International trademark registration

International trademarks are not trademarks that are registrable worldwide, but only in the countries that are part of the Madrid System, which currently number 80, whether they are part of the Agreement, the Protocol or both.

A trademark may also be applied for protection in the European Union by this means.

The Madrid System is a solution for trademark owners to obtain and maintain protection in multiple countries. Whether you are a small start-up or a large multinational, the Madrid System can help you manage your trademark efficiently.

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 trademark of the European Union.

The international trademark registration is carried out 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).

The owner of a trademark in the country of origin (e.g., Spain or the European Union) may apply to register an international trademark with the World Intellectual Property Organization (OMPI) for the countries of interest.

The World Intellectual Property Organization (OMPI) 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 the mark or apply for its registration with the national trademark office, which will be your “base mark”. This base mark will serve as the starting point for the international registration.

If you have connections with several member countries of the Madrid System (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 type of trademarks can I register?

There are different types of elements that can be registered as an international trademark, the most classic ones are:

• Word marks are those that identify a product or service through a name. They can be formed by letters, numbers or several words, and can include orthographic signs. Some examples of word marks are NIKE, ZARA and LEVI’S, which consist of logos formed by letters in a single color and typography.
• Figurative marks combine visual elements, such as images, figures or drawings, with letters, words or numbers. They are a mixture of nominative (using only words) and innominate (based only on images) marks. An example of a mixed trademark is Sanborns or Lacoste, where a representative text is combined with an image or drawing, which gives them a unique and distinctive meaning. This combination facilitates the differentiation of these brands from other similar brands in the market

Other types of trademarks

• Sound mark, which consists of the right of protection granted to a melody, a sound or other type of sound effect. An example of this type would be the melody of Mercadona in its supermarkets.
• Trademark of Form, which consists of the peculiar outward appearance, format, or make of an image. As an example, we find the apple symbol to identify the Apple brand.
• Position Mark, which consists of the specific way in which the mark is placed or appears on the product.
• Pattern Mark, which consists exclusively of a set of elements that are repeated periodically.
• Olfactory Mark, which consists of the particular formula that is under a flagrance or odor. For example, the characteristic smell of Abercrombie & Fitch clothing stores.
• Motion Mark, which consists of or includes a movement or a change in the position of the elements of a mark.
• Color, which consists of the color itself characteristic for a category of goods or services. An example of this type of mark would be the color of Coca Cola which would be red or Twitter which would be blue
• Multimedia, which consists of or includes a combination of images and sound.
• Hologram, a new category of branding (as of October 1, 2017). Hologram marks are composed of elements with holographic features.

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 (OMPI) 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 by RSM, lawyers specialized in trademarks registration.