An International Trade Mark is a global right, right?

There is a common misconception that an International trade mark is a global right. This is not surprising, given the title “International Trade Mark”. In fact, an International trade mark registration is a bundle of national/regional rights controlled through a central office, the World Intellectual Property Organisation (“WIPO”). 

Taking a step back, it comes as a surprise to some businesses embarking on trade mark protection that trade marks are jurisdictional rights. Acquiring a right in a trade mark does not mean that you have acquired the right to use or prevent others from using the same or a similar mark anywhere in the world.

What countries can I cover?

This is determined by whether your application is made under the Madrid Agreement or the Madrid Protocol or both. Member countries of the Madrid Agreement include countries in Europe, Africa, the Middle East, Russia and the Far East, but, many more countries in Europe and the Far East are members of the Madrid Protocol (and not the Agreement). The Madrid Protocol also covers the United States, Canada and Australia, and the entire European Union can be included as a single designation in an International application filed under the Madrid Protocol.

What about Brexit? No fear – it has always been possible to designate the United Kingdom individually under the Madrid Protocol, not just as part of an EU designation.  

Whilst the membership is on the increase, there are still countries that are likely to be important markets for some businesses, which are not members of either the Protocol or the Agreement and cannot be covered under an International trade mark application. The Latin American market is not accessible via the International trade mark system, with the exception of Mexico, being a Protocol member.

How to file an international application?

(i)            Choose a base country

You must base your International application on an already filed application/registration for your trade mark in the country in which you live/are a national of, or a country in which you have an operational business and office address. This country must be a member of the Madrid Agreement or the Madrid Protocol (or both) and its membership of one or both determines which countries you can designate in your International trade mark application.

(ii)           File the application

You file the application through the Trade Mark Office of the country of the base application/registration. This office forwards the application on to WIPO. WIPO carries out a formality check and basic examination and once satisfied, it issues a registration number and certificate of registration. This is somewhat misleading as “registration” implies that protection has been granted. In actual fact, the registration certificate is akin to a filing receipt and this is just the beginning of the process.

(iii)          Sit back while WIPO liaises with the national offices of the designated countries in your application

What happens next is WIPO notifies the International trade mark to the national offices of all of the countries/regions you have designated in your application. They then carry out their own examination and publish the application for opposition purposes as if it was a national trade mark application. If they raise objections, they must notify WIPO who will inform the applicant. It is necessary to appoint a local attorney to respond to any objections raised by a national office. The International trade mark is only protected in a country designated in your application once it has gone through the national examination process and has been approved or not received any objections within a set period of either 12 or 18 months (depending on the national office) from the date when WIPO notifies the International trade mark to the national office. This period may be extended if an opposition is received.

Pros and cons of the International trade mark system

So, the International application process is more complex than you may have thought.

The cons

i.              One down side to International filing under the Madrid Protocol is that the application is dependent on the “home” application/registration for the first five years. If the home application/registration is refused/withdrawn/cancelled during this time, the International application will also be lost. It is important, therefore, to ensure that you have a secure base for your International application.

ii.             WIPO can be slow to carry out the initial examination before notifying an International trade mark application to the national offices of the designated countries, thereby delaying the process of national examination and the granting of protection of the mark in the designated countries.

The pros

      i.        The International system is a very cost effective and efficient route to registration of your mark in a large number of territories compared with national filings. You can construct your trade mark protection strategy worldwide by designating your main markets in the initial application, then top up your rights portfolio with subsequent designations when other markets become important further down the line.

     ii.        The single country designation approach also means that you can leave out countries in which you know you are likely to encounter problems because pre-filing searches have revealed prior rights or the mark is likely to be objected to on grounds of non-distinctiveness according to the local law. Whilst a global IP right does not exist, we can imagine that if there were a system that gave you this, the chances of the application sailing through to registration without an objection from somewhere in the world, jeopardizing the entire application, would be extremely slim.

    iii.        The International system is a compromise between global rights and national rights. The single application and the control of the application through a central office streamlines the process. Local attorneys only need to be appointed if objections are raised by the national offices. If no objections are raised during a period set by the national office, protection is automatically granted in the designated territory.

    iv.        Other issues relating to an International mark such as transfer of ownership, renewal, amendment of the list of goods and services are all dealt with through WIPO, reducing the level of administration and cost.

Conclusion

The International system should not be seen as a route to global trade mark protection and the issuance of a registration by WIPO is only the first step in the process. However, if done right, it is a cost effective way of obtaining trade mark protection in a large number of countries via a single application.

And we, at Stobbs, are here to help you craft a robust and watertight trade mark protection strategy.