Registering an international trademark is crucial if you operate globally and want to safeguard your brand. This ensures that the time spent creating your brand image is not wasted or copied by others. The protection of international trademarks is governed by the Madrid System, which includes the Madrid Agreement and the Madrid Protocol.
By following the Madrid System, you can protect your IP across the 130 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. To receive international protection for your brand, you must first go through one of the national Trademark Offices of a Contracting State to the Madrid System. Here’s a quick recap of what can be protected under this system:
- Logos
- Names
- Images
- Colors
- Patterns
- Shapes
- Packaging of goods
- Sounds
- Smells (with specific requirements that shall not be explored here)
A single international trademark can protect one or a variety of these concepts simultaneously, as long as they create a distinctive sign that identifies your brand and differentiates it from others.
However, to file for international protection, you must be either:
- A citizen of a Contracting State to the Madrid System
- A legal entity resident in a Contracting State
- 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 depends entirely on brand protection. You can always request to add more countries to the trademark later through a Territorial Expansion Application, costing 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 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). The application for international registration should be submitted to the national office of the applicant.
Steps of the Trademark Registration:
- Apply to the Appropriate National Trademark Office
- Examination of Trademark Application by the WIPO
- Examination of Trademark Application by the National Trademark Office of Each Requested Country
Step 1: Apply to the Appropriate National Trademark Office
The first step involves applying to the right National Trademark Office for you. This is relatively simple to find through a quick Google search. Below is a list of a few 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 Form MM2. Once filed, the national office will examine the application. If there are no defects, they will pass your application to the WIPO for further examination at an international level. This usually takes up to 2 months.
Step 2: Examination of Trademark Application by the WIPO
Once approved by the national office, the WIPO will examine your application to ensure there are no defects and that you are a legitimate applicant. 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 each 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 applying to register a national trademark in all of the requested countries. Therefore, at this stage, the relevant national trademark offices will examine your application for any faults and 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 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 period can occasionally extend to 18 months or longer.
If there is no notification of 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 have a registered international trademark, the job is not over. Many companies and individuals might want to copy your brand and use it for their gain. Therefore, establishing an IP monitoring program is crucial. Each jurisdiction has its particularities, so it is advisable to consult with a local agent to avoid loss of rights (e.g., Declaration of Use in Mexico, etc.).
Trademark Renewal
It is essential to remember that your international trademark is only protected for 10 years. Once this period has elapsed, you need to file for a renewal. The WIPO and most national trademark offices do not send out automatic reminders, so you should either manage this carefully or hire a trustworthy IP lawyer to ensure you don’t 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 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.
For more information, visit our home page or our services page. You can also reach out to us via email at hello@moellerip.com.