The basic principles of international protection of industrial property rights are laid down in the Paris Convention for the Protection of Industrial Property, and the procedure of international registration of trademarks is particularly regulated by the Madrid Arrangement for the International Registration of Marks and The Protocol related to the Madrid Arrangement Concerning the International Registration of Marks.

According to the Madrid Agreement, an applicant can base his own application only on an already registered trademark in a national office of origin, whereas according to the Madrid Protocol, international registration of trademark can be based even on a mark that has only been applied for registration, but has not yet been registered in a national office of the country of origin.

Some countries are members only of the Madrid Agreement, some only of the Madrid Protocol, and some are members both of the Madrid Agreement and the Madrid Protocol.

Since certain issues are differently regulated by the Madrid Arrangement and the Madrid Protocol, in each case it is necessary first to establish which of the two international agreements contracts will be applied to the procedure of the international registration of trademarks. This is determined according to the agreement which is binding the office of origin and on the agreement binding upon the countries seeking international protection. The office of the country of origin is the office through which the applicant seeks international protection of his trademark. The designated countries are the countries for which an applicant sought for international protection.

Grounds for the international registration of trademark may be the national trademark registered with the office of the country of origin or a national application submitted to the office of country of origin, depending on international agreement to be applied on a specific request for the international registration of a trademark:

• If the request for international registration of trademark is subject to exclusively the Madrid Agreement, the basis for the international registration may be exclusively the national trademark registered by the office of the country of origin (Art 1. par. 2. of the Madrid Arrangement).
• If the request for the international trade mark registration is subject to exclusively the Madrid Protocol, the basis for the international registration may either be the national trade mark, registered in the office of the country of origin or the national application filed with the office of the country of origin (Article 2 Para. 1 of the Madrid Protocol).
• If the request for the international trade mark registration is subject to both the Madrid Arrangement and the Madrid Protocol, the basis for the international registration may be exclusively the national trade mark registered in the office of the country of origin.

The request for international registration of trademark

A citizen of Montenegro, a person with residence on the territory of Montenegro and the legal person who on a territory of Montenegro has a serious and real industrial or commercial company, may submit a request for international registration of trademarks.

Reuqest for international registration of trademark is submitted to the Intellectual Property Office of Montenegro, address: Bulevar Revolucije 9, 81 000 Podgorica, on a form Mž1 (which can be found in the section forms on this website). For each mark a separate request is submitted in two copies.

It is necessary to submit a national application with a content corresponding to the request of international registration before or at the same time as the one submitted for the international trademark registration:

The Request for the international registration of a trademark must contain the following data:

1. Data about the applicant (data about the business name and main place of business of the applicant and/or the name and address of the natural person)
2. Address for correspondence, if any
3. Data about the representative (if the application is filed through a representative)
4. Indicate if the sign consists only of letters or numbers or its combination, also to indicate if it refers to a certain kind of trademarks, if such a trademark is in question. If the mark consists of letters not represented in Latin or numbers that are not Roman or Arabic, it is necessary to submit a translation of the mark into the English language, if the mark can be translated;
5. A list of goods or services in the English language, edited in accordance with the International Classification of Goods and Services (the Nice Classification)
6. The date and application number and the registration number of the trademark which serves as the ground for international registration
7. A designation of the colour and colour combination if protection is sought for a mark in colour, also black and white colour are noted
8. an indication as to whether an individual trade mark application is concerned, or one for a collective trade mark, a guarantee trade mark, a three dimensional trade mark or a music trade mark;
9. a designation of the prior international registrations (registration number and date) relating to the same mark, if any;
10. a designation of the countries for which protection is sought;
11. the applicant’s signature and seal.

An international trademark application has to be accompanied by A Power of Attorney, if the application is filed via a representative and an evidence of the payment of the application fee. A national fee for international registration is 20 euros.

The fee for international trademark registration

After the Intellectual Property Office establishes that an application for international trademark registration fulfills all conditions prescribed by the law, a fee for international registration must be paid to the International Bureau, and these are paid in Swiss francs (CHF). This fee can be calculated at the website of the World Intellectual Property Office www.wipo.int/madrid/feecalc/FirstStep (you need to check the office of origin - Montenegro, then mark the number of classes for which this sign refers to, if it is a collective trademark, if it is graphically represented or not and if the mark is in colour).

Claim for a right of priority

If an international application is submitted within 6 months since the date of filing the national application, the applicant has a right to request a claim for a right of priority based on national application in accordance with the Article 4 of the Paris Convention.

The date of international registration

International registration starts since the date of reception to the office of origin, under condition that the application for international registration is received in the International Bureau within the time limit of two months from the date of its reception in the country of origin. If the application for international registration of trademark is not received in the International Bureau within the above mentioned time limit, international registration will have the date of its reception in the International Bureau.

In other cases, when at the request of international registration the Madrid Agreement is applied, it will be considered from the moment of its reception to the office of origin; it will be treated as premature if it is not filed at the time when a national trademark has not been registered. Namely, according to the Madrid Agreement, a request for international registration of trademark can be based exclusively on an already registered national trademark. In this case, an office of the country of origin shall wait for the trademark to be registered at a national level. The date of reception of international registration in the national office, the date of reception for international registration in the national office, it will be considered from the date when the national trademark has been registered and inscribed in the Register of trademarks. It is important to emphasize that this rule on prematurity for international registration and a rule of office’s acting upon, is valid exclusively in cases when the Madrid Arrangement is applied.

On the contrary, when the Madrid Protocol is applied, the basis for international registration may be a national application trademark application; therefore, the application for international trademark registration could never be premature.

International trademark is inscribed in the International trademark Register and is published in the Official Gazette of the International Bureau (WIPO Gazette).

On each registered trademark, the International Bureau will without delay inform offices of the designated countries in application for international registration.

International trademark is valid for 10 years since the date of international registration and could be extended unlimited times with paying of the prescribed fees.

Searching of the database

Each international registered trademark can be searched in ROMARIN database, by entering that registered trademark number in the following link: www.wipo.int/trademarks/romarin

A request for territorial extension

After international registration, a holder of the international registration could file a request for territorial extension for the country for which the above-mentioned trademark has not been registered. A request for territorial extension could refer only to a part of goods and services for which the trademark has been registered. Filing a request for territorial extension, in terms of active legitimating of the applicant, the same terms must be fulfilled  as for the international trademark registration (Article 1. para 3. of the Madrid Arrangement and Article 2, paragraph 1. subparagraph  i of the Madrid Protocol).

Refusal of protection

After receiving a notice on international registration, or territorial extension, every country that has been mentioned in international registration, has the right on territorial extension, or territorial extension in a time limit of 12 months (for countries for which the Madrid Arrangement applies) or within a time limit of 18 months (for countries on which the Madrid Protocol applies) since the date of international registration, makes a claim that on its territory for that trademark protection could not be sought.

The effect of international registration in designated countries

The inscription of the trademark in the International Register does not imply that the trademark is initially recognized in all designated countries. The aim of international registration is to shorten the procedure of formal application examination, but after the trademark inscription in the International Register and after having submitted notices on international registration to the designated countries, that trademark actually enters into the phase of national examination if all material terms have been fulfilled. That implies that each national office treats international registration as an application which falls under all rules and conditions for trademark recognition prescribed by the legislation of the country of origin.