If the United Kingdom Intellectual Property Office (UKIPO) and/or Office for Harmonization in the Internal Market (OHIM) raise objection during the Examination of the UK or CTM Designations of an International (Madrid Protocol) Application, a local Agent and Address for Service has to be appointed to respond.  Albright Patents should be pleased to do this, advise and respond, as required.

  

Our charge to appoint Albright Patents as Agent and Address for Service before the UKIPO or OHIM is £95 and thereafter, charges in responding to the Notice of Provisional Refusal would be accrued at an hourly rate of £190 per hour. We can provide a cost estimate to respond upon sight of the Notice of Provisional Refusal issued by the UKIPO or OHIM.

Prior to filing a new Trade Mark Application or commencing use of a Trade Mark, Albright Patents strongly recommend that searches of relevant Trade Mark Registers are conducted for potentially conflicting Trade Marks.

 

Filing

Albright Patents will prepare and file a Madrid Protocol Application via the UKIPO or OHIM on behalf of a United Kingdom resident or company or a company with a "real and effective place of business" in the United Kingdom.

 

In order to file a Madrid Protocol Application, the Applicant must have a United Kingdom or Community Trade Mark Application/Registration for the same Trade Mark and corresponding or broader goods/services. This is called a "home" Application or Registration.

The UKIPO/OHIM forwards the newly filed International Application to the World Intellectual Property Office (WIPO) in Geneva, where it is examined for compliance with formalities and classification. If any objections are raised, Albright Patents will report this to you or your Client and advise how best to proceed.

 

Publication

Once any objections raised by WIPO have been overcome, the International Application is published in the Official Gazette and the Registration Certificate issued.

National Designations

WIPO then sends the International Registration to the National Trade Mark Offices of each designated country. Each designation is then examined in accordance with the relevant National Law and each Office has a period of up to 18 months to notify WIPO of any Examination objections and/or the filing of third party opposition. If objection/opposition is raised, it is necessary to appoint local Attorneys in the country concerned.

 

Renewal

Filing Fees

The filing fees are comprised of a "Basic Fee" of approximately £873 (in up to three Classes) and an additional £141 for each Class after the third.

In addition to the "Basic Fee", individual country charges are payable for each country designated. These fees vary from country to country and are dependent on the number of Classes. Albright Patents is happy to provide a cost estimate and also, a full list of countries that are party to the Madrid Protocol.

Prosecution Fees (Examination/Publication/Registration)

Provided no Examination objection or third party opposition is encountered from WIPO and/or any of the countries designated, no further fees will be incurred (except a Registration fee of £150 for the first Class and £50 for each additional Class).

The above costs include both Albright Patents' fees and official fees (at today's rates) and exclude VAT (if applicable).

All fees are subject to exchange rate fluctuations and our bank charges.

In order to file a Madrid Protocol Application, we require the following: -

• A representation of the Trade Mark. If this is a Logo, please let us have an email copy in pdf or jpeg format;
• A list of goods/services or information about the Applicant's intended or actual goods/services of interest;
• Applicant name and address, including nationality and state of incorporation; and
• If applicable, priority details, namely, country, date and Application number of first filing.

Please note that we do not require a Power of Attorney.