1. What are the steps in obtaining obtain an International Registration?
   
   An application for an International Registration is filed through the office of origin (in a qualifying member country) on the basis of an application or a registration in that country, where the applicant is a national or is domiciled, or has a real an effective commercial establishment.
   
   The International Bureau examines each application for an International Registration to ensure the filing requirements are met and to ensure that the goods and services are properly classified. If these technical requirements are met the International Bureau then issues the International Registration and notifies each designated country of the request for protection to be extended to that country. The application is then examined in the national office of each designated country in accordance with the examination procedures in that country. If the requirements for registration in the designated country are met, then the designated country will indicate that protection will extend to that country.
   
   The national office of a designated country must examine the application generally within 12 months, with the possibility of obtaining an extension to 18 months. Generally, if the designated country does not inform the International Bureau of a refusal of protection for the mark within that time frame, the International Registration is automatically extended to the designated country.
   
   
2. Can a Canadian business obtain an International Registration now?
   
   Yes. Although Canada is not a member country, if a Canadian applicant has a real and effective commercial establishment in a member country, a Canadian business may be eligible to obtain an International Registration on the basis of an application filed through that country's national office.
   
   
3. What are the advantages of an International Registration?
   
   The principal advantage of an International Registration is an initial cost saving, given that a trade-mark owner may file a single application for extension of protection for the mark in several member countries. Centralized filing is permitted for recordal of certain changes, such as a change of the trade-mark owner's address or name, assignments of the mark (provided the assignee is a national of, is domiciled in, or has a real and effective commercial establishment in a member country), or renewals.
   
   
4. What are the disadvantages of an International Registration?
   
   If the home country requires a very specific description of the goods and services in an application, an International Registration based on that home country registration would be similarly limited. Consequently, a foreign trade-mark owner filing for an International Registration based on a registration in a foreign country which allows for a broad description of goods or services may have an advantage over applicants from countries such as the United States, which require narrower specification of goods and services.
   
   Also, within the first 5 years of an International Registration, the registration in all designated countries can be jeopardized by "central attack" against the home country registration. If successful, the registrations in all countries may fail.
   
   Another limitation is that an International Registration may only be assigned to an assignee who is a national of, is domiciled in, or has a real and effective commercial establishment in a member country. Thus, an International Registration cannot be freely assigned.
   
   
5. Are there any pre-requisites to filing an application under the Madrid Protocol?
   
   In order for a trade-mark to be the subject of an application, it must already have been registered, or been the subject of an application for registration, for the same goods or services in an "office of origin" (the office where the application or registration that forms the basis for the International Registration resides).
   
   
6. Who administers the International Registration system?
   
   The International Bureau of the World Intellectual Property Organization (WIPO), in Geneva, Switzerland administers the International Registration system and maintains the International Register of marks.
   
   
7. What fees are required for an International Registration?
   
   The International Bureau charges fees which include a) a basic filing fee; b) a supplementary fee for each class of wares or services beyond the third class; and c) a standard designation fee or individual designation fee for any request for extension of protection to each state.
   
   The fee can vary, based on a number of factors such as whether the reproduction of the mark is in black and white and/or in color, the number of classes of goods and services indicated in the International Application, or the number of designated countries included in the Application. The fees must be paid directly to the International Bureau in Swiss francs, unless the office of origin has agreed to collect them on the Bureau's behalf.
   
   In addition, the office of origin may charge fees for certifying an International Application and transmitting it to the International Bureau.
   
   
8. What is the effective date of an International Registration?
   
   The date of the International Registration is the date of receipt of the application for an International Registration in the office of origin, provided that the International Bureau receives the application within 2 months of the date of its receipt by the office of origin and provided that no essential elements are missing. For example, if the application does not set out the identification of goods and services, the International Registration date will be the date on which the identification is provided to the International Bureau, unless it is provided within two months of the date on which the application was received by the office of origin.
   
   
9. Can an International Registration benefit from a priority claim under the Paris Convention?
   
   Yes, a claim of priority may be made for applications for International Registration. To benefit from the claim of priority, the application for an International Registration must include a claim of priority and must be filed in the office of origin within 6 months after the filing date of the application that forms the basis of the priority claim.
   
   
10. Will the office of origin's specification of wares and services be accepted in every member country designated in the application?
    
    Not necessarily. The trade-marks office of each designated country will examine the application and the specification of wares and services may require amendment.
    
    
11. Can a mark be opposed in a designated country?
    
    Yes, if the designated country allows for opposition procedures, the same process will apply to an application to extend protection of the International Registration to that country.
    
    
12. If registration is refused by one designated country, is protection lost in other designated countries?
    
    No. Refusal by one designated country affects only that country. However, the International Registration may be subject to a "central attack", which, if successful will mean that protection in all countries will fall. However, it is possible that such applications could be transformed into national applications.
    
    
13. Can an International Registration be cancelled?
    
    Yes, if during the first five years following the date of the International Registration the home country application or registration is withdrawn, refused or cancelled, the International Registration will also be cancelled.
    
    
14. What is the term of protection of an International Registration?
    
    The term of protection is for 10 years, renewable for additional 10-year periods.
    
    
15. What is the effect of an International Registration?
    
    Extension of an International Registration to a particular designated country will mean that the registrant will receive the same rights of protection as would have been obtained had the mark been registered by the national office of each designated country.
    
    
16. Is post-registration use required to maintain protection?
    
    Requirements differ from country to country. In most countries, non-use of a trade-mark for 3 to 5 years will be deemed to constitute abandonment of the trade-mark. Some countries, such as the U.S., require affirmation of use at certain times. Others do not require a registrant to demonstrate use in order to continue the benefits of registration. The rules on proof of use that apply to national registrations in each country will apply to International Registrations.
    
    
17. Can an International Registration be extended to more countries after it has become registered?
    
    Yes. Additional Madrid Protocol member countries may be designated at any time.

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