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INTERNATIONAL TRADE MARKS
The qualified Trade Mark attorneys at Albright IP can provide you with expert international trademark advice and guidance, and represent you before the World Intellectual Property Organization (WIPO). Albright IP also has an extensive network of foreign attorney contacts, providing cost-effective services for trade marks all over the world.
INTERNATIONAL TRADEMARK APPLICATION PROCEDURE
If trade mark registration is needed in a number of countries, you have two options:
- To file national trade mark applications (‘direct filings’) in each of your countries of interest; and/or
- To file for international (Madrid Protocol) trade mark registration, designating particular countries of importance.
The following information focusses mainly on the Madrid Protocol route for obtaining overseas trade mark protection.
What is the Madrid Protocol system and why use it?
The international trademark registration system (the Madrid Protocol) allows for a single trade mark application to be filed, designating up to 97 territories (as of March 2016).
The main benefit of the Madrid Protocol Registration is that is it is administered centrally, through the World Intellectual Property Office (WIPO), which (in most cases) avoids the need to engage local attorneys in each state, reducing costs.
A further benefit of the international trade mark registration system is that additional countries can be added at a later date, allowing you to administer your International Portfolio as easily and as cost efficiently as possible.
What countries are available via the Madrid Protocol?
Many countries across the world, including many of those in Europe, Africa and Asia, are party to the Madrid Protocol. An abbreviated list of Madrid Protocol countries is provided below, listing those which are often chosen for trade mark protection:
- Australia
- Austria
- Belgium
- China
- Czech Republic
- Denmark
- Egypt
- European Union
- Finland
- France
- Germany
- Greece
- Iceland
- India
- Ireland
- Israel
- Italy
- Japan
- Kenya
- Mexico
- Monaco
- Morocco
- Netherlands
- New Zealand
- Norway
- Philippines
- Poland
- Portugal
- Romania
- Russia
- Serbia
- Singapore
- Slovakia
- Slovenia
- South Korea
- Spain
- Sweden
- Switzerland
- Syria
- Tunisia
- Turkey
- Ukraine
- UK
- USA
- Viet Nam
For a full list of the countries available via the Madrid Protocol, please see this PDF.
What happens when I’m ready to file an application?
We file Madrid Protocol applications via the WIPO’s online filing system. In a straightforward case, the international trade mark application procedure usually takes around 12 to 18 months.
Please explore the following sections for further details of the Madrid Protocol application procedure.
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Filing your application
In order to file a Madrid Protocol Application you must meet the criteria to be an Applicant. You must be either a UK national or resident, or a UK company, or a company with a “real and effective place of business” in the United Kingdom.
The Applicant must also have a UK or European Union trade mark application/registration for the same trade mark and corresponding or broader goods/services. This is called the “home” application or registration. If this “home” registration is less than 6 months old, it may also be possible to use it to claim “priority”, that is backdate the Application to the date of earliest filing, essentially extending your protection by up to 6 months.
Albright IP file Madrid Protocol Registrations via the United Kingdom Intellectual Property Office (UK IPO) or European Union Intellectual Property Office (EUIPO).
The UK IPO/EUIPO forwards the newly filed Madrid Protocol Registration to the World Intellectual Property Office (WIPO) in Geneva, where the registration is examined for compliance with formalities and classification.
For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified trade mark attorneys.
Publication and International Registration
Before publication, the World Intellectual Property Office (WIPO) examines Madrid Protocol applications to ensure that certain formal requirements are met before international registration.
Following the formalities examination, the Madrid Protocol Registration is published in the Official Gazette and the Registration Certificate issued. After this, the trade mark Offices in the designated countries have the opportunity to examine and potentially object to the trade mark registration in respect of their country, as explained further in the next section.
For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified trade mark attorneys.
National Phase Examination
After examination, WIPO sends the international trade mark registration to the national trade mark offices in each of the designated countries. The Application is then treated like a national trade mark application and is examined according to the relevant national laws.
Each national trade mark office has a period of up to 18 months to notify WIPO of any examination objections and/or the filing of third party opposition. If they do not complete their examination prior to the 18 month deadline, or if the Application is still vulnerable to third party opposition after the 18 month deadline, the national trade mark office must notify WIPO.
If objection/opposition is encountered, local Attorneys have to be appointed in the country concerned.
For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified trade mark attorneys.
Renewal
The Madrid Protocol Registration can remain in force indefinitely, subject to the trade mark being used in relation to the goods/services for which it is registered, and the timely payment of renewal fees at 10 yearly intervals.
It is important to remember that certain countries covered by the Madrid Protocol have special requirements following registration. For example, the USA requires that a Statement of Use is filed between the fifth and sixth year following registration. It is important that all these deadlines are monitored as failure to submit the correct documentation can mean you lose your rights. Albright IP ensures that all of these deadlines are monitored to ensure your rights can be maintained.
For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified trade mark attorneys.
Trade Mark Law - Legal Texts
Through our qualified and experienced Trade Mark attorneys, and our highly capable network of foreign attorneys, Albright IP can fully and proactively protect your brand, giving you the trade mark rights to secure your market or to obtain lucrative licence and assignment deals.
What if I need trade mark protection for a country which is not available via the Madrid Protocol?
National trade mark applications can be filed instead of, or in addition to, a Madrid Protocol application. If you wish to file foreign national trade mark applications, Albright IP will work with a carefully selected network of experienced, trusted and cost effective local trade mark attorneys to ensure that your trade mark application meets local filing requirements and to try and prosecute your trade mark application through to registration.
Local trade mark filing and registrability requirements vary between countries and hence, we prefer to seek local advice on a case-by-case basis. For example, Canada does not operate a classification system and therefore, the Applicant does not have to specify Class numbers on filing, just a list of goods and services.
In some countries, it is not possible to file multi-Class trade mark applications and instead, separate trade mark applications have to be filed for each Class of goods or services, for example, in China, the UAE and Brazil. Some countries do not conduct a relative grounds examination for conflict with earlier trade mark applications, for example, in Germany, which increases the importance of vigilance on the part of trade mark owners via watch services. Some countries also have differing publication and opposition periods – for example, in the USA the opposition period lasts for one month, whilst it lasts for two months in Japan and three months in Germany.
If you are interested in securing trade mark protection in specific countries overseas, please email us directly here or call +44 (0) 1242 691 801 to speak to a qualified British and European Trade Mark attorney. Our Trade Mark attorneys will be pleased to advise you further regarding procedural requirements and filing strategy.