International Trademark

INTERNATIONAL TRADEMARK

Registration of International IR Trademark procedure and costs - KTpatent.com

The International Trademark registration allows its users to obtain a worldwide protection of their signs and brands

by filing a single application for International TM registration with the World Intellectual Property Organization (WIPO).

The International TM registration procedure is also known as the Madrid System, which can acquire its users protection of their trademarks in all countries that participate in that system. The member states of the Madrid System form a “Madrid Union”. The Madrid Union currently has 104 members, covering 120 countries. These countries represent more than 80% of world trade.

Advantages of the International TM Registration

The International TM registration has several advantages for the owner of the mark. The application for International Trademark Registration is filed in one language – English, French or Spanish; payment of a single set of fees in one currency CHF; resulting in one registration; more countries can be added subsequently; subsequent changes of all kinds can be managed through a single procedure in very easy steps; trademark renewal is cheaper and easier to administer.

Thus, the international TM registration creates favorable conditions for quick and cheaper protection of brands abroad, compared to the cumbersome and long-lasting process of national registrations. The international TM procedure eliminates the obligation to file individual TM applications in each country of interest, where the different requirements of national legislation do not have to be met, at the same time reducing the costs of registering the marks, removing the translation requirements prescribed by each country, avoid the trademark attorney’s expenses in individual countries, it is not necessary to monitor the different terms of protection in a separate countries and related payments of numberless official fees in various currencies.

What is the effect of IR TM Registration?

From the date of the IR TM’s registration, the protection of the mark in each of the designated countries is the same as if the mark had been the subject to an application for registration filed directly with the national Trademark Office of that Contracting Party. Therefore, the IR registration results in a bundle of national trademark registrations.

An international registration is effective for 10 years. It may be renewed for further periods of 10 years on payment of the prescribed International trademark renewal fees.

Who can file application for IR TM Registration?

The Madrid system is a closed trademark filing system, which practically means that only TM applicants who are residents, nationals or have a place of business in at least one of all contracting states of the Madrid Union may file international trademark application. An international TM application may have several applicants, but at least one of them must be a resident of Madrid Union’s contracting state.

Important requirements

Of particular importance is the fact that before the application for international TM registration is filed, the same trademark must have already been applied for or registered in the country of origin, i.e. by national or regional TM. For instance, Bulgarian applicants for IR registration must initially either have registered Bulgarian Trademark or European Union (EU) Trademark or filed applications for Bulgarian Trademark Registration or European Union Trademark Registration. Without such application or registrations at the national or regional patent offices, the applicant cannot proceed further with the IR application.

Another important aspect, is that the IR TM application must be filed through the national or regional office of the country of origin of the earlier trademark. In the above example, the IR TM application must be filed either with the Bulgarian Patent Office (BPO) or European Union Intellectual Property Office (EUIPO) respectively.

THE PROCEDURE AND COSTS FOR REGISTERING AN INTERNATIONAL TRADEMARK:

* REMARKS: 1) This is an approximate time scale calculated as from the filing date; 2) Attorney fees are not included and all official fees are tentative

Basic Trademark application or registration

First and foremost, the applicants must have filed an application or have already registered national or regional trademark in their “home” IP offices, being it national or regional IP office. Where the applicants' “home” IP office is the Bulgarian Patent Office or EUIPO, then the applicant must have filed application or have registration for Bulgarian Trademark or European Union Trademark respectively. This first registration or application is known as the basic mark.

Filing the application for International Trademark Registration

Applicants then need to submit their international application through this same IP Office, which will certify and forward it to WIPO. In the above example, the applications for IR marks must be filed with the Bulgarian Patent Office or EUIPO respectively. It must contain, a reproduction of the mark (which must be identical with that in the basic registration or basic application) and a list of the goods and services for which protection is sought, classified in accordance with the International Classification of Goods and Services (Nice Classification). The Official basic fees due at the filing stage amount to 653 Swiss francs (CHF) or 903 Swiss francs (CHF) for a mark in color. Additional charges are also levied depending on the territories where you want to protect your mark, and how many classes of goods and services will be covered by your registration. Some home IP Offices charge a transmittal fee, like EUIPO which in their case is 300 EUR at present.

Formal examination by WIPO

3 MONTHS

The International Bureau checks if the international TM application complies with the requirements of the Madrid Systems' Regulations, including requirements relating to the indication of goods and services and their classification, and that the required fees have been paid. The applicant is informed of any irregularities, which must be remedied within three months, otherwise the application will be considered abandoned.

International TM Registration issued and published

Once approved that the international TM application complies with the applicable requirements, the mark is recorded in the International Trademark Register and published in the WIPO Gazette of International Marks. The International Bureau then send you a certificate of your international registration and notifies the IP Offices in all the territories where you wish to have your mark protected. The international TM date of registration shall bear the date of the day on which the national patent office received the application for international TM registration of step 2. However, the international trademark's fade and scope of protection are not know yet, as the mark shall be subject to substantive examination and decisions by the IP Offices in the territories in which you seek protection.

Substantive examination by National or Regional IP Offices

12 or 18 MONTHS

WIPO does not perform examination on collision of the IR trademark with earlier rights. For this reason, each IP Office of the territories where you want to protect your mark will evaluate the mark and make a decision within the applicable time limit (12 or 18 months) in accordance with their national law. The International TM registration may then totally or partially be refused for a specific country, but this does not affect the other countries in the registration. If no objections have been raised or they have been overcome, then IR trademark is accepted for the countries in the registration. It should be noted, that substantial expenses may occur during this stage due to the fact that each national or regional objection should be dealt with the national or regional IP office in question. Consequently, local Trademark Attorneys must be appointed in the majority jurisdictions and many official appeal and translation fees paid respectively.

IR Trademark renewal

EVERY 10 YEARS

The international registration of your mark is effective for 10 years. It may centrally be renewed with WIPO for further periods of 10 years on payment of the prescribed fees with effect in all the countries in the registration.

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International Trademark