How to get an international trade mark
Trade mark registrations are generally obtained on a country by country basis and separate applications are usually required for each territory where protection is required.
However, in addition to filing national applications, it is also possible to file through an international trade mark filing system known as the Madrid Protocol, which is administered by the World Intellectual Property Organization (WIPO), part of the United Nations and based in Geneva.
This allows applicants who have applied for or registered their mark in their own country, to apply for a bundle of national rights. In essence, the corresponding trade mark is registered with WIPO but designates some or all of the countries who have signed up to the system. Click here for a full list of countries.
Once WIPO receives and processes the international application, they send it to each of the designated countries, which has up to 18 months to conduct their own examination, and raise any objections. Each country will examine the trade mark under their own law and independently of each other. Objections are dealt with locally. In the event the objection is maintained, the application is refused for that country, but may proceed in the others.
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 typically no need to appoint local trade mark attorneys.
Subsequent management – maintaining the trade mark is managed centrally at WIPO and so is administratively easier and more cost effective. It’s also possible to add countries to an International Registration at a later date, so it can expand with the business.
Chartered Trade Mark Attorneys are well placed to advise you on your international trade mark options and strategy. Click here to find a Chartered Attorney near you.