International Trademark Protection: WIPO and The Madrid Protocol
Trademark protection in international territories significantly increases the export potential of businesses and their competitiveness in international markets. Business owners seeking to expand should be aware that they can now benefit from a globalized trademark registration agreement that enables them to file for trademark protection in multiple jurisdictions simultaneously, and therefore with drastically reduced fees and administrative complications.
The Madrid Protocol is an international system which centralizes and streamlines the filing process for international trademark applications. Its administrative body, the World Intellectual Property Office (WIPO), provides an online platform that facilitates applications for trademark protection in over 100 international jurisdictions using one standardized application and currency (Swiss CHf).
A single registration with the WIPO can thereby give effect to trademark protections in the United States, European Union, Asia, Canada, and countries in the Gulf Cooperation Council amongst many other territories. The time- and cost-saving impact of this concurrent application process is further reinforced by the certainty and predictability provided by a checklist of formal requirements and fixed deadlines of assessments recognized by all countries signed to the Protocol.
Below we summarise the WIPO filing process. In short, the relevant domestic office of the country in which the applicant files their original trademark transmits the international application to the WIPO office, which then transmits the application on to the various countries selected for trademark registration in the application.
Step 1: International Trademark Application
All applicants for international registration of a trademark should first check that they are entitled to file for an international trademark under their domestic laws. Some countries for instance may require the applicant to hold citizenship of the country in which their mark is initially registered, along with several other identity and business conditions.
Subsequent steps in the international mark registration process mirror those when applying for mark registration with the USPTO.
Applicants must provide a description of the goods and services represented by their trademark that either precisely matches or is categorically more restricted than the goods and services listed in their domestic applications. They can use the WIPO’s Goods and Services classification tool to check that your selection of classifications is accurate.
Applicants may then rely on several WIPO search tools to perform a preliminary check of any existing trademarks registered internationally that resemble or may create issues for the registration of their own mark. These include the WIPO Global Brand Database, which holds 73 national and international collections of trademarks, and the Madrid Monitor, which allows applicants to identify the status of all international mark applications to the WIPO.
The WIPO also provides its own fee calculator to help prepare applicants for the costs of filing for international trademark protection through its online platform.
Step 2: Submission to Office of Origin and Formal Examination
You complete and submit an international trademark application as a part of the Madrid Protocol through the WIPO’s digital application gateway eMadrid. The WIPO sends the application information (which includes the territories in which you wish to register, the goods and services represented by your mark, and a copy of your mark, amongst other crucial identifying information) to your relevant domestic ‘office of origin’.
If the local administrative body can confirm information in the international application matches information for the same domestic mark and meets several other formal requirements, the office of origin certifies the application and sends it to the WIPO.
Furthermore, WIPO applications can also be submitted via other “national” intellectual property offices. For example, the USPTO (in the United States) maintains the TEASi system which allows applicants and registrants for US trademarks to submit their mark to the WIPO directly via a USPTO filing on the TEASi system.
Step 3: WIPO Registration and Gazette Publication
The WIPO first checks if an application complies with its international formal requirements or whether there is cause to send the applicant an ‘irregularity notice’ specifying issues with the application and providing the applicant with an opportunity to amend them.
When the international registration body is satisfied with the form of an application, it will allocate the attached mark international administrative identifiers, such as a registration number, and publish the mark in its international gazette (the WIPO Gazette of International Marks).
As in USPTO registration, publication of the mark provides existing trademark owners an opportunity to object to the mark’s registration. Applicants should be mindful that the mark’s existence in the International Register does not signify that it has gained international trademark protection.
Step 4: Substantive Examination
The mark’s publication in the WIPO’s international gazette invites all territories in which the applicant seeks to register their mark to conduct a substantive examination.
The criteria for these assessments are determined by the domestic laws of each member country. That is, each territory searches for substantive issues with the mark, such as the likelihood of its confusion with existing trademarks, according to its own standards and precedents. Each country may in addition publish your mark registration in its own gazette to attract any objections to its registration.
If an international trademark body raises an objection, the WIPO notifies the applicant who must respond directly to the relevant body of the country or territory in which the objection arises. Legal assistance will play a vital role in guiding the applicant on how to leverage the objecting territory’s laws and trademark landscape to resolve or overcome objections, especially since offices of origin are unlikely to provide advice or counsel.
The uncertainty and unpredictability of this stage of international trademark examination is however mitigated by the WIPO’s limitation on the objection period in each country to 12-18 months. A mark receives trademark protection when either the WIPO does not contact the applicant for the entirety of the substantive examination period, or when the applicant receives a ‘statement of grant of protection’ from the WIPO.
Borderless Counsel are experienced with registering trademarks internationally through the Madrid Protocol system and can assist you with your application today. For further assistance contact us today at info@borderlesscounsel.com!