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International Trademark Filing

How does the Madrid System simplify trademark registration?

The Madrid System allows you to file one application, in one language, and pay one set of fees to protect your brand in up to 130 countries. It eliminates the need to hire local lawyers in every single country unless an objection is raised.

Do I need a registered trademark in Georgia first?

Yes, to use the Madrid System, you must have a "Basic Mark" — either a registered trademark or a pending application in Georgia (your home office). The international registration will mirror the details of this basic mark.

What countries can I cover?

You can designate any member of the Madrid Protocol, including the USA, EU, China, UK, Turkey, and Russia. You can also add more countries later to expand your protection as your business grows.

What is "Central Attack"?

For the first 5 years, your international registration is dependent on your basic Georgian mark. If the Georgian mark is cancelled or refused, your international protection ceases in all designated countries. After 5 years, it becomes independent.

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International Trademark Filing via the Madrid System (WIPO) is a strategic step for any company planning to expand business beyond Georgia. Intellectual property protection is territorial, meaning a brand registered in Georgia is not automatically protected in other countries. Through the Madrid System (Madrid Agreement and Protocol), of which Georgia is a member, it is possible to file a single international application and protect a brand in over 130 countries using a simplified procedure. This system saves time and financial resources, as there is no need to file separate applications in each country or hire local lawyers at the initial stage.

What International Filing Services Cover

Specialists on Legal.ge offer full legal support regarding WIPO procedures:

  • Preliminary Search and Strategy: Checking for similar marks in target country databases to rule out rejection risks (e.g., WIPO Global Brand Database).
  • Application Preparation: Filling out the MM2 form, defining classes according to the Nice Classification, and submitting the application through Sakpatenti to WIPO.
  • Country Selection: Consulting on selecting target jurisdictions based on business interests (EU, USA, China, etc.).
  • Responding to Office Actions: Handling notifications (Provisional Refusal) received from WIPO or designated national offices.
  • Registration Management: Renewing the international registration and recording changes.

Practical Examples and Scenarios

International registration is critical in the following cases:

  • Wine Export: A Georgian wine company plans to export products to China and Europe. Before exporting, it is essential to register the mark in these countries to avoid counterfeiting or brand misappropriation by local distributors.
  • Tech Startup: An app is available globally on the App Store. To protect the brand in the US and UK, the startup uses the Madrid System, which is cheaper than filing separate applications in each country.
  • Franchise Sales: A Georgian restaurant chain sells a franchise in Kazakhstan. The partner demands a guarantee that the brand is protected in the local market.

Georgian Legal Framework

The procedure is regulated by the Law of Georgia on Trademarks and international treaties: the Madrid Agreement and the Madrid Protocol. The basis for filing an international application must be a mark already registered or applied for in Georgia (the so-called "Basic Mark"). Importantly, the international registration depends on the basic (Georgian) mark for 5 years. If the Georgian mark is cancelled during this period, the international registration will also be cancelled (Central Attack principle).

The Process: How the Madrid System Works

The process involves several stages:

  1. Filing with Sakpatenti: The applicant submits an international application to Sakpatenti.
  2. Forwarding to WIPO: Sakpatenti verifies compliance and forwards it to Geneva.
  3. Formal Examination: WIPO conducts a formal check and registers the mark in the International Register.
  4. Substantive Examination in Countries: Offices of designated countries (e.g., USPTO, EUIPO) conduct examination according to their laws and decide on granting protection.

Why Legal.ge?

International registration is a complex procedure where even a single mistake (e.g., incorrect classification) can turn into an expensive refusal. Legal.ge gives you access to qualified patent attorneys with experience working with WIPO who will help protect your brand globally. Find a specialist on Legal.ge.

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