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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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