Having read the previous information then you will have already realised that trade marks are purely territorial in nature. There is no such thing as an "international trade mark" (a single registration that is valid in every country of the world). Generally, if you want or need the advantages and benefits brought about by the registration of a trade mark in a particular territory or country, you need to register the trade mark in that territory (the major exception to this is the Community trade mark)
There are two ways of obtaining a trade mark in other countries:
- making an individual application in each of the countries; or
- using the Madrid system (WIPO) of international registration of trade marks.
The International System
The Madrid system of international registration of marks is applicable among the countries party to the Madrid Agreement and the Madrid Protocol. However, this system is not direct: in order to use the system, an applicant must have a registered trade mark or a trade mark application (the “basic application”) in one of the countries party to the Agreement or party to the Protocol. In other words, the objective of the international system is to extend the protection of an existing trade mark, to other countries in which the applicant desires to protect his trade mark. This system does not extend to all countries recognised by the United Nations. A list of the countries party to the Agreement or the Protocol can be found at the WIPO site (http://www.wipo.int/madrid/en/).
This system gives a trade mark owner the opportunity to have his mark protected in several countries by simply filing one application with a single Office, in one language, with one set of fees in one currency (Swiss francs). The international application is handled – at the first stage – by the so called “Office of Origin”, which is the trade mark Office of the Contracting Party in which the “basic application” (as described above) has been applied for or registered. The application is sent to WIPO by the Office of Origin. As such this streamlining of the red tape cuts down on the costs for such applications of our clients. The basic fee (for the first 3 classes) for making an international application is 653 Swiss Francs (SF 903 in the case of colour marks). A supplementary fee of SF 100 is added for each additional class (in addition to 3 classes). To these figures one needs to add a complementary fee of SF 100 for the designation of each contracting party (the complementary fee of SF 100 may be replaced by the so called “individual fee”, which is only applicable in certain countries (and it is different in each country where that individual fee exists). Brand Protect LLP charges £350 (plus £50 for each class in addition to the first 3 classes) to prepare and file the application. Registration incurs further costs (this figure depends on the number of classes and the selected countries).
All applications for international marks have to be made in either English, French or Spanish.
An international registration produces the same results as an application for registration of the mark made in each of the countries designated by the applicant. If protection is not refused by the Trade Mark Office of a designated country within a specified period (12 or 18 months), the protection of the mark is the same as if it had been registered directly in that country. The Madrid System also simplifies the subsequent management of the mark, since it is possible to record subsequent changes (such as a change in ownership or a change in the name or address of the holder) or to renew the registration through a simple single procedural step with the International Bureau of WIPO. Further countries may be designated subsequently.
A major drawback of the international system is that the international mark remains open to "central attack" for the first 5 years of its registration in its home country. "Central attack" means that if the mark used as a "basic application" is revoked or cancelled in its home territory, then the international registration is revoked or cancelled to that extent.
All this is complicated. At BRAND PROTECT LLP we won't charge you the earth for our services.