International Trademark Application

Protection of an IR Trademark

1. What is an IR Trademark?

The owner of a national trademark or trademark application may extend the territorial protection of his trademark to other countries by means of an international registration (IR trademark) under the Madrid system. I.e. it is necessary to have a national trademark or trademark application in order to be able to apply for an international IR trademark.

An applicant using the Madrid system can apply for protection of a mark in over 80 territories (“Contracting Parties”) by filing a single application in one language and by paying a single set of fees, instead of filing separate applications with different IP Offices of the various territories. A list of the Contracting Parties of the Madrid System may be found on the website of the WIPO. Further, filing an international trademark is usually cheaper compared to filing individual applications in each country.

An international IR trademark, which is registered at the WIPO confers on its holder the right to prevent third parties, not having his consent, to use a sign, where, because of its identity with, or similarity to the trademark and the identity or similarity of the goods or services covered by the trademark and the sign, there exists a likelihood of confusion on the part of the public. I.e. the use of a younger sign may be prevented if the opposing signs and the opposing goods or services are either identical or similar and there exists a likelihood of confusion on the part of the public.

More specifically, the proprietor is entitled to prevent unauthorised third parties from: putting the registered IR trademark onto their goods or packaging; offering goods, putting them on the market or stocking them for commercial purposes using the registered trademark; offering or supplying services carrying the registered trademark, importing or exporting goods under it; and using it on business papers and in advertising.

An international trademark is initially valid for 10 years and may be renewed indefinitely for periods of 10 years.

2. Which signs can be registered as an international trademark?

An international trademark may consist of any signs capable of being represented graphically, in particular.

Words, if they cannot be used to describe the goods or services for which protection is sought

First names and last names

Letters

Numbers

Phonetic signs

Three-dimensional forms including the shape of goods

Symbols

Colors and color combinations

A registration as an IR trademark will be refused, where the trademark is devoid of any distinctive character, or exclusively serves to designate the kind, quality, quantity, intended purpose, value, geographical origin, or other characteristics of the goods or service.

In case of questions about the IR trademark system, please do not hesitate to contact us. Our German and European Trademark Attorneys in Munich will be happy to offer advice. Please contact us.

3. How do I apply for an IR trademark?

An IR trademark will be registered by the World Intellectual Property Office (WIPO), but must be sent to the International Bureau through the Office of origin (a national patent office). Further, the international application may be filed only by a natural person or a legal entity having an industrial or commercial establishment in, or being domiciled in, or a national of, a country which is party to the Madrid Agreement or the Madrid Protocol.

For more information, please refer to WIPO website.

4. What happens after filing the international trademark application?

The Office of Origin, for instance the GPTO, will check various formal requirements. If these requirements are met, the office of origin forwards the application to the WIPO, which confirms the date when the application has been received.

The WIPO will then examine further requirements (such as the correct classification of goods and services). If the application meets all requirements, it will be registered and published in the “WIPO Gazette of International Marks.” The WIPO, however, does not check for prior trademark rights.

Following the publication of the registration, the contracting parties, which are designated in the IR application, may refuse protection of the trademark in their territory within 12 months (MMA) or 18 months (PMMA). A registration will be refused, where the trademark is devoid of any distinctive character, or exclusively serves to designate the kind, quality, quantity, intended purpose, value, geographical origin, or other characteristics of the goods or service.

If one of the contracting parties issues a preliminary refusal, the applicant has to respond to the refusal within a given term. If all requirements are met, the international registration becomes valid in the designated countries. We are specialized in handling preliminary refulas before the GPTO. Please inquire with one of our German trademark attorneys in Munich.

The term of protection of a trademark IR is principally unlimited. However, a renewal fee must be paid every 10 years, starting from the date of filing of the application.

5. How much does an international trademark application cost?

Official fees and the legal fees highly depend on the type and number of designated countries. Please contact us for an individual offer. Our European trademark attorneys look forward to hearing from you.