International Trademark

The term “International Trademark” refers to a simplified filing and registration system, which allows, with the filing of a single application, to obtain the registration of a trademark in multiple Countries Members of the so called Madrid System, mainly governed by two regulations: the Madrid Agreement and the Madrid Protocol.

Registration Procedure

The international trade mark is based on a registration or, under the Madrid Protocol, even simply on the basis of a trade mark application in the country of origin. Pursuant to the Madrid Agreement, the identification of the country of origin is carried out on the basis of following hierarchical scheme: Country member of the Agreement where the applicant has a permanent industrial or commercial establishment or, in the alternative, the Country member of the Agreement where the applicant is domiciled or, in the alternative, the Country member of the Agreement where the applicant holds its nationality. However, under the Madrid Protocol, those criteria have become alternative to each other. The Office of origin transmits the application to WIPO (World Intellectual Property Organization, based in Geneva, Switzerland), which carries out a formal examination. Subsequently, WIPO registers the trademark in the International Register and publishes it in the Official Gazette, then notifies the application to the Countries designated therein. The offices of the designated Countries carry out a substantive examination of the application in accordance to their national applicable law. If contemplated by its national legislation, the designated Country may issue a provisional refusal (within 12 or 18 months, according on the national regulations). After the examination of the condition of registrability, the owners of earlier rights in that territory may file opposition proceedings against the trademark designation. In the absence of refusal or oppositions, or in the event that they are overcome, the national designation is registered.

Benefits

The international registration procedure, in view of its features (e.g.: filing of a single application to a single competent office, in a single language, paying taxes to a single office, a single expiration date etc.) represents a considerable simplification with respect to the filing of a number of trademark applications to various national offices, thus enabling the applicant a significant cost savings. Moreover, further to the registration of an International Trademark, there is always the possibility to extend the territorial scope of its protection by designating additional Countries, according to your business needs. As for what concerns the use of an international trademark, reference is made to the national regulations in each of the designated countries.