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How Businesses Can Register a Trademark Internationally

For brand owners that are looking into registering their trademark rights in several different jurisdictions across the globe, the Madrid System offers a cost-effective and simple way to protect trademarks. The system enables a brand owner to designate approximately 120 countries in a single procedure, language, and set of fees. 

Most businesses and individuals that have registered their trademark internationally successfully saved more than forty percent in comparison to national filings. 

How to Register a Trademark with the Madrid System 

An application for IR or International Right will be based on national application initially. The national application should be done with a member country. An applicant can choose to file the application for International Right simultaneously with a national application. It can also be after but within 6 months in order to claim priority. 

With a national application, a brand owner is to indicate the classes of services and goods that are to be covered by a trademark that is to be registered. There is also a need to designate jurisdictions of interest for global trademark protection. All maintenance and administration of the trademark rights will be dealt with by the authority, World Intellectual Property Organization; however, every country designated will be a trademark that is existing in its very own right. This means it will be like a national application for trademark registration.

Reasons to Register a Trademark Internationally 

For companies with an international presence, the registration of a trademark globally with the Madrid System provides important advantages, which are as follows:

  • The simplified filing process for trademark registration in different countries;
  • Significant cost savings; 
  • The administration of the trademark is streamlined; 
  • There is no need for an applicant to have a local representative for every designated country; 
  • All communications and applications will take place in an applicant’s preferred language e.g. English or Spanish;
  • No document formalities e.g. power of attorney (however, statements of use may still be needed for certain territories);
  • There’s a fixed and finite evaluation period which is either twelve or eighteen months. In the event that there’s no one objecting to the trademark registration, the application will be given automatic protection; 
  • The international mark’s geographical protection can be extended anytime, which means it is possible for a trade mark rights holder to add new designations as they become interests; 
  • If there is no objection that is raised to the WIPO or oppositions filed by a third party, then there’s no need for an applicant to appoint local representatives in the country in question. 

Infringement of Intellectual Property

Disadvantages of Global Trademark Registration 

As with everything else, there are disadvantages to global trademark registration with the Madrid System. The vulnerabilities or complications can arise in the protection that’s afforded or the registration and administration process. Here are the disadvantages we’re talking about:

  • The International Right application is based on the home filing. This means for clients that are in the EU, it’ll either be EUTM or a national application. The registration application will be relying on home filing for approximately five years from the date of registering the International Right. If a home filing has been put through the process of cancellation or was abandoned during the dependency period, then the registration will be canceled. It’s referred to as a central attack. It’s possible to transform designations for centrally attacked registrations, but the cost savings will most definitely be eliminated. 
  • The Madrid System doesn’t circumvent any local trademark regulation, which means an objection that’s raised by a third party will be based on each country. If a mark is accepted in the home territory, this does not necessarily mean that it will be the same for every other designated country in an application for International Right. 
  • Deadlines for office action responses can be extremely short. This is a challenge in filing a timely response, especially if there is no expert that is helping you out. China, in particular, has a deadline that’s less than 2 weeks. 
  • The time it takes to process an application for International Right can vary significantly. For some territories, the trademark registration takes up to two years while a national application is swifter. Fortunately, for countries like the EU and the United States, the timeline has been increased. 
  • In some countries like in Africa, their national laws weren’t kept updated in recognizing the Madrid System or system for international trademark registration. This can result in a lot of enforcement issues. 
  • There are a couple of territories that are also not covered by the Madrid System. 

Despite the challenges and possible confusion that you may experience, the process of international trademark registration is effective, crucial, and highly regarded for obtaining trademark and intellectual property rights in several different jurisdictions. If you know if the Madrid System is the best option for you, speak to our trademark specialists that are specializing in the registration of a trademark internationally.

If you have any questions regarding register a trademark internationally, You can contact us HHS lawyers today!

Trademark & Intellectual Property Attorney

Shahnaz Kaushar is a senior Trademark and Intellectual Property (IP) attorney in HHS Lawyers. A seasoned lawyer based in Dubai, she has handled some of the firm’s complex, high-profile cases – many involving the protection of trademark and IP rights. Read more