What is an “international trademark”

by | Nov 14, 2018 | General, Insights | 0 comments

The basic concept

​The basic concept is relatively simple. A trademark applicant submits a request for international registration of his trademark to World Intetellectual Property Organization, known as WIPO. WIPO will then forward that single application to all those countries that the applicant has “designated” in the request. So one application goes from WIPO to several countries to be examined in by trademark offices of those countries that have been “designated” by the applicant. The basic concept is relatively easy to grasp, but there are also a lot more to it than that.

The below information relates to applications made under “Madrid Protocol” and not “Madrid Agreement”. This means that the information relates to companies of most countries, such as US companies, all EU based companies, Chinese, Japanese and Korean companies.

“Entitlement” and “basic mark”

​In order to be able to benefit from the international trademark registration system, you will need to be “entitled” to file and need a “basic mark”.

“Basic mark” is a trademark that you have registered or filed in your home country or in a country where you have an “effective commercial establishment”.  The basic mark also defines the scope of your international trademark. The international trademark cannot cover more goods and services than the basic mark.

It is also possible to base the international registration on more than one basic mark. In that case it is required that trademark is exactly the same in applications/registration.

Example 1 – entitled to fileA German company that has filed for a trademark in Germany can use the German trademark as a basic mark because Germany is part of the international registration system.

Example 2 – not entitled to fileA Canadian company that has filed for a trademark in Canada cannot use the Canadian trademark as a basic mark because Canada is part of the international registration system.

Example 3 – not entitled to fileA Canadian company that has filed for a trademark in Germany cannot use the German trademark as a basic mark because a Germany is not the company’s home country.

In practice, the basic application almost always made in your home country. There is, however, an exception to the above rule.

Example 4 – entitled to fileA Canadian company that has filed for a trademark in Germany can use the German trademark as a basic mark if the company has “real and effective commercial establishment” in Germany.

The “real and effective commercial establishment” as basic for international trademark is quite rarely used and there are no clear guidelines as to what qualifies as such. In most cases the “basic mark” is a trademark that the applicant has registered or filed in his own country. It is not possible to start the trademarking process from the international stage without first having the trademark at home.

International registration is kind of a copy of the basic mark. It has the same applicant, the mark is identical, and it cannot cover any goods and services that are not included in the same application. In terms of goods and services, the international registration can be narrower, but not wider, than the basic mark.

In other words:

Applicant: same as in the basic mark

Trademark: same as the basic mark

Goods and services: same or narrower than in the basic mark

Examination of your application at WIPO

After WIPO as received the application from the office of origin, it conducts an examination of certain formalities. The main examination deals with the identification of goods and services. WIPO checks that they conform to International Classification of Goods and Services (Nice Classification). Although classification is in theory harmonized, in practice different countries evaluate the acceptability of goods and services differently. It may be that you indicate the same goods and services for the international registration that have already been accepted in the basic mark, but WIPO considers them too vague. If that’s the case, they will issue a notification called “Irregularity letter” and request that you specify those terms that have been found too vague. The irregularity letters are sent through the office of origin. The response must also be sent to WIPO through the office of origin.

If WIPO considers that everything is in order with your application, it will “publish” it and issue a registration certificate. That simply means that the “international registration” will be forwarded to all those countries that have been designated in the application. When you receive the  registration certificate the critical part, examination of your international registration at national level in the designated countries is only just beginning. This national examination determines whether your trademark is accepted in the countries that you have included in your application.

National examination

It is for every country to determine whether to accept your international trademark. The application is examined according to national (local) criteria in every designated country. Your international registration must fulfill the same criteria as a national application.

​If there are issues with the application, for example the trademark is considered non-distinctive or there are prior registrations that prevent the acceptance of your trademark, the local office will notify you of that by issuing an “office action”. It is also possible (and quite common) that the local office requires changes to the classification of goods and services, regardless that it has already been accepted by the office of origin and WIPO.

The office action will be communicated through WIPO, but must be responded to directly to the issuing national office.  It is usually required that in responding to the office action a local representative is used. If the registration obstacles are cleared at national level and the local trademark office accepts the international registration, only then you will have valid trademark rights in that country.

After registration

Expansion to new countriesIt is possible to include new countries to your international registration. The process, called “subsequent designation” is slightly more streamlined. The application can be made directly to WIPO, who sends it to those countries that are designated. Note that it is not possible to add new goods or services.

RenewalsAfter the international trademark is registered and accepted at national level, the next step is usually renewal. This stage provides one of the biggest advantages of having the international registration. If you remember the “misleading” registration certificate issued by WIPO, the good news is that it contains a renewal date (tens years from issuance). Renewal is centralized so will only have to renew the international registration at WIPO level, and that renews it for all those countries that accepted your trademark. You should nonetheless beware of possible national requirements. There may be countries that require you to prove for example that your trademark has been in use in that country.

Transfers (assignment)International trademark can be assigned as a whole or in part. It is possible to transfer the rights to an international trademark with a simple form to WIPO and have the transfer of rights in all countries.

Main drawback: central attack and dependence

The main drawback of the international registration is that for the period of 5 years (counting from the registration date), the international trademark is dependent from the validity of the basic mark. This means that if the basic mark becomes invalid for any reasons (for example, cancelled by a third party, or the application is refused), the international trademark will be cancelled for the same part.

ExampleIf the basic mark is a German application covering “sandals” and “t-shirts”, and the German trademark office refuses the application with respect to “sandals”, the corresponding international trademark  will be cancelled to the same extent.

This dependence goes away after 5 years. So if another company cancels the German trademark 6 years later (for example, for non-use), the international trademark is not affected.

Here you have it, the basics (and a bit more) of international trademarks.

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