The International trademark

  1. What is the International trademark
  2. How to file an International trademark application
  3. The procedure of registration
  4. Regulations

1. What is the International trademark

The international trademark is not, as it could be thought, a trademark that is valid in all the states of the world. Actually, with the term “international trademark” we indicate a trademark that is filed with a single application in more than one foreign state of the ones that have adhered to one of the two international agreements on the subject. The international trademark is regulated by two regulations: Madrid Agreement Madrid Protocol

There are states that have adhered only to the Agreement (A) and states that have adhered only to the Protocol (P), while other states, among which Italy (from 17 April 2000), have adhered to both (A) (P). The two regulations are between them rather different. One of the most relevant differences is that the Agreement foresees that an International trademark can be obtained only on the basis of a trademark registered in the country of origin, while the Protocol foresees that it can be registered also on the basis of a simple application. Another difference is that according to the Agreement the procedure has to be followed in the French language, while according to the Protocol, or Agreement and Protocol together, it can be treated either in French or in English. An international trademark has, in each state that is indicated in the application, the same value of a national trademark. The states that make part of the international trademark change often since new states enter to make part of the Agreement or of the Protocol. Until 14.10.2013 the states were the following: States of the international trademark.

2. How to file an international trademark application

The procedure for the registration of an international trademark, managed by the WIPO (World Intellectual Property Organisation), is very complex right from the filing phase, therefore it is highly unadvisable to proceed without the help of an expert. Above all, the international trademark is never autonomous but is always connected to a “basic” trademark, which can be a national trademark or also a Community trademark. The international trademark lasts 10 years from the filing date but for the first 5 years it is linked to the life of the trademark of origin, therefore if this last one loses its validity, the same happens with the international trademark. The procedure, as we have already seen, is regulated by the Madrid Agreement and Protocol, which are two different regulatory bodies. In countries such as ours, which has adhered to both the Agreement and the Protocol, the person who applies for a trademark can choose to file an international trademark application in which: to designate states that have adhered only to the Agreement (in which case the applicable regulations are, precisely, those of the Agreement) to designate states that have adhered only to the Protocol (in which case the applicable regulations are, precisely, those of the Protocol) to designate states that have adhered both to the Agreement and to the Protocol (in which case the applicable regulations are by law those of the Agreement)

If the person who files decides for the third hypothesis he has to be the owner of a registered trademark, for example in Italy. Otherwise, he will be able to validly file an international trademark on the basis of an application for registration, but this will be treated as follows: from the application all the states that have not adhered to the Protocol will be cancelled, since only these last states can be designated on the basis of an application for the registration of a trademark; if the owner expressly declares that he wants the application to be treated as dependent both of the Agreement and of the Protocol, the application is put on stand-by and considered filed only on the date on which the mark applied for is granted.

Once that it is established a) to which treaty our country has adhered and b) to which treaty the countries that we indicate in the trademark application have adhered, we will be able to determine not only which the applicable regulations will be, but also the Forms that will have to be used for the filing of the application, which are different according to the case. The filing procedure is, further, different on the basis of the type of mark that is claimed as basic trademark: whether it is an Italian or a Community trademark. In the first case, the filing will have to take place with the UIBM, by filling in the relative form, filing the relative petitions and paying the fees in part to the WIPO and in part to the UIBM. In the second case, instead, the application will have to be filed with the OHIM.

3. The procedure of registration

Generally speaking, once the application has been filed the states chosen can refuse the registration or file observations within a period that varies from 6 12 to 18 months from the date in which the WIPO has notified the international registration to the National Office of the State designated of filing (check), while, otherwise, the trademark is considered accepted by all the states. If, instead, a refusal is notified by one or more states, an internal procedure opens in that state, which will have to be managed locally. It can happen that a trademark application receives oppositions by different states, in which case in each state there will be the need to act through a local agent to reply to the Office of the state and try to overcome the objections raised. It is difficult to foresee beforehand the potential objections since each state has its internal regulations, and this is why trademarks and classifications accepted by many offices are not accepted by others. Likewise, in some states identical or similar marks can exist, which instead are totally absent in other states. A thorough exam of this primary nature of the filing of the international trademark can imply costs that are higher than the filing itself. If, by intervening at local level the objections raised by the office of the state can be overcome, the international trademark is issued in all the states; otherwise, the international trademark can be refused, totally or partially, in some states, or refused for some classes of goods or services according to the cases that appear. Once the trademark is granted it is published and the holder receives the relative certification of registration. The international trademark will have to be renewed, always with a single renewal application, at the expiry of the 10 years.

4. Regulations

Madrid Agreement of 14.04.1891 and subsequent amendments. Protocol relative to the Madrid agreement of 27.06.1989 and subsequent amendments.