The International Trademark Home > Patent and trademark attorneys > Trademarks > International Trademark The importance of the Advice of an Expert in the Registration of a Trademark at International Level The filing of an international application is a rather complex operation and it requires an attentive examination of the market where the entrepreneur wants to enter and their field. The Turini Group has a long experience in the registration, renewal and protection of trademarks all over the world. For this reason, we advise the client differently according to their particular needs. The international trademark is, as a matter of fact, the union of many national trademarks even though sometimes it is not easy to gather different needs. The choices made during the filing phase should take into account this particularity. The filing of an international trademark has to be evaluated attentively and with extreme care by an expert able to share with the client the choices to be made on the basis of the evaluation of the costs/benefits. How Long Does an International Trademark Last? The international trademark gives its owner the exclusive right to use that sign in the countries indicated in the application for 10 years. At the end of the 10 years, the renewal is not automatic. The trademark is renewed upon request for 10 additional years, and so on. The trademark decays if not used for period of time variable on the basis of the norm of the single country indicated in the application of the international registration. Rely on Turini Group to protect your Trademark Discover our online services to protect a Trademark. Answer the questions to receive a quotation. Make the payment, upload the required documents, and monitor the status of your order in your reserved area! File your trademark online Claim priority for your trademark online REQUEST A TRADEMARK AVAILABILITY SEARCH ONLINE How an International Trademark works Let’s examine more deeply the characteristics of the international trademark in four points. What is the international trademark? How to file an international trademark application The registration procedure Norm of Reference Request a consultation What is an International Trademark? The international trademark, contrary to what one may think, does not have effect in all the countries of the world. By the term “international trademark” is indicated a trademark filed with a single application in several countries adhering to one of the two international agreements on this subject. The list of the countries has to be expressly indicated at the filing. The international trademark is regulated by two norms: the Madrid Agreement and the Madrid Protocol. Agreement (A) and Protocol (P): the complex mechanism of the adhering procedure Some countries adhere to the Agreement (A), some others to the Protocol (P), others, including Italy (from April 17, 2000), adhere to both (A) + (P). The two regulations are quite different. One of the main differences is that the Agreement provides that the international trademark can be obtained only on the basis of a trademark registered in the country of origin, whereas the Protocol provides that the request can be made also on the basis of a simple application. Another difference is that according to the Agreement the procedure should be made in French, the Protocol on the other hand (or Agreement and Protocol jointly) accepts French and English. An international trademark has, in each country indicated in the application, the same value as a national trademark. The countries listed for the international trademark change frequently as new countries join the Agreement or the Protocol. How to file an international trademark application The procedure to register an international trademark, handled by the WIPO (World Intellectual Property Organization), is very complex from the moment of filing. For this reason, it is not advised to act without the help of an expert. First of all, the international trademark is never independent as it is always linked to a “base” trademark which can be national or European. The international trademark lasts 10 years from the filing date but for its first 5 years it depends on the life of the trademark of origin. Therefore, if the base trademark loses its validity, the same will happen to the international one. The procedure is ruled by the Madrid Agreement and the Madrid Protocol which are two distinct regulations. In addition, the filing procedure is different whether the base trademark is Italian or European. In the first case the filing has to be made before the UIBM, filling in a specific form, submitting the request and paying the fees partially to the WIPO and partially to the UIBM. In the second case, the application is submitted to the EUIPO. The Registration Procedure Once the application has been filed, the designated countries may reject it or present their remarks within a variable period of 6, 12 or 18 months from the day when the WIPO notifies the international registration to the national office of the designated country. If one or more countries notify their rejection, that country starts an internal procedure that will be handled locally. It may happen that a trademark receives opposition from several countries and in that case the procedure will be managed by a local attorney for each country to try to overcome the objections. On the contrary, if no such notification arises, the trademark is considered accepted in all countries. It is hard to know in advance the potential objection because each country has its own regulations. Trademarks and classification accepted in many offices may not be accepted in others. Likewise, in some countries, there may be identical or similar trademarks that are completely absent elsewhere. A deep examination of this kind may have costs way higher than the filing itself. If, by intervening locally, the objection is overcome, the trademark is then accepted for all countries. On the contrary, the international trademark may be totally or partially rejected, in some countries, or rejected for some classes of goods and services, according to the cases. Once granted, the trademark is published and the owner receives the related grant certificate. The international trademark can be renewed with a single application, at the expiration of 10 years. Norm of Reference Madrid Agreement of April, 14, 1891 and subsequent amendments. Protocol related to the Madrid Agreement of June 27, 1989 and subsequent amendments. Get in touch with our expert Dott.ssa Giulia Mugnaini Head of Trademark & Design Department contact us
