Why register a trademark internationally?
One of the biggest issues business owners face when expanding their business internationally is “brand squatting”, somebody else registering a brand owner’s trademark first in another country to later sell it for profit or to leverage the brand’s success. You can read more about this issue in our article Trademark Squatting - What is it, Why it happens, and How to prevent it? The best way to protect your brand is to not delay filing trademark registrations abroad, particularly in countries where you intend to launch a product or service in the near future. The owner of a registered trademark has the legal means to protect their brand in any country where registration applies.
What is an International Trademark?
Though there is no universal trademark that applies in all countries, several international agreements make it possible to file a single application to register a mark in more than one jurisdiction. Some of the most commonly used frameworks for such multijurisdictional trademark registrations are:
The European Union Trade Mark (EUTM) (27 European countries)
Madrid Union/Madrid System (over a hundred of countries worldwide)
European Union Trade Mark
The EUTM system offers trademark owners a unified system of protection throughout the EU with the filing of a single application. If successful, this one application results in an EUTM registration, which is recognized in all the EU member states. As new member states are added to the EU, the coverage of existing EUTMs automatically expands, without any action or payment required of the trademark owner; the protection of an extended EUTM in a new member state, however, dates from the admission date of the member state to the EU rather than the filing date of the EUTM. The initial registration period is 10 years from the date of filing of the EUTM application. The registering authority is the European Union Intellectual Property Office (formerly the Office for Harmonization in the Internal Market), in Alicante, Spain.
Madrid System
The Madrid System is a system for the international registration of trademarks. It provides a means to simultaneously seek protection for a trademark in a large number of jurisdictions resulting in International Registration. The system is governed by two separate international treaties, the Madrid Agreement (Agreement) and the Madrid Protocol (Protocol). Under the Agreement, nationals of any signatory may secure protection of their trademark, registered in the country of origin, in all other states that are parties to the Agreement. Under the Protocol, nationals of any signatory may secure protection in countries and jurisdictions that are contracting parties to the Protocol based on a pending application or registration in the country or jurisdiction of origin. Currently, 128 countries are covered under the Madrid System. This includes countries in the European Union as well as China and Australia.
What are the benefits of having an international trademark?
Cost-effective coverage in multiple jurisdictions with a single application
Flexibility - You decide which countries you select. An extension at a later date is also possible
Practicability - an international registration is a bundle of protective rights whose legal fate is largely independent of each other
Application, administration and renewal are easier and therefore more time-efficient
What is the process of registering an international trademark?
Madrid System
Stage 1 - Application
At the time of filing, the applicant simply designates other Madrid Protocol countries in which it desires coverage. This is only possible for countries that are members of the Madrid Union. These requests for extension may be made at any time. The requests for International Registration coverage are then sent to WIPO by the home country trademark office, and the separate designated countries are informed by WIPO of the request.
Stage 2 - Examination by the WIPO
After you submit your application and it is approved by the International Bureau of the WIPO in Geneva, the application is then published in the WIPO Gazette of International Marks. At this stage, grounds for rejecting your application can be invoked and your application may or may not be accepted in certain countries. If the national trademark offices do not notify the refusal within the prescribed period, the application will be deemed to have been accepted.
European Union
Stage 1 - Application
In order to obtain an EUTM registration, an application is filed at the European Union Intellectual Property Office (EUIPO), or via a trademark registry of an EU member state who will forward it to the EUIPO.
Stage 2 - Examination by EUIPO
After the filing stage, the application will undergo examination by the EUIPO to consider whether it meets the formal filing requirements, including requirements relating to the classification of goods/services. Once any classification objections have been resolved, the EUIPO will carry out substantive examination to assess whether the sign for which protection is sought is a trade mark and, if so, whether it is the type of mark that is registrable (examination on absolute grounds). If any objections are raised, there is an opportunity to respond to the objections, and the application cannot proceed until all objections have been dealt with.
If an application is accepted, details of the application will be published in the European Union Trade Marks Bulletin, and third parties will have three months from the publication date to oppose the application. If no opposition(s) are filed (or any opposition is overcome), the application will proceed to grant, with the issuance of a digital certificate of registration.
How much does it cost to register an international trademark?
Madrid System
The cost of an international trademark registration through Madrid System includes the basic fee (653 CHF for a black and white mark, 903 CHF for a coloured mark), plus additional costs depending on:
the nature of your mark,
where you want to protect it (domestic fees vary from country to country)
and the number of classes covered by the application.
All fees must be paid to WIPO in Swiss francs (CHF). The Madrid System also allows you to extend your protection into other countries either at the time of filing your initial application or at a later date, this is subject to further fees. Before applying, you can estimate the fees payable by using the fee calculator available on WIPO's website.
European Union
The EUIPO follows a ‘pay-per-class' fee system. The cost of one class is €850, an additional €50 fee for the second class and €150 for third and all subsequent classes. Other related EUIPO services such as trademark cancellation, appeal, or opposition will require additional costs.
Applicants wishing to apply for a trademark in multiple jurisdictions may find filing an application for an International Registration more advantageous both in terms of time and costs over filing individual national applications. Finding local attorneys to navigate through national trademark laws can be a lengthy and expensive process. A way to simplify the process would be to work with an experienced trademark law firm that offers international representation at local intellectual property offices.
If you require any help with your trademark application, need advice about the EU or the Madrid System filing process, or would simply like to receive professional advice on international trademark registration, don’t hesitate to schedule a free consultation with us. We have already registered over 4,800 trademarks, providing professional end-to-end service to cover all your trademark needs. Regardless of where you come from, our team of trademark attorneys is ready to represent you across the globe.
