Madrid System

How to Register an International Trademark: 3 Step Guide and other Practical Concerns in 2020

By Moeller IP Team.

Knowing how to register your international trademark is necessary if you operate internationally and want to protect your brand. It is the best way to ensure that the time you spent creating your brand image does not go to waste or copied by others. The protection of international trademarks is governed by the Madrid System, composed by the Madrid Agreement and the Madrid Protocol. By following the Madrid System, you can protect your IP across the 122 countries that currently agree to mutually protect each other’s nationals’ trademarks – these countries are known as the Madrid Union. In this article, you will find out how to register an International Trademark, the requirements for filing, the duration, and other practical concerns to be considered.

If you need help or advice in the process, our trademark attorney can help.

Requirements to register an International Trademark

The requirements for an international trademark are essentially the same as for national filings. In fact, to receive international protection of your brand, you must first go through one of the national Trademark Offices of a Contracting State to the Madrid System, as we will see later on. First though, a quick recap of what can be protected under this system:

• Logos
• Names
• Images
• Colours
• Patterns
• Shapes
• Packaging of goods
• Sounds
• Smells (with specific requirements which shall not be explored here. Find out more here.)

However, it should be noted that in order to file for international protection, you must be either:

1. A citizen of a Contracting State to the Madrid System
2. A legal entity resident in a Contracting State
3. A legal entity with a real and effective industrial or commercial establishment in a Contracting State

Scope and duration of IP protection

An International Trademark will protect your brand for 10 years. After this 10-year period, you can file for a renewal, details of which will be covered later in the section titled “Follow up: IP Monitoring and TM Renewal”.

The number of countries in which it will be protected will depend entirely on your filing and where you decide to invest resources in brand protection. You can always request to add more countries to the trademark at a later date through a Territorial Expansion Application, so don’t worry if you want to start small and increase protection over time. This will cost 300 Swiss francs (CHF) plus 100 CHF per additional country. There can also be a variable element to this fee. To be sure, check out WIPO’s Fee Calculator.

How can I apply for an International Trademark?

First and foremost, to register for a trademark internationally, you must apply to a national trademark office pertaining to a Contracting State. You do not apply directly to WIPO (World Intellectual Property Organization).

The registration procedure can be separated into 3 steps:

1. Apply to the appropriate National Trademark Office
2. Examination of trademark application by the WIPO
3. Examination of trademark application by National Trademark Office of each requested country

Step 1: Apply to the appropriate National Trademark Office

The first step of the process entails applying to the right National Trademark Office for you. This is relatively simple to find out through a quick Google search. Below is a list of a few of the national offices with links to their websites.

• UK: IPO (Intellectual Property Office)
• Germany: DPMA (Deutsches Patent- und Markenamt)
• France: INPI (Institut National de la Propriété Industrielle)
• Spain: OEPM (Oficina Española de Patentes y Marcas)
• Italy: UIBM (Ufficio Italiano Brevetti e Marchi)

In applying to this national office, you will have to fill in the Form MM2. Once filed, the national office will examine the application. If there are no defects to the filing, they will then pass your application to the WIPO for further examination at an international level. This will usually take up to 2 months.

Step 2: Examination of trademark application by the WIPO

Once approved by the national office, the WIPO will then take their turn to examine your application. This examination is mainly to ensure that there are no defects in the application and that you are a legitimate applicant that fulfills the requirements. Upon approval, it will be published in the WIPO’s International Trademark Gazette, and the application will then be forwarded to the national offices of every requested country.

Step 3: Examination of trademark application by the National Trademark Office of each requested country

The international trademark registration procedure essentially has the same effect as if you were to apply to register a national trademark in all of the countries’ requested. Therefore, at this stage, the relevant national trademark offices will examine your application for any faults and, importantly, any potential IP conflicts with already registered trademarks in that country.

Usually, an important part of the national procedure is to publish the application in their national gazette or bulletin and allow a time period for other trademark holders to voice their concerns. If there are any conflicts with pre-registered trademarks, the national office has one year to communicate a notification of provisional refusal – this time period can occasionally be extended to 18 months or longer.

If there is no notification of such a provisional refusal, the trademark is granted and your brand is now officially protected in that country. Congratulations!

Follow up: IP Monitoring and TM renewal

IP Monitoring

Now that you officially have a registered international trademark, you might feel like the job is over. That is unfortunately not the case. There are many companies and individuals out there who might want to copy your brand and use it for their own personal or commercial gain.

Therefore, to ensure that your hard work has not been for nothing, it is of utmost importance to establish an IP monitoring program. Fortunately, we have partnered with [insert partner’s name here with a link] so that you can rest easy knowing that you are protecting your trademark and your brand image.

TM Renewal

It is also essential to remember that your international trademark is only protected for 10 years. Once this time period has elapsed, you need to file for a renewal. The WIPO and the vast majority of national trademark offices do not send out automatic reminders, so you should either carefully manage this or hire a trustworthy IP lawyer to ensure that you don’t wake up to find that you have to start the procedure again.

Conclusion

Now that you know how to apply for an international trademark, protect your brand and monitor your IP, it should be noted that the actual process can take some time. Moreover, if there are mistakes in your application or a notification of provisional refusal is communicated to the WIPO or any national trademark office, that can further complicate matters and result in lengthy delays.

If you would feel safer hiring an attorney to take you through the whole procedure, you can contact us.

Brazil under WIPO’s Madrid Protocol

By Moeller IP Team. 

Dear Clients, Colleagues and Friends,

Moeller IP Advisors is happy to inform you that, for the first time, the Brazilian PTO has published, in its Official Bulletin, designations of International Registrations filed via the Madrid Protocol. This gives you the chance to not only file trademarks in the Brazilian national trademark office, but additionally enable the designation of your International Registrations through the WIPO’s Madrid System.

Sounds great, what’s the issue?
While the designation of a trademark application in Brazil has been made significantly easier, the Brazilian PTO has announced that any oppositions made against your trademark will not be published in the WIPO’s Gazette, but exclusively in the national trademark bulletin. This means that any trademark applications made through the Madrid System, and subject to oppositions by third parties, or an official rejection, will not be notified to the trademark holder via the WIPO Gazette but will have to be identified separately.

What’s our solution?
Moeller IP’s Brazil office will offer free monitoring of your trademark designations through the Madrid Protocol in Brazil and inform you of any activity. Any opposition or rejection against your (or your client’s) brand can additionally be handled by our experts on site.

Please feel free to contact us should you require more information.

Yours truly,

Moeller IP Advisors

China Becomes Top Filer of International Patents in 2019

By José Santacroce. Partner and Head of Patent Department.

The World Intellectual Property Organization (WIPO) published on 7 April 2020 a press release summarizing the main activities of the Organization in 2019.

The highlights of the above-mentioned press release are the following:

With 58,990 applications filed in 2019 via WIPO’s Patent Cooperation Treaty (PCT) System, China ended the United States (57,840 applications in 2019) reign as the biggest user of the PCT System, a position previously held by the U.S. each year since the PCT began operations in 1978.

International patent applications filed via the PCT grew by 5.2% (265,800 applications) in 2019, while international trademark applications via the Madrid System for the International Registration of Marks increased by 5.7% (64,400 applications). Protection for industrial designs via the Hague System for the International Registration of Industrial Designs saw a 10.4% growth (21,807 designs).

International patent system, Patent Cooperation Treaty (PCT)

In 2019, the top ten users of the PCT were: China (58,990 PCT applications), the U.S (57,840), Japan (52,660), Germany (19,353), Republic of Korea (19,085), France (7,934), United Kingdom (5,786), Switzerland (4,610), Sweden (4,185) and Netherlands (4,011).

Top PCT Applicants:

For the third consecutive year, China-based telecoms giant Huawei Technologies, with 4,411 published PCT applications, was the top corporate filer in 2019. It was followed by:

• Mitsubishi Electric Corp. of Japan (2,661);
• Samsung Electronics of the Republic of Korea (2,334);
• Qualcomm Inc. of the U.S. (2,127);
• Guang Dong Oppo Mobile Telecommunications of China (1,927);
• Boe Technology Group of China (1,813);
• Ericsson of Sweden (1,698);
• Ping An Technology of China (1,691);
• Robert Bosch of Germany (1,687);
• LG Electronics of the Republic of Korea (1,646);
• LG Chem of the Republic of Korea (1,624);
• Panasonic of Japan (1,567);
• Sony (1,566);
• Hewlett-Packard of U.S. (1,507) and
• Microsoft of U.S. (1,370).

Top technologies:

Among fields of technology, computer technology (8.7% of total) accounted for the largest share of published PCT applications, followed by digital communication (7.7%), electrical machinery (7%), medical technology (6.9%) and measurement (4.7%). Among the top 10 technologies, semiconductors (+12%) and computer technology (+11.9%) were the fields with the highest rates of growth in 2019.

International trademark system (Madrid System)

U.S.-based applicants (10,087) filed the largest number of international trademark applications using WIPO’s Madrid System in 2019, followed by those located in Germany (7,700), China (6,339), France (4,437), Switzerland (3,729), United Kingdom (3,460), Japan (3,160), Italy (2,649), Australia (2,094) and Turkey (1,980).

Top Madrid filers:

L’Oréal of France with 189 applications headed the list of top filers, followed by Novartis AG of Switzerland (135), Huawei Technologies of China (131), Nirsan Connect Private Limited of India (124), Rigo Trading of Luxembourg (103), Apple of U.S. (101), Shiseido of Japan (84), BMW of Germany (78), Henkel of Germany (77) and Richter Gedeon of Hungary (69).

Top classes:

The most-specified class in international applications – computers and electronics – accounted for 10.1% of the total, followed by services for business (8.3%) and technological services (6.7%). Among the top 10 classes, pharmaceuticals and other preparations for medical purposes (+12.4%), and services in the area of education, training, entertainment, sporting and cultural activities (+9.6%) saw the fastest growth.

International design system (Hague System)

The number of designs contained in applications filed under the Hague System grew by 10.4% in 2019, reaching a record 21,807 designs.

Germany, with 4,487 designs, continued to be the largest user of the international design system. The Republic of Korea (2,736 designs) surpassed Switzerland (2,178) to become the second largest users of the Hague System in 2019. Italy and the Netherlands ranked fourth and fifth, respectively, with 1,994 and 1,376 designs.

Top Hague filers:

Samsung Electronics of the Republic of Korea with 929 designs in published registrations headed the list of top filers, followed by Fonkel Meubel marketing of the Netherlands (859), LG Electronics of the Republic of Korea (598), Volkswagen of Germany (536) and Procter & Gamble of the U.S. (410).

Top fields:

Designs related to recording and communication equipment (13.6%) accounted for the largest share of total designs in 2019 followed by furnishing (10.1%); means of transport (9.4%); packages and containers (6.4%); and lighting apparatus (6.2%). Among the top 10 classes, recording and communication equipment (+46.4%) and clothing (+35.1) saw the fastest growth.

Source: www.wipo.org