The international application (IA) form allows registered users to file a request for an international trade mark application through the Madrid Protocol system administered by the World Intellectual Property Office (WIPO). The IA can be based on existing European Union trade marks (EUTMs), European Union trade mark applications (EUTMAs) or a combination of both.
This section explains how to file an IA based on one or several EUTM(A)s.
The form is available in 23 of the official languages of the EU.
Reference
Your Reference
References should consist of up to 30 alphanumeric characters, using the Roman alphabet: a-z, A-Z, 0-9. Do not use spaces.
This reference is for your internal use; for any future queries regarding your request, please use the official EUIPO reference.
Languages
EUIPO language
This is the language you have chosen for submitting the IA to the EUIPO. If the IA request is launched after having selected an EUTM in e-Search, by default this field will contain the first language of the mark. It can be changed to any of the 23 official languages of the EU in which an application can be filed.
WIPO language
This is the language in which your application will be submitted to WIPO. It can only be English, French or Spanish.
Correspondence language with EUIPO
You may choose whether the correspondence language with EUIPO will be the EUIPO or WIPO language.
Correspondence language with WIPO
You may choose between the three Madrid Protocol languages: English, French and Spanish.
Translations
Translations are only necessary where the application is submitted in a language different from the Madrid Protocol languages (English, French, Spanish).
If you tick the second option, i.e. The applicant provides a translation of the list of goods and services and the verbal elements in the WIPO language, you will have to submit the following information in the WIPO language, if applicable:
Colours claimed, Colours indication, Mark description, Transliteration of the mark, Disclaimer.
Basic EUTM/A and international mark details
An IA can be based on one or more EUTM/A(s). In this section, you can either key in the EUTM(A) ID number directly or you can use the EUIPO eSearch database to find the basic EUTM(A)(s) forming the basis of the IA. The system will show the basic details of the selected entity and if you add it to the form, the international mark details will be populated and displayed with the related information from the mark.
Designated Contracting Parties
Add — you can add as many contracting parties as necessary in the ‘Designated contracting parties’ field.
When adding the United States as a designated contracting party, the field ‘Intention to use’ will be displayed in the section, allowing you to upload an attachment or to indicate it will be submitted later on.
Delete — you can also delete previously added contracting parties (any limitation related to that/those contracting party(ies) will be removed as well).
Goods and Services
If you choose the option The registration is sought for the same goods and services in the application, the class numbers and the specification of goods and services will be identical to the ones in the basic EUTM(A) and will not be modifiable.
If you choose the option The registration is sought for the following goods and services in the application, you will be able to:
- Delete one or more class(es). In order to do this you have to click on the x symbol at the top left of the class number.
- Modify the terms included in one class. A reminder of the language used for the terms edition is shown under each class number following the choice of the user in the section Languages.
The list of goods and services may be the same as in the basic mark(s) or narrower. It can never be broader than the scope of protection of the EUTM(A)(s).
Limitations
This is to request limitations of the list of goods and services in relation to all or some of the contracting parties you have selected.
If you want to add a limitation, click on Add Limitation and Select the contracting party(ies)where you want to apply the limitation.
You must indicate the full limited list for that/those contracting party(ies) by selecting all the pertinent classes as follows:
Add Class → Select Class → Edit if necessary → Save.
Priorities
If you wish to claim priority of a first filing for the same trade mark submitted in the course of the last six months, select the ‘Filing Office’ from the dropdown list and:
- add the filing date and filing number;
- choose to claim priority for all the classes or only some of them.
If you select the option ‘Selected classes’, you will be required to indicate for which goods and services the priority claim apply; more specifically, you will have the option to Remove a Class or Modify the Goods and Services it contains.
WIPO fee calculation
You can introduce the information relating to the payment of WIPO fees. The EUIPO will forward the information to WIPO.
Validate & Submit
At this stage you will see the confirmation page containing all the application details that you are about to submit. You can still modify the data before submitting it.
The signature information is mandatory. A maximum of two signatures is allowed. By providing the signature information, you confirm that you have checked the details and wish to sign and submit the application form.
The next step is the payment window where you will have to choose the payment method for the EUIPO handling fee.
Save, Print and Reset
You can ‘Save’ the IA form in your ‘User Area’. As you are completing your application form, you can save your work at any time as a draft. Click on ‘Save Draft’ in the right-hand column of the form. The draft can be accessed from the ‘Drafts’ section in your User Area.
‘Save form data in XML’ will allow you to export the information in XML format and to re-use it later on by using the option ‘Import data from XML’
‘Print’ a review of your form at any point during the application process.
‘Reset’ — if you want to start your application again, click ‘Reset Form’ and all your previously completed fields will be cleared and the information deleted.
Payment Method and confirmation
You can pay the IA form handling fee by credit card, bank transfer or via an EUIPO current account. The EUIPO provides an online service to current account holders giving access to all their current account transactions and information.
Please note that if you decide to pay by bank transfer, it is highly recommended that you take note of the payment transaction code, as this will help to identify your payment. You can find this reference in the downloadable receipt you will obtain at the end.
When you click on ‘Confirm payment’, your application will be submitted.