Anyone wishing to protect their trademark beyond German borders can do so via the WIPO Madrid system. The basis is an existing or registered basic trademark at the DPMA. The following article provides an overview of the most important steps.
Authorization to apply under the Madrid System
To apply for an international trademark under the Madrid system, the applicant must be a natural or legal person. Under the conditions of R. 8 GAusfO, several persons may also file a joint application.
The applicant must either have a commercial establishment in the territory of a contracting state, be domiciled there or be a national of that state. The depositor may be represented by a representative before the International Bureau (R. 3 GAusfO).
Application for international registration
The application for international registration is made in accordance with Art. 3 (1-3) MMA/PMMA. A separate written application must be filed for each trademark. The official forms of the International Bureau must be used (Sections 43-45 of the Trade Mark Ordinance), in particular Form MM2. Handwritten forms will not be accepted by WIPO. The forms must be completed in full in the language of the proceedings (English or French) and submitted to the DPMA – direct requests to the International Bureau are not possible.
The forms are available on the DPMA website. Additional information can also be found on the WIPO website.
Documents to be attached
The application documents must be accompanied by the supporting documents required under R. 9 (4-5) GAusfO. Non-graphical representations of the trade mark cannot be submitted.
List of goods and services
The list of goods and services must be arranged by class in accordance with Section 108 (3) MarkenG and correspond to the Nice Classification. Goods or services that can be assigned to several classes must be listed in each relevant class. The terms must be sufficiently precise (R. 9 para. 4 lit. a no. xiii GAusfO). If the classification is missing or inadequate, the International Bureau will make corrections – for an additional fee.
Special features of the designation of the USA and the EU
For the USA, an additional declaration of the intention to use (“Intention to use”) on form MM18 in English is required, which must contain the applicant’s personal signature.
If the EU is designated, a second procedural language of the EUIPO must be indicated. The applicant can assert earlier national rights using form MM17 (seniority claim according to R. 21 GAusfO, Art. 39 UMV). If an EU trade mark is withdrawn or refused, a conversion into national trade mark applications is possible (R. 24 (7) EUIPO in conjunction with Art. 202 (1) EUTMR).
The further course
After submission, the DPMA checks the application for completeness, compliance with the national trade mark register and correct payment of fees. Only then does the DPMA forward the application to the International Bureau of WIPO.
WIPO examines whether the application complies with international regulations. If it identifies deficiencies, it informs the DPMA and the applicant and sets a deadline for rectification.
If the defects notified are not rectified within the deadline, the application shall be deemed withdrawn; in this case, any fees already paid may be partially refunded.
You can find a more detailed overview of international trademark applications in our article International trademark applications.
Do I need a German trademark before I file an international application?
Yes, an international registration via the Madrid system requires a basic trademark at the DPMA – either as a registered trademark or as a pending application.
In which language must the application be submitted?
The application must be written in English or French. The choice of procedural language is binding for the entire procedure.
How does the procedure work after submission?
The DPMA examines the application and forwards it to WIPO. WIPO registers the trademark and forwards it to the designated countries, which decide on protection within twelve to 18 months.
