All for Joomla All for Webmasters

Assign modules on offcanvas module position to make them visible in the sidebar.

THE INTERNATIONAL REGISTRATION OF MARKS SYSTEM OR THE MADRID SYSTEM

 

The international registration of marks system is governed by two treaties: the Madrid Agreement concerning the international registration of marks (1891) and the Protocol Relating to this Agreement (1989). This international system is administered by the World Intellectual Property Organization (WIPO), which is a specialized agency of the United Nations, based in Geneva, Switzerland.  ( http://www.wipo.int )

 

The Madrid system offers a solution for trademarks holders to obtain and maintain protection of their marks in foreign countries (members of the system) with a centralized filing and management procedure. In fact, the Madrid system prevents trademarks holders to file an application in each country or territory where they wish to obtain the protection of their marks, due to the principle of territoriality of trademarks protection.

 

Through the Madrid system, trademarks holders can file just one application, in one language (english, french or spanish) and pay one set of fees (in swiss francs) to obtain international registration in multiple territories (members of the system), indeed.

 

To this day, the Madrid system counts almost one hundred members and offers a potential protection of trademarks in 113 territories in the fifth continents. So, trademarks holders can file an international application for the territories of their choice directly before an Office of a contracting party with which they have the necessary connection.

 

This international application is the equivalent of a bundle of national applications and the registration of a mark in the International Register produces, in the designated contracting parties, the effect of a national application (as if the mark had been the subject of an application for registration filed directly with the Office of that contracting party), from the date of the international registration or the subsequent designation.

 

Madagascar acceded to the Madrid Protocol on April, 28th 2008. Since that memorable date in the history of Industrial Property in Madagascar, trademarks holders can take advantage of the Madrid system and file an international application before OMAPI. ( http://www.wipo.int/madrid/en/members/ )

 

Useful information:

 

  • How to file an international application before OMAPI
  • OMAPI as an Office of a designated contracting party
  • OMAPI as an Office of a contracting party of the IR holder
  • Malagasy companies use the Madrid system

 

                                           
  

                                                                                                                            For any further information, please contact us at 

                                                                                                      

   

http://www.wipo.int/madrid/en/                                                                                                Cette adresse e-mail est protégée contre les robots spammeurs. Vous devez activer le JavaScript pour la visualiser.

                                                                                     

 

  • How to file an international application before OMAPI

An application for international registration may be filed only by a natural person or a legal entity which:

  • has a real and effective industrial or commercial establishment in Madagascar
  • Or is domiciled in Madagascar
  • Or is a national of Madagascar

 

Moreover, the trademark must be filed or registered before OMAPI.

 

Procedure for filing the international application :

 

  • Discussions with the IR service (OMAPI)

 

  • Fill the international application form prescribed by the regulations (MM2) which can be downloaded from WIPO’s
  • website (http://www.wipo.int/madrid/en/forms/ ) in french version, in triplicate.

 

  • File the application before OMAPI (duly fulfilled)

 

  • Pay the amount of the fees required for filing the international application in Swiss francs to WIPO (details will be
  • provided by the IR service) and the processing fee in MGA (Ariary) before OMAPI

 

  • Certification by OMAPI as the office of origin, of the correspondence with the basic mark and of the filing date
  • (on which it receives the request) and sending of the international application to WIPO. A copy of the international
  • application is given to the applicant.

                          

Once WIPO has received the application, it verifies its content and the payment of the required amount of fees. If the application conforms to the applicable requirements, the International Bureau (WIPO) registers the mark in the international Register ( http://www.wipo.int/madrid/en/romarin/ ), notifies the Offices of the designated Contracting parties of the international registration and the office of origin (OMAPI) and sends a certificate to the holder.

 

The Offices of designated contracting parties will examine the international registration according to their trademarks law and will notify the result (protection or refusal of protection) to the holder via WIPO. At this step, the role of OMAPI is restricted to providing general information.

                            

 

                              

 

 

 2 - OMAPI as an Office of a designated contracting party

As an Office of a contracting party of the Madrid system, OMAPI receives each year, about nine hundred of new designations under the Madrid Protocol. These are international registrations (IR) belonging to holders from several countries over the world who wish to protect their trademarks in Madagascar.

These IR are examined according to the provisions of the Ordinance N°89-019 of 31/07/1989 establishing Arrangements for the protection of Industrial Property in Madagascar and its decree, in the same way as the applications filed by the national route. The rate of grant of protection for IR is generally about 90% per year and OMAPI issues a statement of grant of protection for each registration.

In case of refusal, the holder may enter an appeal before the competent Court in Madagascar within a prescribed time limit. In fact, the notification of refusal is not open to review before OMAPI because Madagascar has made a declaration according to the rule 17.5)e) of the common Regulations of the Madrid Agreement and Madrid Protocol.

More details are provided about the procedures applied in Madagascar on WIPO website relating to the Madrid system (lien : http://www.wipo.int/madrid/en/members/ipoffices_info.html )

OMAPI as an office of a designated contracting party also handles requests for replacement of a national registration by an international registration (rule 21), further decision (rule 18ter4) and request for transformation of an international registration into a national application (art. 9 quinquies).

                          

 

                       

3 – OMAPI as an Office of a contracting party of the IR holder                                                                                                                 

 OMAPI plays many roles in the implementation of the Madrid Protocol. It can also handle request from IR holders whose office of origin         

was OMAPI for subsequent designations, changes and renewals.                                                                                           

Moreover, OMAPI can handle request for a registration of a license from an IR holder when the licensee is a natural person or a legal

entity based in Madagascar.

More information is available on WIPO website.  (http://www.wipo.int/madrid/en/members/ipoffices_info.html)

 

4 - Malagasy companies use the Madrid system

One of the benefits of the Madrid system is to be cost effective comparatively to individual approach of multiple offices for filing trademarks applications. Moreover, a special treatment is provided to applicants whose country of origin is a Least Developed Country (LcD), in accordance with the list established by the United Nations. The goal is to facilitate their access to the Madrid system for the protection of their trademarks and a wide use of the system over the world.

So, the basic fee is reduced to 10% of the prescribed amount. An applicant from LcD only pays 65CHF for an international application where there is no reproduction of the mark in colour and 90CHF if the reproduction is in colour, as basic fee (there are supplementary fees according to the chosen designated contracting party).

Apart from that, OMAPI provides full technical support for trademarks holders who wish to use the Madrid system. 

Since the accession of Madagascar to the Madrid Protocol in 2008, many Malagasy companies have used the Madrid system to expand protection of their trademarks to new markets which is generally required by foreign partners.

See what some of them say about the Madrid system in the following short movies shot by WIPO in Madagascar in 2013 :

 GUANOMAD ( http://www.youtube.com/wipo/ )

 COMPAGNIE VIDZAR ( http://www.wipo.int/multimedia/en/madrid/madrid-videos/ )