THROUGH WIPO UNDER THE MADRID SYSTEM INTERNATIONAL TRADEMARK REGISTRATION

Attorney M. Berfin GERZ

As a rule, your rights arising from the registration of your trademark are protected only in the country of registration. Today, many companies carry out their commercial activities internationally as well as their commercial activities in our country and operate in more than one country. However, if it is desired to protect the trademark in these countries, trademark applications should be made and registration processes should be carried out in the relevant countries. The scope of protection of our registrations before the Turkish Patent and Trademark Office remains within the borders of our country.

At this point, instead of conducting registration activities in more than one country, it is possible to apply for trademark registration in more than one country in the system with a single application using the Madrid System. Applications made in this way are both practical and less costly.

Internationally, a trademark registration application may be filed by a natural or legal person who has a real and effective industrial or commercial establishment in a country that is a party to the Madrid Protocol, or by a natural or legal person who is resident in that country or is a national of that country.

Our country is also included in the Madrid Protocol and this protocol has started to be implemented in our country as of 01.01.1999. The registration process of your trademark is carried out through WIPO (World Intellectual Property Organization), which is known as the Madrid Protocol registration system. WIPO is the intermediary institution here, and it is an institution designed for the unity of the system and for the international trademark registration to be done quickly with a single language. In this system, the registration protection period is 10 years as in Turkey.

WIPO, known as the Madrid protocol registration system, is a system covering 113 countries. It is possible to protect the trademark in all countries that are members of this protocol with one registration process. For the international registration of the trademark, first of all, there must be a registration or a registration application made at the origin of the trademark. The application for international trademark registration is made to WIPO through the office of the country where it is registered or where the application is located.

You are required to fill out the form in English, which is created and continuously updated by WIPO with reference to your trademark in Turkey, and submit this form to the Turkish Patent and Trademark Office, which is the office of origin, to be sent to WIPO. In addition, together with the form, the basic fees for our application must be paid and the payment information must be processed on the form. Payments are accepted in CHF (Swiss Francs).

Madrid E-Filing Application

The Madrid E-filing application, which is used to send international trademark registration applications filed pursuant to the Madrid Protocol to WIPO in a much faster, smoother and easier way, was made available to national applicants as a result of the work carried out within the scope of the cooperation between the Office and WIPO.

In order to use the Madrid E-filing application, applicants or their proxies are required to create a user account on https://www3.wipo.int/wipoaccounts/en/usercenter/public/register.jsf and complete the application process by registering the information requested in the MM2 form on the application screen they access using the link ttps://efiling.madrid.wipo.int/iwa with this account information.

Before filing the application, the WIPO notification fee of the international trademark application should be paid through the EPATS electronic application platform (https://epats.turkpatent.gov.tr/run/TP/EDEVLET/giris) by performing the “Payment of the Fee for Notification of the International Trademark Application to WIPO” transaction in the “Post-Application Transactions” field and the document regarding the payment should be saved in the “Annexes” section on the E-filing screen.

Applicants can access detailed information about the use of the Madrid E-filing application on the website https://www.wipo.int/madrid/en/contracting_parties/efiling_info.html. In addition, it is possible to access the user guide via the link https://www.wipo.int/export/sites/www/madrid/en/contracting_parties/pdf/efiling_quick_start_guide.pdf.

If the international applications within the scope of the Madrid System are to be realized by submitting the MM2 form to our Office through EPATS, the “International Trademark Registration Request” transaction should be selected in the “Post-Application Transactions” section, and if it is desired to be submitted through the Madrid E-filing application, the “Payment of the Fee for Notification of the International Trademark Application to WIPO” transaction in the same area should be selected.

International Trademark Registration Application Process through WIPO

If there is no deficiency in our application, the Turkish Patent and Trademark Office forwards our application to WIPO within two months. If there is a deficiency, the situation is notified to you and the deficiency is requested to be eliminated. If the deficiencies are completed within the given period, your application is forwarded to WIPO by the Turkish Patent and Trademark Office as the office of origin.

We would like to emphasize that; WIPO is our addressee in WIPO applications and the Turkish Patent and Trademark Office is in an intermediary position. The Turkish Patent and Trademark Office provides communication between us and WIPO.

When we inform WIPO of our e-mail address with the application, notifications made by WIPO are sent to us directly by WIPO via e-mail. Our responses to these notifications are also sent through the Turkish Patent and Trademark Office.

You can apply for an international trademark for the classes of goods and services for which you have applied or registered your trademark in Turkey. The number of classes in the application can be narrowed but not expanded.

Trademark Registration Application Fees through WIPO

The fees to be paid for applications to WIPO vary depending on whether the trademark is a guarantee or a collective trademark, whether it is colored or colorless, the number of classes of goods and services, and the designated countries.

You can access the list of countries party to the Madrid system here (https://www.turkpatent.gov.tr/uluslararasi-marka-tescil-sistemi-bilgisi)

It is not possible to declare a fixed fee according to these parameters. However, WIPO has a very successful fee calculator interface. You can access the interface here (https://madrid.wipo.int/feecalcapp/)

In addition to the fees requested by WIPO, a fee of 1.110-TL is requested by the institution for the year 2023 for forwarding the application to WIPO. This fee is updated every year. (https://www.turkpatent.gov.tr/uluslararasi-marka-tescil-sistemi-bilgisi)

Determination of Trademark Registration Application through WIPO

With WIPO, your trademark is registered only in the contracting states and the contracting states where registration is requested should be determined at the beginning of your application. After the application sent to WIPO receives an International Registration Number (IRN), the applicant can apply for registration in the countries that are not included in the first application but are parties to the Madrid Protocol, where registration is requested later, with the Subsequent Designation process. For this purpose, a separate form is prepared and submitted to WIPO.

The Process After Trademark Registration Application Through WIPO

After the application to WIPO, the process will proceed as follows.

1. WIPO will examine the international trademark application and conduct a non-conformity check.
2. If no non-conformity is detected, WIPO sends the international trademark application to the offices of the designated countries. Necessary examinations will also be carried out in the relevant countries for the registration of the trademark in the designated country. WIPO will issue and transmit an international registration certificate within 6 months of the application. The international registration certificate transmitted by WIPO does not mean that your trademark has been registered in the designated countries.
3. Publication or provisional refusal may be issued by the designated country offices.
4. The decision to publish the application is made if the application is evaluated positively by the relevant office. In this case, your application will be published in the relevant country for third parties to submit their objections, if any. The objection period may differ in each country. If there is no objection to the application within the period determined by the opposition or if the opposition is rejected, your trademark is registered. The situation is notified to you through WIPO.
5. If the relevant office has issued a provisional refusal, you will be notified. You can appeal against the decision within the given period. However, the opposition will be filed before the relevant office. In this case, it will be necessary to get support from a trademark attorney operating in the relevant country. If your opposition is accepted, the relevant office will issue a publication decision for your trademark. If your trademark is not objected during the publication period or if the objection is rejected, a registration decision will be made for your trademark.

Another point to note here is that the relevant office has 18 months to complete the procedures about the application. Registration processes can therefore be prolonged.

Dependency Status of International Trademark Application

The international registration application is dependent on the underlying application or registered trademark for a period of 5 years from the date of international registration. Changes that will restrict or eliminate the scope of protection of the underlying trademark within 5 years from the date of international registration are notified to WIPO by the originating office, i.e. TURKPATENT, and the scope of registration of the international application is also restricted or eliminated.

To summarize, for the first 5 years from the date of international registration, the change in the status of your trademark in Turkey also affects your international trademark application. However, at the end of 5 years, your application becomes independent from your originating office application and the change of status in Turkey does not affect your international trademark application.

WIPO’s Advantages and Disadvantages

Advantages:

• The time taken to register a trademark is more favorable in this registration system than in others. The cost is also less.
• It is not necessary to carry out separate procedures in each country to be registered. Registration is valid in all member countries with a single application. Since the process is carried out by WIPO, the procedures are not complicated. The cost is also low.
• The European Union is a member of the Protocol. In this context, if the international trademark application is approved, the registration provides protection in 27 countries.
• If desired, the scope of registration can be expanded by adding countries.
• Even if the application is rejected in any of the countries, the application process can continue in other countries.

Disadvantages:

• When the application is rejected or registration is canceled in Turkey, the application in other countries also becomes invalid.
• The trademark requested to be registered must be used in every country. Otherwise, the trademark is deemed invalid.

Sincerely,

SGU HUKUK LAW & CONSULTING