Foreign trademark applicationsMadrid international registration of marks
Madrid international registration of marks refers to international registration of trademarks and service marks transacted by the applicant, attorney and the relevant State Authority in accordance with the “Madrid Agreement Concerning the International Registration of Marks” and the “Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks” (hereinafter referred to as the “Madrid Agreement” and the “Protocol”).
The “Madrid Agreement” was signed on 14th Apr 1891 in Madrid, the capital of Spain, and entered into force in 1892, making it over one hundred years old.
The “Protocol” entered into force on 1st Dec 1995 and was officially implemented as of 1st Apr 1996, and it coexists with the “Madrid Agreement”.
Each Madrid international registration for marks can designate one or more countries to protect the mark of the applicant; In the same kind of application, the applicant may claim either the contracting country of the “Madrid Agreement” or the contracting country of the “Protocol” to protect its mark, peradventure both. Such contracting countries of the “Madrid Agreement”, before commencing the final registration, require the production of a certificate of registration in the country of origin, issued by the competent authority; such contracting countries of the “Protocol”, before commencing the final registration, require the production of a notification of acceptance in the country of origin, issued by the competent authority; furthermore the designated merchandise/service can not go beyond the scope of registration and application in the country of origin.
Single country registration
Single country registration refers to the registration that an attorney entrusted by applicant applies aboard for trademark registration in every country/region one by one. If the applicant intends to file an application for trademark registration in a non-contracting country of the “Madrid Agreement”, he only needs to go through ordinary registration procedure. The main difference between ordinary registration procedure and Madrid international trademark registration is the former can directly file an application for registration abroad without initially requiring the production of application or registration in the country of origin.
1. Application Guideline
The trademark systems differ in different countries and regions, please contact our agency directly when needed.
Generally speaking the fee for filing an application of registration abroad is divided into three parts, namely, the foreign fee (including foreign official fee and attorney’s fee), the home attorney’s fee and the incidental fee.
The foreign fee, namely the fee charged for entrusting foreign law firm to file an application of trademark registration to the Trademark Administration Department of the country, including the foreign legal attorney’s fee and the official fee.
The following is a brief introduction to the fee charged in some countries and regions (for one trademark of one class in one country/region):
(1) Generally speaking, in developed countries such as Japan, the United States, Canada, Hong Kong, Europe and the Middle East, the fee for filing an application of trademark registration is quite high, normally around 2000 dollars and around 3500 dollars in the Middle East (for one trademark of one class in one country/region)
(2) In medium developed countries such as South Korea, Taiwan, South America and Singapore, the fee for filing an application of trademark registration is around 1800 dollars (for one trademark of one class in one country/region)
(3) In some developing countries such as Vietnam, Malaysia and Thailand etc the fee for filing an application of trademark registration is comparatively low, normally around 1500 dollars (for one trademark of one class in one country/region)
Where the applicant is filing an application of trademark registration, the application fee does not necessarily commence a large percentage of the total fee, while during and after the official examination there will be more disbursements. For example, a large sum of trademark registration fee is required during approval of registration in some countries (such as Japan), therefore it is difficult to accurately estimate the total disbursement and the calculated quotation above is only for reference. When acting as an agent for foreign trademark registration, our agency will charge pre-payment of the foreign fee, according to the country of application and category of trademark application, we confirm the pre-payment and charge it in advance at one time; excessive payment will be refunded and payment for deficiency shall be supplemented.
If the application is of many classes and is of sufficient size, our firm can request the foreign counterpart for a more favorable price and to reduce the price of foreign pre-payment.
Hong Kong trademark for merchandise and service mark application
1. Three trademark design patterns (black and white or colored), size shall not exceed 90×90cm, if this size is not adequate to display the detailed design of the trademark, two magnified design patterns can be supplemented, size within 160×160cm.
2. The English translation of applicant’s name and address and its legal status such as limited Corporation, share-holding Corporation or unlimited liability partnership etc shall be provided.
3. Japanese or South Korean client needs to provide the English pronunciation of its original name apart from the English name.
4. Merchandise/service item list, best to indicate international category.