* Protocol only

Existing side by side to the Convention is the Madrid Protocol. Where relevant differences exist between Convention and Protocol, these will be mentioned. Otherwise, the systems are basically the same. The Protocol system is becoming increasingly popular and many countries have recently adhered.

The rights obtained by an international registration are identical to the rights obtained by national registrations.

Who may apply?
Basically, those who are established in one of the adhering countries, or has a "real" establishment in such country. In the case of a private person, having an adhering country's nationality also suffices. A 'home' registration is required. This forms the basis of the international registration. In the case of a Protocol country, an application in the home country suffices.  Which countries the international application may cover depends upon the home country of the applicant: either Convention countries or Protocol countries, or both where the home country has adhered to both systems.

Procedure
The application is filed with the national office of the home country. This transfers the application to WIPO, the World Intellectual Property Organisation, a United Nations organisation established in Geneva, Switzerland. WIPO issues the certificate of registration soon after filing. The countries indicated in the application, however, have the right to refuse the application. The term for such refusal is a maximum of one year for Convention applications, and 18 months for Protocol applications. In many cases acceptance after initial refusal is still a possibility, e.g. by filing arguments with the national offices, or reaching an agreement with opponents. Refusal in one country does not affect the validity in any other country.

Duration
International registrations have a validity of 10 years, indefinitely renewable with equal periods. Renewal must be filed between six months before the expiration date and six months thereafter (with 50% fine). International registrations under the Convention obtained before 1 April 1996 can still have a 20 year validity, but will be renewed for 10 year periods at their next renewal due date.

Use
To remain valid, a mark must also be used. Use in one country does not compensate for non-use in another. Use for export only is sufficient in a number of countries, but not in all. Please also review our general introduction.

Extension
An international registration may be extended to other countries party to the Convention or Protocol at any time during the validity of the registration. This allows for adaptation of the registration to changing requirements. However, the expiration date of the registration remains unchanged.

Senior national rights
When an international registration is obtained for a country where the same mark is registered earlier by the same owner, the seniority rights of that national registration are automatically included in the international registration. Special recordal thereof is advisable. The national registration thereafter needs no longer be kept in force (saving maintenance and renewal costs).

Classification
Goods and services are divided according to the international classification. Applications may cover any number of classes, but a fee is due for each class over the third. A number of Protocol countries additionally require the payment of additional fees for applications covering more than one class.

Marks in colour
If colours were claimed in the home registration, these must also be claimed in the international application.

Objections
Objections against a new international registration must be made before the national trademark Offices. To be more effective, objection is preferably made against the home registration in the case of a Convention registration (central attack). Thus, a successful objection may extend its effects far beyond the scope of countries for which the objecting mark is registered itself. In the case of a Protocol registration objections can only be made on the national level. In most countries objections in the form of oppositions are time-restricted: they must be filed within a period of one to three months after publication. This is one of the reasons for the importance of trademark watching. In the remaining countries, and in the case of failure to meet the opposition period, objections must be made before the common courts. The latter objections may also be restricted in time (five years is most common). Urgent action is always advisable, if only to prevent market interference.

®, ^TM and ^SM
The registered trademark symbol ®, as well as ^TM and ^SM, indicating unregistered trademarks and service marks, respectively, are in general use. We recommend to use these symbols where applicable. Some countries still require the use of other indications (such as "marca registrada"). Note that wrongful use is a punishable offence in a number of jurisdictions and may even lead to imprisonment.

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