of them is the official handling fee to WIPO for the international application to be paid to the Turkish Patent and Trademark Office and the other fee is the international official trademark application fee to be paid to WIPO in Swiss Francs.
The official handling fee, which must be paid to the Turkish Patent and Trademark Office for international trademark applications from Turkey, is TRY 1,386 as of 2023. The official fee to be paid to WIPO varies according to the number of classes covered by the application, whether the trademark is coloured, whether the trademark is a guarantee mark or a collective trademark, and the number of countries covered by the application.
To calculate the official fee to be paid to WIPO, the automatic calculation tool “Fee Calculator” on the WIPO website (https://madrid.wipo.int/feecalcapp/) may be used.
For further queries, please contact:
Dogukan Berk Aksoy, LL.M.
Attorney at Law | Trademark Attorney | Patent Attorney
T: +90 312 514 20 14
Elif Koturoglu
Attorney at Law | Trademark Attorney
Evren Firat Goklu
Attorney at Law | Trademark Attorney
[1] Said member states are referred to as the Contracting Party. [2] According to Article 4 of the Regulations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, a Contracting Party refers to any State or intergovernmental organization party to the Protocol. [3] The list of countries that extended the notification period to 18 months, including Turkey, see, https://www.wipo.int/export/sites/www/madrid/en/notices/pdf/declarations.pdf [4] Registration of a trademark carried out by the office of a Contracting Party and which forms the basis of an international application for the registration of a trademark. [5] Application of a trademark carried out by the office of a Contracting Party and which forms the basis of an international application for the registration of a trademark. [6] Basic registration and basic application will hereinafter be referred to as basic mark.