Trade marks and designs

The easiest and fastest way to obtain protection for a trade mark abroad is to have the trade mark registered internationally under the Madrid system, which consists of the international agreements Madrid Agreement Concerning the International Registration of Marks (Decree of the Minister of Foreign Affairs No. 65/1975 Coll., as amended by Decree No. 78/1985 Coll.) (the Agreement, Dohoda) and the Protocol to the Madrid Agreement Concerning the International Registration of Marks (Notification of the Ministry of Foreign Affairs of the Slovak Republic No. 267/1998 Z. z., as amended) (Protokol).

All processes relating to internationally applied for and registered trade marks under the Madrid system are governed by the Implementing Regulation to the Protocol to the Madrid Agreement Concerning the International Registration of Marks (Notification of the Ministry of Foreign Affairs of the Slovak Republic No. 345/1998 Z. z. z., Vykonávacím predpisom k Protokolu k Madridskej dohode o medzinárodnom zápise ochranných známok (Oznámenie Ministerstva zahraničných vecí Slovenskej republiky č. 345/1998 Z. z.)

With a single application, an applicant may register his trade mark in all Contracting Parties to the Madrid System, which currently includes more than 100 countries of the world, while the right of priority under the Paris Convention remains.

The advantage is a quick and simple registration procedure mediated by the office of origin, which files the international application with the International Bureau of the World Intellectual Property Organization in Geneva (WIPO).

An application for international registration shall be filed by the applicant with the registration office of the country where the trade mark is already registered or has yet to be applied for. At the same time, the applicant must have a real and effective establishment or domicile (place of business) or nationality (place of business in that State) in that State - a contracting party to the Madrid Union. Such office shall become the office of origin for the applicant.

The office of origin, on the basis of the applicant's request (žiadosti o MZ) for an MA, prepares an international application in English or French and sends it to the WIPO International Bureau (WIPO).

The International Bureau shall carry out a formal examination of the particulars of the international application. Any deficiencies found may be remedied by the applicant or the Office of origin. In the case of deficiencies in the list of goods and services, the International Bureau shall communicate exclusively with the Office of origin. The list of goods and services must comply with the principles of international classification according to the Nice Agreement, Niceská dohoda, concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Decree No 118/1979 Coll. of the Minister of Foreign Affairs, as amended by Decree No 77/1985 Coll.) (Nice Agreement), and with the current version of the International Classification Manual (medzinárodného triednika).

After registration in the WIPO International Register, the international registration is published in the International Gazette (WIPO Gazette), a certificate of registration is delivered to the applicant and a notice of registration is delivered to the designated Contracting Parties.

Only these registration offices, in proceedings on an internationally registered mark, conduct a substantive examination to determine whether the mark meets the conditions for registration laid down by the laws of those States. They have the right to provisionally refuse the mark in each country and the proprietor may then proceed with the proceedings on the mark before the office which issued the refusal.

An internationally registered trade mark is valid in the territory of the designated Contracting Party only when protection is granted by the competent office.

During the term of validity of the mark, the proprietor may apply for territorial extension of protection to Contracting States where the mark has not yet been registered or has been definitively refused. Conversely, he may also waive protection in certain countries, narrow the list of goods and services, transfer the mark in whole or in part to another proprietor, etc.

The holder of an international registration may submit all requests for changes - post-registration designations, renewals, changes of ownership, narrowing of the list of goods and services, renunciation of protection, registration of a licence, changes in data, etc. (except for the filing of an international application) - to the International Bureau through the Office of origin or the Office of the holder, or by mail or electronic means (Contact Madrid).

The official application forms are available on the WIPO website (forms).

The applicant, later the holder, also pays the fees himself according to the current fee schedule (sadzobníka poplatkov).

The full text of the legislative amendments to the Protocol to the Madrid Agreement and the Implementing Regulations can be found at https://www.indprop.gov.sk/legislativa/medzinarodne-dohody.