Knowledge

Trade Marks

Is there an international trade mark?

Max Steinhausen

Business owners often wonder whether they can protect trade marks internationally and so secure their brands and logos globally without having to worry about competitors using their trade marks overseas without their consent. This article will shed some light on why international trade mark protection is an important consideration and how it can be achieved.

Why should I protect my trade mark internationally?

Protecting your trade mark internationally may increase opportunities for expansion outside of your core market, including franchising prospects and international business opportunities. If your business does not have an international presence yet but seeks to export, licence or set up contractors overseas in the future, international trade mark registration should be ensured. Protecting your goodwill and reputation in countries where your trade mark could be used in the future is paramount to prevent confusion in the marketplace.

How do I register a trade mark internationally?

Unfortunately, there is no such thing as one ‘global’ or ‘international’ trade mark registration. Trade marks are national rights and require individual applications for each jurisdiction where protection is sought. However, once a trade mark application has been filed in one country, it is possible to claim the filing date (so-called “priority date”) for subsequent applications in other countries within six months. This can be achieved by directly filing the trade mark in each country or by filing an ‘International Registration’ under the Madrid Protocol with the the World Intellectual Property Organization (WIPO).

How do I file an International Registration under the Madrid Protocol?

First, you must file your trade mark with your national trade mark office and your country must be a signatory to the Madrid Agreement or Madrid Protocol. Second, you must make an application for an International Registration under the Madrid Protocol with the World Intellectual Property Organization (WIPO) by designating all countries you wish to register your trade mark in. It is important to note though that each country will still examine, accept or reject your trade mark under its own national laws, timeframes and procedures.

How long does an International Registration last?

An International Registration lasts for 10 years from the date of filing the International Registration with the World Intellectual Property Organization (WIPO). The filing date is the date the International Registration has been processed by WIPO and filed with the selected national trade mark offices.

How much does an International Registration cost?

WIPO charges a basic application fee in the amount of CHF 653 per International Registration. In addition, there is a separate application fee for each country you select. The national fee is payable per trade mark class (product or service category) and differs from country to country. In addition, there may be fees for your agent or trade mark representative if you choose to engage a professional IP service firm.

Can I add more countries to an International Registration later?

Yes, WIPO allows you to add further countries to your International Registration by selecting so-called subsequent designations. A separate subsequent designation filing fee applies and you must also pay the national filing fee for each additional country you select.

How can I get help with filing an International Registration?

If you have any questions about filing an International Registration for your trade mark, please do not hesitate to contact us.

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