REGULATIONS UNDER THE MADRID AGREEMENT 3

Chapter 2 Application for International Registration

 Rule 8 Form and Contents of the Application for International Registration

• (1) The application for international registration shall be presented in two copies, dated and signed by the national Office of the country of origin, on the form supplied free of charge by the International Bureau. The form shall be completed legibly, and preferably typewritten.
  
• (2) The application for international registration shall contain or indicate:
  (i) the name of the applicant; where the applicant is a natural person, the name to be indicated is the surname and the forenames, with the forenames preceding the surname; where the applicant is a legal entity, its full name shall be given;
  (ii) the address of the applicant, with all the relevant units up to and including the house number, if any; the applicant may indicate an address for correspondence different from his main address; where there are two or more applicants with different addresses, the address to be used for correspondence shall be indicated;
  (iii) the contracting country in which the applicant has a real and effective industrial or commercial establishment; failing that, the contracting country in which he has his residence; failing that also, the contracting country of which he is a national;
  (iv) the name and address of the agent, if any;
  (v) the dates and serial numbers of the filing and of the registration of the mark in force in the country of origin;
  (vi) where appropriate, a statement that the filing in the country of origin or any other filing in another country party to the Paris Convention for the Protection of Industrial Property indicated by the applicant is declared by the applicant to be a first filing within the meaning of Article 4 of the said Convention, together with the date and serial number of that other filing;
  (vii) a reproduction of the mark in black and white that will fit within a square of 80 mm x 80 mm; the distance between the two points farthest from each other must not be less than 15 mm; the reproduction shall be pasted in the space provided on the form;
  (viii) if color is claimed as a distinctive element of the mark, an indication of the color or combination of colors claimed and a color reproduction of the said mark in a size not exceeding A4 format (210 mm x 297 mm);
  (ix) if the mark is composed of a three-dimensional shape, the notice "three-dimensional mark";
  (x) if the mark or part of the mark consists of or contains matter in script other than Latin script or numbers expressed in forms other than Arabic or Roman, a transliteration of such matter in Latin script and Arabic numerals; the transliteration shall follow the rules of French pronunciation;
  (xi) where appropriate, the notice "collective mark," "certification mark" or "guarantee mark";
  (xii) the goods and services for which protection of the mark is claimed, grouped in the order of the classes of the International Classification of Goods and Services and designated in precise terms, preferably in accordance with the terminology of the Alphabetical List of that Classification;
  (xiii) the date on which the national Office has received the application for international registration; the said date shall be the date of national registration if the national Office received the application for international registration before the mark was recorded in the national register;
  (xiv) the countries for which protection is requested under Article 3ter(1) of the Agreement;
  (xv) the period, of either 20 or 10 years, for which the basic fee is paid, in accordance with Rule 10(1);
  (xvi) the amount, method and date of payment of the basic fee, the party paying that fee and, where appropriate, the supplementary fee and the complementary fee indicated in Rule 32(1)(a);
  (xvii) a declaration by the national Office of the country of origin, certifying that all the particulars concerning the mark and its owner that appear in the application for international registration correspond to those in the national register;
  (xviii) a declaration by the national Office to the effect that the applicant has submitted to it evidence of his right to use certain elements in the mark, such as those referred to in Article 5bis of the Agreement, where such evidence appears in the national registration of the mark in the country of origin;
  (xix) the additional indications which define the constituent elements of the mark, where such indications appear in the national registration of the mark in the country of origin.
  
• (3) The application for international registration may also contain:
  (i) if the application for international registration relates to a mark in respect of which one or more international registrations have already been made, the dates and serial numbers of such registrations;
  (ii) if the mark contains matter written in a language other than French, a translation of that matter in French.
  

 Rule 9 Documents Accompanying the Application for International Registration

• (1) If the mark includes a figurative element or if the applicant intends to have a word mark registered in a special form of writing, the application for international registration shall, except in the case referred to in paragraph (2)(ii), be accompanied by the surcharge specified in Rule 32(1)(b)(i) and by two reproductions of the mark in black and white in addition to that appearing on the application for international registration pursuant to Rule 8(2)(vii) and in the same dimensions as that reproduction.
  
• (2) If the application for international registration includes a claim in respect of color, it shall be accompanied:
  (i) where the applicant wishes to have the mark published in black and white, by 50 color reproductions of the said mark of a size not exceeding A4 format (210 mm x 297 mm), it being understood that paragraph (1) is further applicable if the mark includes a figurative element or if the applicant intends to have a word mark registered in a special form of writing;
  (ii) where the applicant wishes to have the mark published in color, by the surcharge specified in Rule 32(1)(b)(ii) and by two color reproductions of the mark in addition to that appearing on the application for international registration pursuant to Rule 8(2)(viii) and in the same dimensions as the reproduction in black and white referred to in Rule 8(2)(vii).
  
• (3) The reproductions referred to in paragraphs (1) and (2)(ii) shall be free of all overwriting and of sufficient quality to allow clear reproduction of the mark in full detail.
  
• (4) By means of a separate communication attached to the application for international registration, the national Office may indicate that the applicant renounces protection in one or more countries for goods and services indicated in the said application.
  

 Rule 10 Fees Accompanying the Application for International Registration and Payment of the Balance of the Fee

• (1) The application for international registration shall be accompanied by the basic fee specified in Rule 32(1)(a)(i), which may be paid for 20 years or for a first period of 10 years, the complementary fee specified in Rule 32(1)(a)(iii) and, where appropriate, the supplementary fee specified in Rule 32(1)(a)(ii), the surcharge specified in Rule 32(1)(b)(i) and the surcharge specified in Rule 32(1)(b)(ii).
  
• (2) If the basic fee has been paid only for a first period of 10 years, the balance of the fee, the amount of which is indicated in Rule 32(1)(a)(i), shall be payable to the International Bureau before the expiration of a period of 10 years from the date of international registration.
  
• (3) If the balance of the fee is not paid before the expiration of the period of 10 years, the owner shall forfeit the benefits of registration and the registration shall be cancelled, unless the International Bureau is in possession of the balance of the fee and the surcharge fixed in Rule 32(1)(d) within six months from the date of expiration of the period of 10 years.
  

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