What does the international registration of a trademark give?

Entering the market in a new country is an important event, which shows that the manufacturer has a good reputation and its goods/services are in wide demand. However, you shouldn’t rule out the possibility that the company’s brand in this country may be used by other less conscientious persons. And this can cause not only damage to income or profit, but also spoil the good reputation of the company.

That is why before “conquesting” the market of a new country you should also think about the protection of the company’s brand, in particular, its trademark.

Please note! The company’s rights to the trademark may be protected only in the country of its registration. Therefore, when you enter the market of a new country/countries, international trademark registration in that country will most likely be required.

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Ways to register a trademark

There are three ways to register a trademark:

1. National registration, which implies applying for trademark registration only in the selected country. In this case, registration is carried out in accordance with the legislation of this country.

This method may be convenient in cases when a company needs protection only in one foreign country, and there are no plans to extend protection to other countries.  

2. Regional registration, which involves obtaining trademark protection documents valid in several countries. The most common are:

  • Registration of the Benelux Trademark, which implies protection in Belgium, the Netherlands and Luxembourg;
  • the European Union Trademark or Community Trademark, which allows protecting the trademark in 28 EU countries, by filing an application with the Office for Harmonization in the Internal Market in one language and paying a single fee. It should be noted that a company may be rejected trademark registration if there is a ground for rejection in at least one of the EU countries;
  • - Trademark registration in African countries (ARIPO Trademark and OAPI Trademark) provides an opportunity to obtain trademark protection in several countries at the same time, by filing an application with one of these organizations.

3. International trademark registration according to the Madrid system, which provides an opportunity to obtain trademark protection documents in the countries of the Madrid Treaty and/or Madrid Protocol chosen by the company.

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Procedure for the International Registration of a Trademark under the Madrid System

If you intend to sell your goods in countries that are listed under the Madrid Treaty, which is a very advantageous field of action, you will need to follow all the stages of the procedure.

For international registration of the trademark, the company will need:

1. To obtain a certificate of TM registration in one of the member countries of the Madrid system, particularly in Ukraine, or at least apply for registration of such trademark;

At the same time, it is more appropriate to obtain a certificate, because at the stage of examination, registration allows you to identify possible risks of rejection of international registration, and to eliminate them in one way or another. 

The period for obtaining a trademark certificate is 1.5 - 2 years. Of course, the lawyers of our company can reduce the period by quickly preparing all necessary documents, as well as supporting the procedure of accelerated trademark registration. But it is important to consider all the deadlines in advance, and not to delay the start of the procedure.

  • 2. To file an application with the WIPO through the national patent office. Such an application must specify the countries in which legal protection for the trademark is planned to be obtained;
  • 3. To pay the necessary fees in one currency (Swiss Francs). The fee depends on the number of countries for which trademark registration is applied.

Our lawyers will help you calculate the amount of fees and period of the procedure in advance.

After a number of examinations, the WIPO independently sends materials for trademark registration in the desired countries. If as a result of national examinations, there are no grounds for rejection of registration, the trademark is considered to be registered in each of these countries, and the appropriate information is entered into the database.

The validity period of trademark registration in each country is 10 years from the date of filing the application with the national patent office (before applying to the WIPO) or from the priority date. This period may be extended for 10 years an unlimited number of times.

Please note! If the trademark is not used in the claimed country within 5 years, there is a risk of cancellation of registration in such country.

In this case, before choosing the method of trademark registration in another country (countries), it is necessary to take into account the peculiarities of national legislation, as well as possible risks of rejection of trademark registration in each of such states. 

If you want to enter the international market and protect your brand, don’t hesitate to contact us. We will help you to undergo the international registration of your trademark under the Madrid system, as well as help to solve any other problems associated with brand protection.

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Publication date: 07/09/2020

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