International trademarks

Territory

A considerable number of countries is party to the Madrid Protocol. It can be indicated in the international application in which of those countries the applicant wishes to file a trademark application. As of October 1, 2004 the European Union has become party to the Madrid Protocol allowing applicants of international trademarks to obtain a Community Trademark Registration via this route.

 

Procedure

An international trademark application may be filed on the basis of an application for or registration of a trademark in a Member state. An international trademark application must be filed with the World Intellectual Property Organisation (WIPO) in Geneva, through the mediation of the national or regional official organisations. Each country will perform an investigation in accordance with its national trademark law. It is therefore possible that a trademark application is refused in one country but not in another. A refusal in one or more countries will not have any consequences for the other countries.

It is also possible to file a trademark application in a country that is not a party to the Madrid Protocol. In that case the application is not filed centrally with the WIPO, but in the country itself, through an agent. The costs will be charged in accordance with the national laws.

 

Period of validity

The period of validity of an international trademark is ten years and the registration may be renewed for ten years after the date of expiry.

 

Lapse of trademark registration

In the case of an international registration it is important to know that the registration will be dependent for a period of five years on the basic application or basic registration in a Member state. If the basic application lapses during that period, the international registration will also lapse. In certain cases and within a certain period, the international registration can be converted into a national or regional application. At the end of the five-year period, the international registration will no longer be dependent on the basic application of registration.

 

Costs

The costs and honoraria of filing an international trademark are available upon request.

De Vries & Metman can advise and assist you in applying for international trademark rights.