Appearance at the international market is always the indicator of the company’s success and self-sufficiency. However, with the expansion of the business scope, new tasks appear, the resolution of which requires qualified legal assistance. One of such tasks may be your trademark presentation to the international public. It is a well-known fact that the legal protection of a trademark is limited to the territory of the country, in which it is registered.
If a good or service is sold abroad, it is recommended to register them in each country where it is planned to operate.
There are several ways to register trademarks abroad:
- national registration – the customer contacts directly the patent attorney of each country, based on the relevant local legislation;
- regional registration – implies the action in the territory of several countries simultaneously (for example, European Union Trademark, Benelux Trademark, the African Regional Intellectual Property Organization (ARIPO) Trademark)
- international registration – registration of a trademark under the Madrid Agreement, which is carried out by applying to the World Intellectual Property Organization (WIPO).
International registration under the Madrid Agreement is the most called-for and effective way to protect a trademark when a business goes at the international level
Firstly, the Madrid Agreement is signed by 106 participants, which are represented by 122 countries, and the total share of world trade constitutes 80%.
Secondly, the application procedure is simplified by the fact that several countries can be declared in it at once, in which the trademark protection is required. Therefore, there is no need to find patent attorneys in every country.
And thirdly, the cost of registration in several countries of the Madrid Agreement is often less than the cost of national registration in each country. Moreover, in the future, if necessary, it is possible to expand the trademark protection by submitting an additional agreement and paying the necessary fees.
Stages of international registration of trademarks
- preparation – includesthe consultationofVigoLex professionals on the preparation of necessary documents for international registration and payment of the relevant fees for filling an application;
- direct filing of an application with the International Bureau of WIPO through Ukrpatent;
- WIPO accepts the application and, within the next 6 months, sends the request to all patent offices of the declared countries; the examination period may vary from country to country and constitutes approximately from 12 up to 18 months;
- in the absence of grounds for refusal, the information is published in the open register of international registrations of trademarks and the declared trademark is considered registered in each of the designated states; as in Ukraine, a trademark registration certificate is valid for 10 years with a possible extension for the same period.
Sometimes, however, there are situations of refusal to register in one of the countries. In such cases, do not despair, because thanks to the experience and reliable cooperation with foreign colleagues, VigoLex lawyers can help to improve the situation.