The international registration of a trademark
For an international trademark application one needs a so-called basic trademark or at least a pending trademark application (basic application).
The application for registration of an IR trademark must then be filed via the trademark office of the country of origin, e.g. at the German Patent and Trademark Office (DPMA) if the basic trademark is a German trademark or at the European Union Intellectual Property Office (EUIPO) if the basic trademark is a Union trademark. From there, after an initial examination, the application is forwarded to WIPO.
With an international trademark registration, a trademark can be protected in currently more than 150 contracting states. The contracting states, which must be a member of the Madrid Agreement (MMA) and/or a member of the Protocol (PMMA), include almost all European states as well as numerous Eastern European, American and Asian states. A current list can be viewed at WIPO.
Therefore, trademark owners can obtain international trademark protection in multiple countries by registering an IR trademark, but not worldwide trademark protection.
Procedure of registration of IR trademark at WIPO
The trademark applicant defines in the application in which countries the trademark protection should apply.
After the formal examination of the application by WIPO, the trademark is entered in the international register. Upon publication, the trademark is filed as an application for protection in the defined countries, of which the designated national trademark offices are informed and requested to examine it. If the national trademark offices refuse to protect the trademark in their national territory, the trademark applicant must usually additionally pursue the examination procedure at the national level by calling in certified trademark experts. Otherwise, WIPO and thus also the trademark applicant will be informed that there are no objections to the registration and whether or to what extent national opposition proceedings can be filed by third parties against the registration.
The international registration provides the full rights of a national trademark if the respective trademark offices agree to the publication or do not object to it within 1 year. Should one of the selected countries declare the IR trademark invalid, this will not affect the other countries where protection has been applied for.
The term of protection of a registered IR trademark is initially 10 years and can be renewed as often as desired for 10-year periods.
Costs of filing an IR trademark application
The amount of the filing fees depends on the number of classes to be registered and the states selected. The office fees that WIPO invokes can be calculated using WIPO's Fee Calculator.
International Trademark Search
An international trademark application should always be preceded by a preliminary search in the countries where protection is to be sought.
Registering a trademark without conducting a preliminary search beforehand carries the risk of being confronted with a warning letter or opposition proceedings from older trademark owners. In our blog Preliminary Trademark Search we have compiled further information on this.
Regarding Matthias Rößler:
Matthias Rößler, German and European Patent Attorney since 2003, studied mechanical engineering at the RWTH Aachen. He is co-founding partner of karo IP. A main focus of his practice is the management of large patent portfolios and the enforcement of bilateral litigation proceedings before patent offices and patent courts. His additional qualification as Master of Laws (LL.M.) qualifies him especially for multinational infringement matters in Europe.