We at Patracode have an experience of filing Trademark across the world both ways filing Individual Application in separate jurisdiction as well as via the Madrid Protocol route. Both the routes have their own pros and cons. Madrid gives a way to file application for multiple jurisdictions in from a single window and you are lucky enough not to receive an objection from any of the jurisdiction, than you are not even required to engage any local attorney’s in a particular jurisdiction where the objection is raised, to overcome the objections. However, the cons is that the Madrid application is dependent on a base application and if the base application’s prosecution is at issue, than it may jeopardise the Madrid request in each of the countries with whose respect an application was filed. On other hand, the individual applications help to keep the applications freely moving independently and may provide a privilege to get a grant in some jurisdiction quite earlier, however it is costlier, as a local attorney is required at filing stage itself, rather than at the prosecution stage. Hence, there is no one way to say, which is the better route and the strategy changes with each individual case and requirements.
We do International Trademark Filing via Madrid route and for prosecution which is country specific we have associates and partners in major countries. Our Trademark Attorneys are well versed as well as highly proficient with the international filing system which makes registering and managing marks worldwide much easier. Through Madrid route, by designating multiple countries at a go, and filing in one language, along with fee paid in one currency, for registration, designating the countries in which protection of the mark is sought.
As The Madrid System is Single Stop Solution for International Trademark Registration and Management of Trademarks throughout the globe. In this system we need to file one application, in one language, and pay one set of fees in one currency, designating the countries in which we desire to protect the trademark. The Madrid system covers territories of up to 95 members or organization which are contracting parties to the System. This is a centralized system by the International Bureau of the World Intellectual Property Organization, WIPO) for obtaining trademark registrations across jurisdictions.
This makes Madrid system comparable to Patent Cooperation Treaty System (PCT). The PCT is used for acquiring Patent Rights, however in PCT one cannot get a single window to enter in any country without filing a separate application in a particular jurisdiction.Along with filing the Madrid system also facilitates the renewal process of trademark. The trademark term is for 10 years from the filing so before expiry of the term the renewal becomes essential for keeping the protection and rights intact.
We at Patracode first file a basic application which is mandatory for filing internationally and then based on that we file a single international application which is in single language. The international application is presented to the WIPO International Bureau through the Office of origin which is India if the basic application is filed in India. The Madrid application should include a copy of the mark similar to that of basic application, list of goods and services along with classification for which the protection is sought, the designated countries, and the prescribed fees. The classification should be according to International Classification of Goods and Services.
The fees includes the handling charge which is charged by the office of origin and the international filing fees. The international filing fees is paid in Swiss franc currency which includes the Basic fee, A complementary fee or an individual fees as the case may be according to the Contracting Party’s wishes. A supplementary fee for each class of goods and services beyond the third class; no supplementary fee is payable, however, where all the designations are ones in which an individual fee has to be paid.
The major countries are covered by the Madrid system like filing in European Union, Asian Countries, Middle East Countries, African Intellectual Property Organization (OAPI), and United States of America. The other countries which are not covered like Kuwait, UAE, Qatar, Yemen, Jordan, Lebanon, Iran, Brunei Darussalam, Indonesia, Lao PDR, Malaysia, Myanmar, Thailand, we have associates and partners to take the filing as well as prosecution forward at a competitive pricing and without complication.
We have performed numerous international filing and worked across jurisdictions having an immense experience in prosecuting trademark application in various countries working with our associates outside India. We would be happy to provide support to our clients in filing and prosecuting their trademark application internationally.