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What is worldwide registration of a trademark?
When registering a trademark internationally, a trademark application is chosen in countries other than your own country. This can be one country, but you can also choose to register in several countries at the same time.
A worldwide registration is possible, but then the costs can be high, because it must be designated by country. If a registration is desirable worldwide, then a basic registration is generally chosen in the country of residence and subsequently expanded to the countries where protection is needed on that basis.
When registering in more than one country or in multiple classes, it is important to determine the best filing strategy and whether the trademark should be applied for in each country individually or whether the Madrid Convention can be used. It is important to note that not every country is a member of this convention.
How to register an international trademark?
To register a trademark worldwide, it is important to determine in which countries protection is required, but also in which classes your trademark falls. Outside jurisdictions such as Benelux, EU, ARIPO and OAPI must be designated per country. The international trademark registration process has seven steps, namely:
- Trademark search
- Determine classes
- Opposition period
- Trademark registration
- Receipt of certificate
How does the international trademark registration process work?
In the international trademark registration process it is important that the right filing strategy is chosen, whereby a legally strong, but also cost-efficient filing strategy is chosen. We have two options for this, namely:
- National trademark application
- International trademark application
What is a Madrid protocol trademark?
The Madrid protocol, or rather the system for countries that are party to the Madrid Treaty, provides a relatively inexpensive option to register a trademark internationally. A distinction is made here between protocol and agreement countries. At the start of the registration, a country is chosen for basic registration. This country can be a country where one is established, but also where one has a company or is registered as a person.
What are the benefits of global registration of a trademark?
An international trademark registration has several advantages, namely:
- Add numerous countries
- Subsequent designation
How does priority work?
Each brand receives 6 months priority, also called priority right, via the Paris Convention. Priority means that you can priority expand to other countries within six months of the first trademark application.
The moment you apply for a trademark today, this period will start immediately. If another party also applies for your trademark in another country within those six months, you can invoke priority.
These subsequent applications are seen as if they were requested on the day of the original application.
What classes for trademarks are there?
Each brand can be filed into one or more classes according to the Nice classification. For example, there are 35 classes and the first 34 are for products and the last 10 for services.
A brand therefore needs at least 1 class and can have a maximum of 45. You can register in all these classes, but you have to make sure that you also have to use the trademark as it is registered.
If you do not deliver certain products or services, it can be declared lapsed after five years of uninterrupted use.
How much does it cost to trademark a name internationally?
International trademark registration costs depend on a number of factors, namely:
- Country of key register
- Number of classes
- Logo in color or brand name
- Designated countries
The tool that you can use for this shows the rates including government taxes and the fees required for filing the trademark and managing the trademark for ten years. You therefore pay an all-in fixed fee for the trademark application, so that you know for sure in advance where you stand.
How does cancellation of a trademark work?
Form MM8 must be completed for a cancellation. You indicate the goods or services that must be permanently removed from your trademark application. Unlike limitations via form MM6. Subsequent designation is no longer possible after a cancellation and therefore a new international will have to be applied for if protection is needed again.
How does a central attack work on an application?
Every globally registered trademark is dependent on the basic registration for five years. This period of five years applies from the moment of the IR registration date. The moment something happens with the basic registration of the trademark, because it does not pass the opposition period or is canceled, for example, the entire tower of countries that were internationally added via the Madrid protocol falls over.
As a trademark holder, you can then submit a national trademark application within three months of a cancellation in the countries you designated within the international registration. These are then submitted as treated at the time the IR was deposited. As a result, you can still receive protection in the desired countries, but you have lost the major (cost) advantage of the international deposit.
Should I register my trademark internationally?
It depends on whether you need to register your brand in other countries. It is important to carefully consider the costs as they can be high. That is why it is always determined in advance in which countries protection is necessary.
You can register an international trademark in:
- The country where you are located yourself.
- The country where the products are made (production countries).
- Countries where infringement can be expected.
- Countries where major competitors are located.
- Countries where the products and services are regularly sold or offered.
What are the requirements for trademarks?
In principle, the requirements for registering a trademark are the same in most countries. Certainly the countries of the international trademark register and the Madrid Treaty. It has been agreed that trademarks may not be descriptive, misleading or contrary to public order or morality.