Building a brand is certainly not an easy task, which includes a number of stages. Including protecting this brand, namely its name, logo, certain unique slogans and other identifiers that serve as its business card for customers, contractors, investors and other stakeholders.
For this purpose, business owners apply for registration of marks for goods and services – trademarks. And it is one thing to register a TM in one or several countries. But what if the brand is still little-known or not at all, but the founders have business plans for almost half the world and, accordingly, want to protect their brand in a huge number of jurisdictions?
In this case, our team suggests that you consider the so-called “international registration” trademarks or in other words — Madrid System for the International Registration of Marks for Goods and Services.
The Madrid System provides the applicant with a number of advantages that make it an undoubtedly effective and attractive tool.
Yes, 131 countries around the world have joined the Madrid System to date. This means that you have the opportunity, by submitting only one application, to simultaneously apply for registration in all these countries or only in some of the countries you need from this list at the link.
The clear and indisputable advantage of the Madrid System is as follows: a single representative – a single application – a single language – a single payment – a single currency – and a large number of registrations obtained in your chosen countries within an estimated 12-18 month period, depending on the specific country.
Thus, international registration is:
- cheaper due to the fact that there is no need to engage a professional representative and pay for legal services and preparation of translations in each of the selected countries;
- faster due to the fact that, again, there is no need to spend time searching for a professional representative in each of the selected countries, to conduct and maintain communication with each of them, etc.;
- more convenient due to the fact that communication regarding each of the applications for TM registration in different parts of the world is carried out with one single representative and due to monitoring of the paperwork for all applications in one place, which makes the work of such a representative easier, and for you — reduces the cost of time, human and material resources.
What is needed for this and what are the available criteria?
- A valid application for TM registration in the office of a country participating in the Madrid System or a valid TM registration in such a country. In particular, in Ukraine.
The fundamental difference between registration and application is that an application for registration does not yet guarantee that the TM will be registered, and in the event of a refusal in national TM registration, you will also be refused international registration. That is why it is advisable to apply for international TM registration already having a valid registered national TM.
But, on the other hand, if you apply for international registration within 6 (six) months from the date of filing the national application, you have the opportunity to take advantage of the priority. That is, your application for international registration will be considered to have been filed on the same day as the main application for national registration.
Therefore, our advice is to seek professional support to identify, minimize, avoid and resolve all possible risks associated with your application for national TM registration, in order to ensure the receipt of future TM registration and to benefit from the right of priority for filing an application under the Madrid System.
- The data in the application for international registration of a TM must be identical to those contained in the national one (same applicant or registrant, address, TM, list of goods and services, etc.).
- Payment of the official fees for filing the application, which is primarily filed with the office of your national application or registration. If such an office — UKRNOIVI, then the official fee is currently 2,400 UAH (as specified in the Cabinet of Ministers Resolution No. 1716 at link, under the identifier 43300).
- If your application meets all the formal requirements listed by the office of your national application or registration (for example, you can familiarize yourself with the requirements of the Ukrainian office on the official website of UKRNOIVI at link), then to transfer your application to WIPO, you must pay the following fees:
- 653 Swiss francs or 903 Swiss francs for a TM in color (as specified on the WIPO website at link in the Madrid System filing fee section);
- additional official fees in the same currency for convenience (Swiss francs), the amount of which will vary depending on the countries of registration you have chosen and which you can calculate in advance using the fee calculator on the WIPO website at link.
- As previously indicated, it is not necessary to involve additional representatives in each of the countries. However, if additional communication is required with the office of a particular country if it has comments on your application, such a need may arise.
In any case, the refusal to register a TM according to your single application in a certain selected country does not entail the refusal of this registration by other countries. The only option when this is possible is if you are refused national registration or your national TM registration is canceled within 5 (five) years from the date of international registration. After this period, registration in each of the countries you have selected becomes independent of the national one.
Thus, international trademark registration under the Madrid system is an excellent alternative for those who are interested in entering the global market, protecting their brand on it, and at the same time want to optimize the costs of such a procedure. It has its own unconditional advantages and its nuances, which our competent team of IP lawyers will help you understand. We ask you to contact us with all questions using the contact details on our website via the link or via the appropriate form.
