Trademark Law

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

By Moeller IP Team.

Knowing how to register an 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.

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.)

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).

Steps of the Trademark Registration: 

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.

Trademark 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.

Register an International Trademark: 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.

INPI Resolution No. 123/2019

By INPI Argentina

Moeller IP Advisors kindly informs to clients and friends that on May 27, 2019, the INPI Resolution No. 123/2019 was published, clarifying the recent modifications of our Trademark Law and its regulatory decree.

By this Resolution, the following is determined:  

1. Multiclass applications are not allowed. Trademark applications should be filed indicating only one class of the Nice Classification.
2. The obligation of filing a Declaration of Use falls only upon trademarks and trademark renewals granted as of January 12, 2013.-
3. A grace period of up until January 12, 2020 is stablished to comply with the submission of the Declaration of Use for trademarks and trademark renewals granted between January 12, 2013 and January 12, 2014.- Further information regarding the Declaration of Use may be found
4. Trademark renewal applications may be filed as from 6 months prior to the expiration date and up to 6 additional months from said date.
5. The notification system of our TM Office remains the same until further regulation is issued regarding electronic notifications.
6. Two extension of term of 10 and 5 days is automatically granted to the ordinary 30 days term for replying to an Official Action provided that the corresponding fee is duly paid.

Important information regarding Declaration of Use in Argentina

Filing of Declaration of Use mandatory. Term

The obligation of filing a Declaration of Use (DOU) falls only upon trademarks and trademark renewals granted as of January 12, 2013.- The DOU should be filed as from the 5^th anniversary of validity up until the 6^th anniversary of validity, together with the payment of the corresponding fee.

Grace period for filing Declaration of Use

A grace period of up to January 12, 2020 is stablished to comply with the submission of the DOU for trademarks and trademark renewals granted between January 12, 2013 and January 12, 2014.-

If the DOU is not submitted in due time, it could be later on filed provided that an additional fee is paid or each year of delay.

Proof of use

The submission of proof of use is not required. Filing of the DOU, executed by Moeller IP in representation of their clients, is sufficient.

Use of marks

The mark that was not used in the first 5 years becomes vulnerable to cancellation due to lack of use. However, the mark would not be lost unless the cancellation is been declared at the request of a third party. The subsequent use regularizes the use situation of the mark.

If the mark is used only for some products in the class, the products that were not used would be vulnerable due to lack of use. However, this would not affect the validity of the registration for all the products it protects unless there is a cancellation request filed by a third party.

If the mark is used for products or services in other classes of the Nice Classification, this use would suffice to preserve the validity of a registration provided that said products or services are related to the class in question. The same goes in case the mark is used to designate activities related to the products or services protected by the registration.

We hope this information is clarifying and Moeller’s team remains available for any information or clarifications you may need. If you have any questions please reach out to us via trademarks@moellerip.com

Source: http://www.inpi.gob.ar/