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Application procedure for international registration (IR trademark) - procedure and preparation
Expert article on trademark law
1. Preparing the registration
- Base brand required: An IR trademark requires that a national trademark (e.g. DPMA or IGE) or a European Union trademark (EUIPO) as so-called Base brand is registered or registered.
- Trademark research: It should be checked in advance whether identical or similar trademarks exist in the target countries in order to avoid later conflicts.
- Choice of target countries: You decide in which member states of the Madrid Agreement/Protocol trademark protection should be claimed.
- List of goods and services: The list of basic trademarks is generally adopted. However, since WIPO and the target countries have their own requirements, adjustments may be necessary.
2. Submission of the application
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Registration will about the Office of the Basic Mark (e.g. DPMA, EUIPO or IGE).
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This office forwards the registration to the WIPO (World Intellectual Property Organization) in Geneva further.
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The official registration fees must be paid upon submission (basic fee 653 CHF in black and white / 903 CHF in color; additional fees per class and per designated country).
3. Examination by WIPO
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Formal examination: WIPO checks whether the application is complete and the fees have been paid.
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Checking the list of goods and services: WIPO checks whether the terms are formulated clearly, unambiguously and in an internationally acceptable manner.
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Deviations from the basic mark are possible if the terms do not comply with WIPO specifications.
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Where appropriate, WIPO may request adjustments or reject unclear terms.
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International registration: If the application meets the requirements, WIPO will register the trademark in the International Register and publish it in the WIPO Gazette of International Marks.
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Important: WIPO examines no prior rights and no material obstacles to registration.
4. Examination in the designated countries
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Each designated country examines the trademark according to its national regulations:
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Formal requirements (including directory).
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Absolute barriers to protection (e.g. lack of distinctiveness, descriptive information).
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Partly also Objection procedure or checks for prior rights – depending on the country.
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If one country refuses registration, protection is deemed to be denied there, but remains in effect in the other countries.
5. Duration of protection
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The IR brand is 10 years from the date of registration protected and can be extended for a further 10 years as often as desired.
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Extension and administration are carried out centrally via WIPO, even if the trademark is registered in many countries.
In short:
The IR mark is an efficient procedure for obtaining protection in many countries with a single application. WIPO assumes a formal review including the directory, while the actual substantive review takes place in the designated countries.
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FAQ
An IR trademark (international trademark) is a trademark registration that can be protected in several countries simultaneously through the World Intellectual Property Organization (WIPO).
The basis for this is the Madrid System, which makes it possible to submit a single application to apply for trademark protection in currently over 120 member states.
The basis for this is the Madrid System, which makes it possible to submit a single application to apply for trademark protection in currently over 120 member states.
The IR brand offers numerous advantages:
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Centralized filing: A filing through WIPO covers several countries.
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Cost-effectiveness: Often cheaper than individual applications in each country if the IR mark is to cover several countries
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Unified administration: Extensions and changes can be processed centrally. Only a few official actions need to be performed by local colleagues.
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Legal certainty: The same protection as a national trademark in the respective countries with one exception: During the first five years, the protection of the IR trademark depends on its base trademark.
The IR brand is therefore often the most efficient solutionif you want to protect internationally want.
Eligible applicants are:
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Holders of a already registered national or EU trademark, or
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Applicants who file a trademark application with a national trademark office, for example the DPMA, or with the EUIPO submitted.
This so-called Base brand is the prerequisite for international registration. It serves as the "anchor" to which the IR mark is legally linked. A further requirement is that the applicant has their registered office or a business establishment in the country/territory of the base mark.
The IR mark can be applied for in all countries that Member of the Madrid Agreement or the Madrid Protocol are.
These include, among others:
- the EU member states,
- the USA, China, Japan, Switzerland, Great Britain, Australia, Canada and many more.
When registering, you select the countries in which you want protection.
The registration process takes place in several steps:
- Application for international registration at the trademark office of the basic trademark, for example at the DPMA or the EUIPO (the base brand serves as the basis).
- Examination and forwarding by the Trademark Office to WIPO in Geneva.
- Formal examination and registration by WIPO.
- Forwarding to the national trademark offices of the selected countries.
- Grant of protection or provisional/final refusal of protection (e.g. due to an objection or opposition proceedings) under national law.
The entire process from registration by WIPO usually takes 6 to 18 months, depending on the countries involved.
The period of protection is 10 years from the date of registration and can be extended as often as required for a further 10 years each time.
The extension takes place centrally via WIPO – a major organizational advantage over individual registrations.
Individual countries require compliance with additional requirements to maintain trademark protection, such as the submission of declarations of use.
A trademark lawyer ensures a legally compliant international brand strategy:
- Examination of the basic trademark and its registrability
- Selection of appropriate countries and goods/service classes
- Implementation of a international trademark search to avoid conflicts
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Support throughout the entire registration and examination process and involvement of experienced local trademark attorneys, if necessary
- Monitoring and renewal of trademark rights
How to avoid mistakes in international trademark law high costs and legal losses can cause.
The costs consist of several components:
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Fees of the DPMA or the EUIPO (for the application of the basic trademark and for the forwarding of the IR trademark application)
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WIPO fees (depending on, among other things, the number of countries and classes)
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Legal fees for advice and application
During the first five years after registration, the IR mark is dependent on the base mark.
If the base mark is deleted or successfully attacked, the IR mark also automatically loses its effect.
In such cases, an IR trademark can be converted into a national trademark. However, this is time-consuming and costly. An experienced trademark attorney can help you obtain protection for an IR trademark by converting it into a national trademark in a timely manner.
An international trademark registration is recommended if:
- You products or services cross-border offer,
- You with a international market entry plan,
- She Sales partners or online shops abroad have, or
- Your brand against imitators abroad want to protect,
- and the costs of national trademark applications are higher than the costs of an IR trademark in the respective countries
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