In today’s global market, brand protection becomes a crucial element of business success. Therefore, we often receive inquiries about a trademark registration worldwide.
Current regulations do not allow for trademark registration in the whole World. However, there is a system enabling the application for trademark protection in up to 114 jurisdictions (and 130 countries) with a single application. This system is called the Madrid System, facilitating international trademark registration.
The Madrid System is based on the so-called Madrid Protocol, which is an international agreement. Its full name is the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, signed in Madrid on June 27, 1989 . See the list of countries that are parties to the Madrid Protocol – where you can apply for your trademark protection by means of an international registration.
International trademark registration enables the registration of a single trademark in multiple countries simultaneously, significantly facilitating the brand protection process in the global market. It ensures a unified process for trademark registration across different jurisdictions, streamlining the protection of intellectual property rights. The organization responsible for international trademark registration is the World Intellectual Property Organization (WIPO).
The process of registering a trademark with the WIPO relies on an existing national or regional application, such as a previous application for a trademark with the Polish Patent Office or the EUIPO. This means that within the Madrid system, only a mark previously filed or registered, known as a basic mark, can be registered internationally. The application for international registration of a trademark must include the identical mark and an identical or narrower list of goods and services as in the basic mark. Additionally, the application must specify the countries where the mark is to be protected.
The application for international registration of a trademark is submitted to the office where the base mark is filed or registered. For a Polish basic trademark, the application is filed with the Polish Patent Office, and for a EU trademark, it’s filed with the EUIPO.
Within 3 months of receiving the application, the receiving office forwards it to the WIPO’s International Bureau in Geneva for verification. If WIPO has no formal objections, the mark is registered in the WIPO’s International Register and the registration information is published in the WIPO Gazette of International Marks. WIPO issues a trademark registration certificate.
Note: Registering a trademark register in the WIPO’s International Register and obtaining a registration certificate does not automatically provide trademark protection in selected countries.
After registration, WIPO notifies all designated offices of countries or regions (e.g., the EU) indicated in the application. Each office examines the trademark registration application according to its own regulations and decides whether to recognize protection of the mark or refuse it. Information about the decision is then communicated to WIPO, which informs the Applicant.
A designated office may refuse to recognize the protection of a trademark, either “ex officio” (based on local legal regulations) or due to opposition from a third party. In case of such refusal, the office generally sets a deadline for the Applicant to defend the trademark. To defend the mark, one must act through a local representative authorized to appear before the office, incurring additional costs.
According to the provisions of the Madrid Protocol, the offices of the designated countries and regions indicated in the application for international registration have 18 months to recognize trademark protection or issue a refusal of protection.
The trademark protection lasts for 10 years from the date of registration. Three months before the expiration of the current protection period, this protection can be extended for another 10 years, by paying an appropriate fee.
International trademark protection with the WIPO entails relatively high official fees. However, it’s important to note that these fees cover 10 years of trademark protection in all the countries indicated in the application. It’s also advantageous that such an application can be handled by a single law firm, eliminating the need to work with firms in individual jurisdictions – provided the process is smooth. Therefore, the costs of an international trademark registration designating several countries are likely to be lower than the costs of handling several separate national filings in those countries.
The amount of official fees depends on the type of mark (whether it’s a word mark or a color device mark), the number of Nice classes, and the number of countries where trademark protection is sought.
The trademark registration process with the WIPO can be complex and time-consuming, so it’s advisable to seek assistance from a professional law firm specializing in intellectual property protection. This ensures the highest level of trademark protection at the international level.
For inquiries about international trademark registration, feel free to contact us.