International trademark registration
To register an international trademark it is necessary to have filed an application for the registration of a Spanish trademark or a European Union trademark.
International trademark registration is carried out on the basis of an international agreement, signed by numerous 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) can apply to register an international trademark with the World Intellectual Property Organisation (WIPO) for the countries of interest.
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.
There are different types of elements that can be registered as an international trademark: the most classic, word marks, figurative marks and figurative marks with verbal elements.
Other types of trade marks that can be protected are:
- Sound, which consists of the right of protection granted to a melody, sound or other type of sound effect.
- Shape, which consists of the peculiar outward appearance, format, or workmanship of an image.
- Position, which is the specific manner in which the mark is placed or featured on the product.
- Pattern, which consists exclusively of a set of elements that are repeated periodically.
- Scent, which consists of the particular formula that is under a flagrance or odour, movement mark, which consists of, or includes, a movement or change in the position of the elements of a mark.
- Colour, consisting of the colour itself characteristic for a category of goods or services.
- Multimedia, which consists of or includes a combination of images and sound.
- Hologram, a new category of mark (as of 1 October 2017). Hologram marks are composed of elements with holographic characteristics.
After filing, the mark is examined by the national offices of the territory to which it extends and then published in the relevant gazette.
From the date of publication, according to the practice of the national office, a corresponding period of months elapses 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 Organisation (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 on filing an international trademark, please contact us.