International trade marks via WIPO
You can file trade marks in over 100 countries via the World Intellectual Property Organization (WIPO) on one application.
The World Intellectual Property Organization (WIPO) makes getting a trade mark in several territories possible with one application and one initial payment.
WIPO offers the Madrid System, which makes it possible to file a trade mark in a number of countries around the world in one application, as a bundle of national rights.
First you will need a registered national trade mark in a territory signed up to either the Madrid Treaty or the Madrid Protocol (click here to see a list of these territories). This ‘base registration’ is what your application for multiple new territories will be based on.
It is important to note that an international registration will be linked to the fate of the base registration for a period of five years from the date of international registration – this means that if the base mark is limited or removed from its register, the entire international trade mark will suffer the same fate.
An application for an international registration is filed via the same IP office as that of the national/regional base trade mark. When filing the international registration, you choose which countries and territories that you would like to gain protection in (“designate”) with your trade mark.
Once WIPO receives and processes the international application, they send it to each of the countries you have designated. Each has up to 18 months to conduct its own examination and raise any objections. In the event the objection is maintained, the application is refused for that country, but may proceed in the others.
How much does it cost?
The more countries you specify, the more it will cost you.
In terms of official fees, the base rate is 653 Swiss francs (around £520), or 903 Swiss francs (around £720) for a colour trade mark.
You will usually need to pay an administration fee in the territory of your base mark to transmit it to WIPO. In the UK this is £40, in the EU it is EUR300
Registering through the international system is advantageous because:
Ease of administration – an application can be filed in English but can provide protection in multiple countries. By contrast, national applications usually require a trade mark attorney in each country.
Cost effective – official filing fees can be less and there can be further cost savings because there is no need to appoint local trade mark attorneys unless issues arise during the registration process.
Subsequent management – maintaining the trade mark is managed centrally at WIPO and so is administratively easier and more cost effective. It is also possible to add countries to an international registration at a later date, so your trade mark protection can expand with your business.
There are pros and cons to using the Madrid System and it is advisable to speak with a Chartered Trade Mark Attorney to ascertain the best international strategy for you.