International Trademark Registration – Renewal – Defense – Viability

Having a good advisor who knows the specific needs of each company and tailors them to the different existing international rules and agreements is of special importance in international trademark protection to achieve the balance between maximum protection and minimum cost. International trademarks protection can be obtained by means of direct applications in each country or by implementing the international trademark procedure.

International Trademark is a procedure for registering trademarks managed by the World Intellectual Property Organization (WIPO)through two treaties, namely the Madrid Agreement and the Madrid Protocol. The countries may adhere to one or the other or to both of them.

Features:

• Managing a single application centralized in a single International Organization.
• Single application cost.
• Cost for designating countries, a reduced fee (in addition to the general application fee) is paid for each country in which protection is sought.
• Objections or oppositions against the application will be treated in each affected country.
• International trademark needs to be based on a national or community trademark.
• It is possible to extend an already registered international trademark to other member countries without needing to start another new file.

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Filing:

• As many member countries as desired can be designated provided that the country in which the base trademark is filed has signed at least one treaty to which the designated country is a member. That is, if the base trademark is:

• A Spanish trademark: any country can be designated.
• A community trademark: member countries of the Madrid Agreement and the Madrid Protocol and/or member countries of just the Madrid Protocol can be designated (never the member countries adhered only to the Madrid Agreement).

• It is sufficient for the base trademark to be applied for.
• These countries have 12 months to communicate possible objections or oppositions.
• The designation fee of these countries is different depending on whether the designated country is member of the Agreement and the Protocol or only of the Protocol:

• Countries adhered to the Madrid Agreement and Madrid Protocol: general designation fee.
• Countries adhered to the Madrid Protocol: individual fee, each country has its own cost.

• See complete list of WIPO countries