International trademark

Procedure for registering an international trademark

On the basis of a prior national or EU trademark registration, it is possible to register the same trademark in one or more of the states party to the Madrid Agreement and the Madrid Protocol through a single procedure set up by the World Intellectual Property Organization (WIPO) based in Geneva.

The procedure for registering an international trademark is carried out by filing a single registration application with WIPO. The registration fees must be paid to WIPO, which carries out a formal examination of the trademark registration application and, if granted, issues a registration certificate and forwards the registration to the individual national offices of the designated countries.

Save for refusals by the competent offices or oppositions by third parties, the trademark is deemed to be registered in all the indicated countries after 12 to 18 months. In the event of a refusal or challenge in one or more countries, local examination phases are opened, which must be handled with the assistance of a local correspondent and which may lead to registration of the trademark as requested, with possible limitations (of entire classes or of individual goods or services) or to a definitive refusal. It is therefore possible for an international registration to differ from one country to another.

The international registration application must necessarily be based on a prior national or EU registration application. At the time of filing, it is possible to claim the priority of a previous national or EU trademark application within 6 months of the filing date of that application.

Once the international registration has been granted, renewals, total amendments and/or the recording of annotations are managed centrally by WIPO.

The international registration depends on the national or European Union (EUTM) registration

The international registration remains dependent on the basic national trademark or European Union trademark for a period of 5 years from the registration date. If, during the "dependency period", the national or EUTM registration is cancelled or invalidated, the international registration undergoes the same changes. At the end of the five-year period, the international registration becomes independent.

It is possible to apply for an international trademark claiming only part of the goods and/or services of the basic national trademark or EUTM. It is not, however, possible to amend the international trademark with respect to the basic trademark, nor to add classes of goods and/or services. The international trademark must therefore be identical to the basic trademark and claim the same classes of goods and/or services, or fewer.

Holder of an international registration

Those who may apply for the international registration of a trademark are natural or legal persons holding the nationality of, or resident in, one of the member states of the Madrid Agreement or the Madrid Protocol, or those who have a real and effective place of business (manufacturing or commercial) in one of these states.

Choosing the states in which to seek international registration

The international registration is not automatically valid in all the countries that have joined the Madrid Agreement or the Madrid Protocol; the states of interest must in fact be selected at the time the registration application is filed. An international registration may subsequently be extended (subsequent designation) to another member state of the Madrid Agreement or Protocol.

The international registration is therefore a "bundle" of national trademarks valid in the designated countries. The resulting national registrations are subject to the laws of the individual designated states. If an international registration is cancelled in a given country, it continues to be valid in the other designated countries: the invalidity is limited to that country alone. As it is a bundle of national registrations, it is possible to assign to third parties only some of the registrations forming part of the international registration.

Examination of the international registration application

WIPO carries out only the formal examination of the international registration application and, if it grants it, issues a registration certificate which it then forwards to the offices responsible for national trademark registration in each country designated by the applicant. Depending on the designated state, further examinations of registrability and/or novelty are carried out, which may also lead to local refusal of the registration. Some countries notify the refusal to the holder and to WIPO, others only to the holder. WIPO registration certificates are therefore not always correctly updated.

Oppositions to the international registration of a trademark

The granting of an international registration does not rule out a possible infringement of earlier third-party rights. The existence of such rights may lead to revocation of the registration in a country, or to limitation of the classes of goods and/or services claimed.

Holders of earlier rights may start opposition proceedings against the granting of the international registration in the territory of the state where they enjoy earlier rights. There is no possibility of opposing the international registration as such. The conduct of the procedure and the actual involvement of the parties follow the relevant national legislation.

The international registration is tied to the "basic" trademark registration for 5 years. Therefore, if the basic trademark registration lapses before the end of this period, the international registration also lapses. To overcome this problem, it is possible to convert the international registration into individual national registration applications in the designated countries.

Cost of registering an international trademark

The cost of an international registration varies according to the office of origin, the number of states designated in the registration application, the number of classes of goods and services for which the trademark is to be registered and the graphic representation of the trademark itself (in colour or greyscale).

An estimate can be obtained for an international trademark application for the countries party to the Madrid Agreement and/or the Madrid Protocol on the WIPO website, where the individual fee for each country designated in the application is given.

On top of the filing fees, the fees of a lawyer or trademark attorney for advisory services must be added, which may include:
- the preliminary analysis of the trademark's registrability;
- the search and assessment of prior rights;
- the selection of the classes of services and/or goods for which the trademark is to be registered;
- the definition of the territorial scope of protection;
- the filing activities and uploading into the deadline management system;
- the response to any objections from the office at the time of registration;
- assistance in the event of oppositions or invalidity actions;
- the drafting of coexistence agreements.

The international trademark lasts 10 years and can be renewed for further ten-year periods without limit.