Trademarks registered in the Czech Republic can also be registered through the IPO CZ as so-called international trademarks in some other states (see the list of contracting states) on the basis of the Madrid Agreement Concerning the International Registration of Marks and on the basis of the Protocol related to this Agreement.
The Madrid Agreement and the Protocol related to this Agreement ensure for the members of the contracting parties the possibility of protection of their trademarks in all the contracting states of Madrid Agreement and/or the Protocol on the basis of a single application filed with the International Bureau of the World Intellectual Property Organization in Geneva (WIPO) through the registration office of the applicant’s origin.
For the trademark application filed with the International Office it is possible to exercise the right of priority from the trademark application filed in the Czech Republic provided that the international application is filed with the International Office within six months from the filing date in the Czech Republic.
If the contracting states designated in the international application are only members of the Madrid Agreement and not of the Protocol to the Agreement then the international application directed to those states must be based on trademark registration in the Czech Republic.
The international registration designated to these states must be based on registration of the trademark in the Czech Republic even in such cases when the international application specifies the states being members of both the Madrid Agreement and the Protocol (such as Federal Republic of Germany).
If the applicant asserts the claim for protection only in states that are exclusively members of the Protocol and are not members of the Madrid Agreement (such as United Kingdom), the international registration can be made only on the basis of filing the trademark application in the Czech Republic, without the registration thereof in the trademark register in the Czech Republic. However such international registration is dependent on a subsequent registration of the respective trademark in the Czech Republic. It means that if the trademark registration has not been made and the application procedure in the Czech Republic results in refusal of the application or discontinuance of the application procedure, the respective international registration will be cancelled and deleted from the international register.
If at least one state being a contracting member of the Madrid Agreement will be specified in the international application, regardless of the fact whether it is at the same time a Protocol party, the international registration must be based on registration of the same trademark in the Czech Republic.
The term of protection of the international trademark is ten years and can be renewed for another ten-year periods.
The international trademark filed on base of an international application is registered in the international register kept with the International Office. The registration of the trademark is given out by this office to all the contracting states of the Madrid Agreement and/or the Protocol relating to this agreement, in which the international trademark is registered for protection. The contracting states of the Protocol can prolong, on the basis of their declaration, this term up to eighteen months and if the rejection is based on an objection filed by a justified person, the rejection can be communicated after previous notification even after this term.
For a period of five years the international registration of trademark is dependent on existence of the registration of the same trademark in the Czech Republic. If for any reason this trademark will be cancelled within five years period since the date of the international registration, its international registration will be cancelled and deleted from the international register, too.
Trademark registration in the states that are not contracting states of the Madrid Agreement or the Protocol relating to this Agreement
If the trademark owner desires to acquire protection for the trademark in a country that is not a contracting state of the Madrid Agreement or the Protocol to this Agreement, he/she must apply for its registration only through so-called national channels, i.e. directly with the national IPO of that state through a domestic representative and in compliance with the trademark rights of that state. In such a manner it is possible to apply for registration of a trademark also in individual countries that are members of the Madrid Agreement or the Protocol related to this Agreement.
Last modified on – 2012-05-21 13:42