Filing an international trademark application

The international registration of trademarks is carried out in accordance with the Protocol to the Madrid Agreement on International Registration of Marks of 27 June 1989. (hereinafter - Protocol). The protocol provides for the submission to the authority of origin (in the Republic of Kazakhstan - RGP "National Intellectual Property Institute" (hereinafter - NIIP) of an international application containing the countries and/ or international organizations (hereinafter - countries) that have signed the protocol.  The current list of members is available on the website of the World Intellectual Property Organization (hereinafter - WIPO) https://www.wipo.int/web/madrid-system/members/index. If the international registration procedure is successfully completed, the trademark shall be recognized as being registered in the countries specified in the international application as if the application had been submitted directly to the authorities of those countries.

The advantages of international registration, in addition to the above (single application), are:

1. Payment of duties in a single currency (CHF);
2. Centralized management of international registration (submission to the WIPO International Bureau of a single application for amendment, extension of the period of validity of registration and so on. n. without the mediation of patent attorneys in the specified countries);
3. Possibility of a subsequent territorial extension of the protection of the trademark (indication of countries not included in the international bid initially).

The person wishing to submit an international application must:

1. have a connection with the country of origin. The connection is expressed in the existence of citizenship, either permanent residence or real and non-fictitious industrial or commercial enterprise in that country;
2. to have in the department of origin a national application for the trademark (in the Republic of Kazakhstan it must be an application on which formal examination has been completed and a decision has been made on admission to review) or registration of the trademark, This sign shall be identical to the sign in the future international application.

The international application shall be submitted by the applicant in either English or French on the official WIPO M2 form (reference to WIPO forms https://www.wipo.int/en/web/madrid-system/forms/index) and shall comply with the requirements of Article 3 of the Protocol and Rule 9 of the General Instruction to the Madrid Agreement and the Protocol. The main requirement is that the information contained in an international application be identical to the information of the national application or registration on which the international application is based.

The following tools, available on the WIPO website, are recommended for use in preparing an international application:

1. International Registration of Marks - Fee calculation, which helps to determine the availability of the international registration procedure for a given country, as well as the amount of international duty due for an international application;
2. «Explanations for completing the official MM2 application form»;
3. «Manager of Goods and Services Madrid» Madrid Goods & Services Manager https://webaccess.wipo.int/mgs/index.jsp?lang=ru. «Manager» helps to translate the list of goods and services in the language of international application (if the terms contained in the application are included in «Manager») and in a number of cases determine the admissibility of the wording of goods and services in the countries specified.

The international application is submitted to NIIP. As the department of origin, NIIP imposes additional formal requirements on the application. According to them, at the same time as an international application is submitted to the patent authority:

1. Request for the preparation or verification of an international application and its submission to the WIPO International Bureau;
2. a document confirming payment of the national patent fee in the prescribed amount http://qazpatent.kz/ru/tarify;
3. a document confirming the payment of the international duty in the prescribed amount;
4. a document certifying the patent attorney’s credentials (if an international application is filed by the patent attorney);
5. Two copies of an 8 x 8 cm mark applied for in addition to the copy on the international application form;
6. other documents, such as a declaration of intent to use an international trademark, if necessary.

The international application and the documents attached thereto, with the exception of the image of the designation applied for, shall be submitted in duplicate. All documents, except the international application, are provided in Kazakh or Russian.

The international tariff consists of:

1. Basic duty (for international registration applications) - CHF 653 for black and white signs and CHF 903 for colours;
2. additional duty (for each class of goods and services above three) - CHF 100;
3. additional duty (per country) - 100 CHF.

When countries that have individual duties under the Protocol are indicated, the additional and additional duty is replaced by individual duty.

The international duty is paid in Swiss francs to the WIPO bank account (see sub-item «bank transfer»). In order for the fee paid to be correctly identified by the WIPO International Bureau, the payment order should include the following information:

1. name and full postal address of the payer;
2. in the payment assignment - «Fee for filing international application for trademark (indicate name of trademark, if any) based on national application No. (indicate) (option: national registration No. (indicate)) in the name of (indicate applicant for international application - for cases, when he is different from the international duty payer)».

The international application review process is multi-stage. NIIS considers the received international application and the documents attached to it and, if they do not comply with national or international legislation, sends a request to the applicant. An international application that meets all requirements is submitted to the WIPO International Bureau. The International Bureau is conducting a preliminary examination of the application. If the result of the examination is positive, the mark shall be registered in the international register and published in the official publication «Bulletin of International Marks WIPO». At the same time, the International Bureau notifies the registration of the owner by sending him a certificate of registration (certificate of registration), and the authorities specified in the international registration countries. Within 12 or 18 months from the date of notification, these authorities shall carry out an examination of the international registration in accordance with national legislation and, if necessary, issue a prior refusal of protection, which shall be forwarded to the owner through the International Bureau. The refusal may be challenged by the owner in accordance with the requirements of the law of the country in which the examination on the merits has been carried out.

For 5 years, international registration depends on the national (base) registration or application under which an international application was submitted. Before the expiry of this period, protection arising from an international registration shall be terminated or correspondingly limited in case of withdrawal of a national application, final decision on total or partial refusal of registration, Discontinuing the national registration, declaring the national registration invalid in full or in part. After 5 years, the international registration becomes independent of the basic registration.

The validity of the international registration is 10 years with an unlimited possibility of renewal, each time for a new 10 years.

All actions with an international registration are carried out by its owner independently by sending to the address of WIPO (World Intellectual Property Organization, Chemin des Colombettes 34, CH-1211 Geneva, Switzerland) a corresponding application (with payment of the established fee). Details on the possibility of making any changes to an international registration and how to do so can be found in the WIPO Guide to International Mark Registration (English version, 2016) https://www.wipo.int/treaties/ru/registration/madrid/summary_madrid_marks.html.%C2%A0 (version from 2008) posted Russian translation of the manual https://www1.fips.ru/wps/wcm/connect/content_ru/ru/documents/international_documents/international_agreement/dog_zak_tz on the website of the Federal Intellectual Property Service of the Russian Federation.