How to Register an International Trademark: 3 Step Guide and other Practical Concerns in 2020


11. June 2020

By Moeller IP Team.

Knowing how to register an international trademark is necessary if you operate internationally and want to protect your brand. It is the best way to ensure that the time you spent creating your brand image does not go to waste or copied by others. The protection of international trademarks is governed by the Madrid System, composed by the Madrid Agreement and the Madrid Protocol.

By following the Madrid System, you can protect your IP across the 122 countries that currently agree to mutually protect each other’s nationals’ trademarks – these countries are known as the Madrid Union.

Requirements to register an International Trademark

The requirements for an international trademark are essentially the same as for national filings. In fact, to receive international protection of your brand, you must first go through one of the national Trademark Offices of a Contracting State to the Madrid System, as we will see later on. First though, a quick recap of what can be protected under this system:

  • Logos
  • Names
  • Images
  • Colours
  • Patterns
  • Shapes
  • Packaging of goods
  • Sounds
  • Smells (with specific requirements which shall not be explored here.)

 

A single international trademark can protect one or a variety of these concepts all at once, as long as these concepts come together to create a distinctive sign that identifies your brand and differentiates it from others.

 

However, it should be noted that in order to file for international protection, you must be either:

  1. A citizen of a Contracting State to the Madrid System
  2. A legal entity resident in a Contracting State
  3. A legal entity with a real and effective industrial or commercial establishment in a Contracting State

Scope and duration of IP protection

An International Trademark will protect your brand for 10 years. After this 10-year period, you can file for a renewal, details of which will be covered later in the section titled “Follow up: IP Monitoring and TM Renewal”.

The number of countries in which it will be protected will depend entirely on your filing and where you decide to invest resources in brand protection. You can always request to add more countries to the trademark at a later date through a Territorial Expansion Application, so don’t worry if you want to start small and increase protection over time. This will cost 300 Swiss francs (CHF) plus 100 CHF per additional country. There can also be a variable element to this fee. To be sure, check out WIPO’s Fee Calculator.

How can I apply for an International Trademark?

First and foremost, to register for a trademark internationally, you must apply to a national trademark office pertaining to a Contracting State. You do not apply directly to WIPO (World Intellectual Property Organization).

Steps of the Trademark Registration: 

  1. Apply to the appropriate National Trademark Office
  2. Examination of trademark application by the WIPO
  3. Examination of trademark application by National Trademark Office of each requested country

Step 1: Apply to the appropriate National Trademark Office

The first step of the process entails applying to the right National Trademark Office for you. This is relatively simple to find out through a quick Google search. Below is a list of a few of the national offices with links to their websites.

  • UK: IPO (Intellectual Property Office)
  • Germany: DPMA (Deutsches Patent- und Markenamt)
  • France: INPI (Institut National de la Propriété Industrielle)
  • Spain: OEPM (Oficina Española de Patentes y Marcas)
  • Italy: UIBM (Ufficio Italiano Brevetti e Marchi)

In applying to this national office, you will have to fill in the Form MM2. Once filed, the national office will examine the application. If there are no defects to the filing, they will then pass your application to the WIPO for further examination at an international level. This will usually take up to 2 months.

Step 2: Examination of trademark application by the WIPO

Once approved by the national office, the WIPO will then take their turn to examine your application. This examination is mainly to ensure that there are no defects in the application and that you are a legitimate applicant that fulfills the requirements. Upon approval, it will be published in the WIPO’s International Trademark Gazette, and the application will then be forwarded to the national offices of every requested country.

Step 3: Examination of trademark application by the National Trademark Office of each requested country

The international trademark registration procedure essentially has the same effect as if you were to apply to register a national trademark in all of the countries’ requested. Therefore, at this stage, the relevant national trademark offices will examine your application for any faults and, importantly, any potential IP conflicts with already registered trademarks in that country.

Usually, an important part of the national procedure is to publish the application in their national gazette or bulletin and allow a time period for other trademark holders to voice their concerns. If there are any conflicts with pre-registered trademarks, the national office has one year to communicate a notification of provisional refusal – this time period can occasionally be extended to 18 months or longer.

If there is no notification of such a provisional refusal, the trademark is granted and your brand is now officially protected in that country. Congratulations!

Follow up: IP Monitoring and TM renewal

IP Monitoring

Now that you officially have a registered international trademark, you might feel like the job is over. That is unfortunately not the case. There are many companies and individuals out there who might want to copy your brand and use it for their own personal or commercial gain.

Therefore, to ensure that your hard work has not been for nothing, it is of utmost importance to establish an IP monitoring program. Fortunately, we have partnered with [insert partner’s name here with a link] so that you can rest easy knowing that you are protecting your trademark and your brand image.

Trademark Renewal

It is also essential to remember that your international trademark is only protected for 10 years. Once this time period has elapsed, you need to file for a renewal. The WIPO and the vast majority of national trademark offices do not send out automatic reminders, so you should either carefully manage this or hire a trustworthy IP lawyer to ensure that you don’t wake up to find that you have to start the procedure again.

Register an International Trademark: Conclusion

Now that you know how to apply for an international trademark, protect your brand and monitor your IP, it should be noted that the actual process can take some time. Moreover, if there are mistakes in your application or a notification of provisional refusal is communicated to the WIPO or any national trademark office, that can further complicate matters and result in lengthy delays.

If you would feel safer hiring an attorney to take you through the whole procedure, you can contact us.

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