Having read the previous information then you will have already realised that trade marks are purely territorial in nature. There is no such thing as an "international trade mark" (a single registration that is valid in every country of the world). Generally, if you want or need the advantages and benefits brought about by the registration of a trade mark in a particular territory or country, you need to register the trade mark in that territory (the major exception to this is the Community trade mark)
There are two ways of obtaining a trade mark in other countries:
- making an individual application in each of the countries; or
- using the Madrid system of international registration of trade marks.
The Madrid system of international registration of marks is applicable among the countries party to the Madrid Agreement or the Madrid Protocol .
The International System
This system gives a trademark owner the opportunity to have his mark protected in several countries by simply filing one application with a single Office, in one language, with one set of fees in one currency (Swiss francs). As such this streamlining of the red tape cuts down on the costs for such applications of our clients. The basic fee (for the first 3 classes) for making an international application is 652 Swiss Francs (SF903 in the case of colour marks). Additionally SF 73 is added for each additional classes (in addition to 3 classes). To this figure one needs to add the cost of national designations in the chosen countries. Brand Protect LLP charges £270 (plus £50 for each class in addition to the first 3 classes) to prepare the application and file it with WIPO. All applications for international marks have to be made in either English or French.
An international registration produces the same results as an application for registration of the mark made in each of the countries designated by the applicant. If protection is not refused by the Trade Mark Office of a designated country within a specified period (12 or 18 months), the protection of the mark is the same as if it had been registered by that Office. The Madrid System also simplifies the subsequent management of the mark, since it is possible to record subsequent changes (such as a change in ownership or a change in the name or address of the holder) or to renew the registration through a simple single procedural step with the International Bureau of WIPO. Further countries may be designated subsequently.
A major drawback of the international system is that the international mark remains open to "central attack" for the first 5 years of its registration in its home country. "Central attack" means that if the mark is revoked or cancelled in its home territory then the international is revoked or cancelled to that extent.
All this is complicated. At BRAND PROTECT LLP we won't charge you the earth for our services.