Trademarks Legislation

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.

Amendments to the Trademarks Legislation

By Mariano Tabanera

Changes in the Trademark Legistation

Read on to know some amendments in the Trademark Legislation, which although they have not yet been effective it is important to take into account.

With the backdrop of the globalized marketplace in mind, the Mexican Government has recently approved a series of amendments to the IP Law, which will be effective as of August 10, 2018. There are several amendments in relation to trademarks that will change how we are used to working in this country: The very definition of what a trademark is has changed, and although the essence is still the same, it can now be constituted by any sign perceived by the senses that may identify or define a product or service. The text now allows for the registration of holographic signs, sounds and smells, which were previously barred from registration. Trade dress and certification mark registrations are also included in the new text.

Trademark Legistation – New amendments 

1- Declaration of Use 

A new requirement has been included, as a declaration of effective use will have to be filed during the third year of registration. If this is not done, the registration will expire. No extension is possible. This also applies for renewals: In order to renew a registration the use in at least one of the protected products in that registration will have to be declared.

It is important to highlight that only the registrations granted after the effective date of these amendments will be held to the obligation of filing a Declaration of Use.

Date of first use is required in the application. Failing or neglecting to do so will be considered as a declaration of no prior use. This cannot be amended.

2- Likelihood of confusion 

Perhaps one of the most relevant amendments is the fact that Consent Letters or Co-Existence Agreements will now be binding for the Examiners in cases of likelihood of confusion, even if the resemblance between the marks is very high. Although a bold move, we have yet to see how it is enacted.

3- New relevance of “Bad Faith”

Finally, a completely new relevance has been given to the concept of “bad faith,” allowing for objections and oppositions to applications based on the bad faith of the applicant. The amendments also include a revision of the grounds for cancellation of a mark based on bad faith, when there has been a commercial relation between the parties.

Conlusion of the changes in the Trademark Legislation

These are only some of the new amendments to the trademark legislation, which is not yet effective, and a Regulation for this new Law is still pending. Therefore, how it will be enacted and applied is yet to be seen. However, it is useful to have this in sight, in order to prepare clients for the new scenario.

If you need help registering a Trademark or you have questions about it do not hesitate to contact us. 

Source: http://dof.gob.mx/