Expertise/Intellectual Property

Service

International Registration under the Madrid System

On the basis of a mark already applied for or registered with Rospatent, a single international application is filed for protection in several countries, and the decision for each country is taken by its national office.

We are most often instructed by:

  • Exporters and companies with production abroad
  • Holders of an existing international registration
  • Applicants who have received a provisional refusal from a foreign office

The information on this website is provided for information purposes only and does not constitute a public offer.

What the Service Includes

Timing and Fees
–timing on request
from ₽fee on request

Timing and fees are indicative and are confirmed when the engagement is agreed.

01 / Overview
The international mark

An international registration under the Madrid System for the registration of trademarks provides protection in each designated country under that country's law, as if the application had been filed there directly, but it is obtained through a single application, in one language and with one list of goods and services, it is renewed on a single date, and a change in the holder's name or address is recorded in a single entry.

Trademarks are registered abroad before market entry: in many states a mark belongs to whoever applies to the office first, and a name known to customers may end up in the hands of a distributor, a local manufacturer or a competitor. Protection in the target market is also needed to work with major foreign marketplaces, for customs control and for relationships with local partners.

An international registration is based on a trademark registration with Rospatent or an application filed there and depends on it for a set period: if the basic application is refused, protection ceases in all the designated countries. The list in the international application is no broader than the basic list, and the designation for Rospatent is chosen with plans abroad in mind.

The applicant is the same company as in the Rospatent filing. If several related companies use the designation, it is determined in advance in whose name the mark is to be registered.

02 / Outcome
Service Outcome
  • Country risk opinionA conclusion on the likelihood of a provisional refusal in each selected state, before the international application is filed.
  • List of countries by marketThe countries, with a calculation of official fees for each.
  • International applicationAn application prepared and filed through Rospatent for transmission to WIPO.
  • Examination materialsResponses to queries and provisional refusals, arguments and documents for national offices.

The outcome of the service is the work performed within the scope agreed with the client.

03 / Preparation
What the application is built on

  1. Materials

    The application is built on information about the subject matter and the applicant; the following points are relevant.

    • Basic applicationDetails of the national application or registration.
    • MarketsWhere the products are sold and manufactured now and where this is planned.
    • ApplicantThe person in whose name the basic application was filed, and a power of attorney for the representative.
    • Use of the markInformation on use of the mark in the state that issued the refusal.

  2. Assessment

    On the basis of the materials, the prospects of the examination, possible obstacles and ways of overcoming them are assessed.

  3. Plan

    For the chosen option, a plan is drawn up: the documents required, the sequence of steps and the timing.

04 / Projects
Selected Projects
01 / 04

Acting for the buyer

Intellectual property rights in the acquisition of an equipment and digital solutions manufacturer

Challenge

The buyer was acquiring shares in a foreign company that owned a Russian manufacturer of industrial equipment and digital solutions for equipment management and monitoring, as well as shares in a Russian legal entity. The acquisition of the foreign company was governed by English law.

What was done

The comprehensive legal due diligence of the Russian business covered intellectual property rights, as well as the corporate history, business operations, contractual relationships and other matters material to the transaction. The foreign ownership structure, title to the shares being acquired and the legal aspects of the buyer's entry into the existing corporate structure were analysed separately.

The structure and documents of the transaction were agreed. The findings on the Russian and foreign parts of the structure were reflected in the terms of the transaction and the arrangements for its closing.

Preparing for franchising

Consolidation of rights to a group's accounts, websites and materials before franchising

Challenge

A group of companies was engaged in extensive marketing, but its accounts, websites and rights to the materials created were registered in the names of different entities within the group. To set up franchises later, the rights had to be brought together in the group's management company.

What was done

It was established which group entity held each asset, and the transfer of rights to the management company was documented. The rights to the group's marketing assets were put in order and consolidated in the hands of a single entity.

Trademark dispute

Non-use dispute over a trademark that blocked registration of the client's mark

Challenge

The client needed to register a trademark to brand the services of a travel agency. Registration was blocked by another company's mark: that company used it for a cosmetics brand, but the protection of the mark also extended to a number of Nice classes the client needed.

What was done

Claims for early termination of the legal protection of the mark for non-use were prepared in respect of those classes. The claims were put to the rights holder at the pre-trial stage, and the dispute was settled without going to court.

Purchase of an interest

Review of an app developer's intellectual property rights

Challenge

The buyer was acquiring an interest in a company developing a healthy lifestyle app with a weekly audience of more than 1.5 million users worldwide. Comprehensive legal due diligence of the business being acquired was a key part of the engagement.

What was done

The company's intellectual property rights were analysed, as well as its corporate history, business operations and employment relationships. The due diligence findings were taken into account in structuring the transaction and preparing the contractual documentation.

05 / Questions
Frequently Asked Questions

A provisional refusal concerns only the state that issued it; it does not affect protection in the other countries. A response is prepared within the time limit set by that office, usually through a local representative: arguments that there is no similarity, a limitation of the list, or a letter of consent from the owner of the similar mark.

Without a response, the refusal becomes final. The arguments are chosen after examining the refusal and the marks cited by the office.

First, a trademark application is filed with Rospatent; the international application is prepared immediately afterwards, without waiting for a decision on the basic application, and the applications are prosecuted until the offices of the selected countries reach their decisions.

An hourly rate, a fixed fee or a combined model is used; in some cases part of the fee depends on the outcome achieved. The fee is determined by the time actually spent, the complexity of the matter and the overall timeframe of the project, and is agreed before work begins.

Key Contacts
Deni Murdalov Deni Murdalov Partner, PhD (Law), LL.M. Ilya Smirnov Ilya Smirnov Partner

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Other Services in This Practice
Trademarks Protection and Disputes Brand Transactions Licence Agreements Franchising Assignment of Exclusive Rights Computer Programs and Databases Account Disputes Domain Name Disputes Trade Secrets and Know-How Inventions Utility Models Industrial Designs Documents and Consultations

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