Want to protect your trademark in several countries? In addition to national applications and an EU trademark application, you can file an international trademark application through the Madrid System. The system covers 133 countries, including China, the United States, Japan, Brazil, and the United Kingdom. You can also designate the European Union as a whole. You choose the participating countries or regions where you want to seek protection.
You need a basic application or registration, such as a Benelux or EU trademark. You must also have a connection, through nationality, domicile, or a business establishment, with the country or region of the trademark office through which you file your international application.
If you file your international application within six months of your first trademark application, you may be able to claim the date of that first application, subject to the applicable conditions. This is called priority. The period runs from the filing date of that first application.
The WIPO certificate confirms the international registration. Whether your trademark receives protection, and for which goods and services, depends on the examination in each designated country or region.
A trademark office generally has 12 or 18 months to notify a provisional refusal, calculated from WIPO's notification to that office. A longer period may apply to opposition proceedings under certain conditions. A refusal may concern all or some of the goods and services. A refusal in one territory does not affect examination in the other designated territories.
We therefore monitor the status of your application in each country or region and assess what action is needed if an objection or opposition arises.
For the first five years from the international registration date, your international registration depends on your basic application or registration. If the basic mark ceases to have effect in whole or in part, this can also affect your international registration. This may also happen later if proceedings against your basic mark began within that five-year period.
Want to seek protection in additional countries or regions later? You can expand your international registration through a subsequent designation. The goods and services must already be included in your international registration. The newly designated trademark offices will assess protection under their own rules.
An international registration is valid for ten years and can be renewed for further ten-year periods. When renewing, you can choose the designated countries or regions for which you want to maintain the registration.
Want to find out which registration route suits your plans? Contact us for more information or a no-obligation consultation.
