International Trademark Registration
The international trademark registration is made on the basis of an international agreement, signed by many countries, through a unified procedure. It is governed by the Paris Union Convention and the Madrid Agreement (Agreement and Protocol).
International trademark registration can only take place in certain countries, since not all trademarks can access the international trademark system, but only those trademarks registered in the countries that are members of the Madrid System.
The Madrid System currently has 115 members and covers 131 countries. These members account for over 80% of world trade, and will expand as membership grows, whether as part of the arrangement, the protocol or both. A trademark can also be applied for protection in the European Union through this route.
The Madrid System is a solution for trademark owners to obtain and maintain protection in multiple countries, whether they are small start-ups or large multinationals. Given the importance of protecting distinctive signs and trademarks in today’s world, it is becoming increasingly important to extend trademark protection to multiple countries, which is very useful for businesses. However, if it is not done correctly, it can become a tedious procedure, so it is essential to have the advice of lawyers specialized in international trademark registration.
What do I have to do to register an international trademark?
In order to register an international trademark, it is necessary to have filed an application for registration of a Spanish trademark or a European Union trademark. Letslaw recommends that this procedure be carried out through our lawyers specialized in international trademark registration.
The owner of a trademark in the country of origin (for example, Spain or the European Union) can apply to register an international trademark with the World Intellectual Property Organization (WIPO) for the countries of interest.
The World Intellectual Property Organization (WIPO) is the global forum for intellectual property services, policy, information and cooperation.
It is important to note that before filing an international trademark application, you must register your trademark or apply for registration with your national trademark office, which will be your “base mark”. This basic mark will serve as the starting point for the international registration.
If you have connections with several Madrid System member countries (for example, if you are a citizen of Mexico and reside in the United States), you may choose one of those countries as your office of origin, provided that you have a basic mark registered with the corresponding office.
After filing the international trademark, if all legal requirements are met, the trademark is registered. This type of trademark lasts for 10 years from its registration (unlike the Spanish trademark and the European Union trademark which last for 10 years from its filing date) and is renewable for equal periods of 10 years.
What types of trademarks exist?
There are different types of trademarks that can be registered, being the usual differentiation between word marks (those that only include words, letters, numbers, or combinations of the above) and figurative marks (those that are represented by drawings and/or logos alone or together with words). However, there are other types of trademarks that may be subject to registration, which can be consulted in the following link: types of trademarks.
After the trademark is filed, it is examined by the national offices of the territory to which it extends and then published in the corresponding bulletin.
From the date of publication the corresponding months will elapse, according to the practice of the national office, within which interested third parties may file an opposition to the registration of the mark. If this period elapses without opposition, the mark will be registered by the World Intellectual Property Organization (WIPO) in Geneva.
Both the application to register an international trademark and the international trademark registration give the holder the right to access customs protection or to request the seizure of counterfeit goods.
For more information about the registration of an international trademark, you can contact Letslaw, where we have lawyers who are experts in trademark registration before WIPO / WIPO.