The trademark registration system under the Madrid Agreement
The method used worldwide to file trademark applications aiming at abroad is that the applicant files the trademark application directly with each national trademark office of the countries abroad. The international cooperation established, in addition to the Paris Union Convention, an international agreement to have protection easier in the member states. The international trademark applications are registered by the International Bureau of the World Intellectual Property Organization in Geneva (hereinafter referred to as International Bureau) after doing formal examination and checking the list of goods and services. The protection gives the same rights in the designated member states as those of the trademarks registered through the national way if the protection is granted by a final decision in the procedure under the conditions governed by international regulations and in the national trademark law. The Madrid System for the international registration of trademarks (hereinafter referred to as Madrid System) consists of two international agreements. One is the Madrid Agreement Concerning the International Registration of Marks of 1891 (hereinafter referred to as Agreement) the other is the Madrid Protocol of 1989 (hereinafter referred to as Protocol) which entered into force on 1 April 1996. The members of the Agreement and the Protocol are all members of the Madrid Union which has its own budget and Assembly. The Agreement and the Protocol have had Common Regulations since 1 April 1996. The Common Regulations ensure that the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva can proceed in trademark application cases filed under both agreements.
From 1 April 2002 Rule 43 of the Common Regulations allows that certain issues may be governed by so-called Administrative Instructions of the Director General of WIPO.
Hungary and the Madrid System
Hungary has been member of the Agreement since 1909. The valid text was promulgated by the Law Decree 29 of 1973. The Protocol entered into force in respect of Hungary on 3 October 1997. The Protocol was ratified by a Parliament decision in 1997. The Agreement was promulgated by the Act LXXXIII of 1999 on the promulgation of the Protocol of 1989 Relating to the Madrid Agreement Concerning the International Registration of Marks.
Relationship between the Agreement and the Protocol
Article 9sexies of the Protocol was modified as from 1 September 2008
At the 43rd series of meetings of the Assemblies of the Member States of WIPO (Geneva, 24 September – 3 October 2007) the Assembly of the Madrid Union modified the title and text of Article 9sexies of the Protocol and determined the date of entry into force of the modification as 1 September 2008.
The point of the modification is that – instead of maintaining the protection by the Madrid Agreement – the relationships among the Member States being members of both the Protocol and the Madrid Agreement are determined by the provisions of the Protocol.
Process of the international application
Transmission of the application
By virtue of the Agreement the applicants being nationals of any of the Member States may file international application for the signs registered in the country of origin at the International Bureau through the office of their own country. For the application under the Protocol it is enough to have a national trademark application duly filed. The international application may be transmitted to the International Bureau exclusively by the office of the country of the origin. Subsequent territorial extension may be done at any time upon the request of the applicant in respect of one or more member states. The request for subsequent territorial extension can be filed by the right-holder directly or through the national office. If a state being member only of the Madrid Agreement is also designated, the request must be transmitted to the International Bureau always through the national office.
The international application must be filed at the Office in 2 copies in English or French language using the forms of the International Bureau. (MM2 (pdf)(doc)). The application form must be accompanied by a request in Hungarian language.
The national office shall check the completed form and shall certify the data of the trademark application, in case of the Protocol the data of the basic application, including the list of goods and services. The list of goods and services must not extend the list of goods and services of the trademark registered in the country of origin and of the list of goods and services of the basic application.
Forms which are not properly completed – in compliance with the provisions of Article 76K of the Trademark Act – the Hungarian Intellectual Property Office shall not transmit to the International Bureau.
Fees, payment of fees
For the transmission of the application – in the amount specified in the Decree on the Administrative Service Fees – a transmission fee must be paid to the Office, as well as an application fee to the International Bureau.
The Office shall transmit the application and any subsequent document to the International Bureau only after the transmission fee has been paid.
The application fee must be paid directly, in Swiss franks to the International Bureau. The fees are the same in the relationship under the Agreement in respect of each member states, in the relationship exclusively under the Protocol individual fees may also be applied for the member states. (The Hungarian Intellectual Property Office can give information on the amount of fees and they are also available on the website of the International Bureau.)
The fee must be transferred to the International Bureau by the applicant. If a part or the whole amount of the fees is not paid the International Bureau shall consider the application withdrawn and shall reimburse a determined part of the fee paid.