The international trademark is registered under a system for international trademark registration. The system is governed by two treaties – the Madrid Agreement Concerning the International Registration of Marks and the Protocol to the Madrid Agreement. The system is administered by the International Bureau of the World Intellectual Property Organization (WIPO), based in Geneva, Switzerland. The States which are party to the Agreement or the Protocol shall be called “The Contracting States”. The main purpose of the system is to obtain Trademark protection for goods and/or services in the Contracting States. In this case, one registration of an international trademark corresponds to multiple national registrations of trademarks. The result is only one registration for maintenance and
renewal. This includes all actions related to this registration. Such frequent actions are change of owner, change of name or address of the owner, restriction of the list of goods and/or services, etc.
The application for international registration (or so-called “international trademark application”) may be filed by a natural or legal person with nationality in a country party to the Madrid Agreement or the Protocol. In addition, any person who has an efficient and serious business in such a country can also file. And last but not least is the condition that the person has a permanent residence in it.
A trademark may be the subject of an application for international registration under the Madrid Protocol only if it has been registered with the relevant Office of the Contracting State. Otherwise, the international application is subject exclusively to the Protocol, if its registration has been filed in the Office. The Office of the Contracting State in which these two conditions apply shall be called the “Office of Origin”.
The international application must be sent to the International Bureau through the Office of origin otherwise, the application is returned to the sender. It must contain one reproduction of the mark, which should be
identical to that of the basic application. The list of goods and/or services for which protection is claimed must also be identical. Goods and services are classified according to the International Classification of Goods and Services ( Nice Classification ). The international application must indicate the Contracting Parties in which trademark protection is sought. The peculiarity is that the Contracting Party whose Office is the Office of origin cannot be designated. The international application may be filed in English, French or Spanish.
The Office of the said Contracting State shall examine the application, as well as any application filed directly to that Office. If during the examination carried out ex officio there were obstacles or an objection was filed against the registration (opposition), the Office has the right to declare that the protection of the trademark cannot be granted in this country. Any prior refusal must be sent to the International Bureau within 12 months. If the Contracting State does not declare that it is specified in the Protocol, then the period shall be 18 months. Any subsequent proceedings against refusal shall be examined by the Office of the Contracting State, which shall notify the International Bureau when a final decision is reached.
We at BV&Ko have the experience and qualifications to prepare a strategic analysis for you, and we will acquaint you in advance with the details of the procedure for the registration of an international trademark. For protection against infringements, we can conduct a preliminary search for earlier identical or similar marks. The preliminary search may contain analysis and recommendations for further action. We are also ready to fully prepare all the documents for your application for the registration of an international trademark. We are fully capable to carry out the procedure for the registration of an international trademark.