The perks of International Registration

Application strategies

When a trademark is presently and will only be used in one country, the national application route is typically preferred to minimise costs and the risk of potential conflicts. If you use your trademark in several European Union Member States, you should consider filing an EU trademark application.

But what is the best way to protect a trademark in many different territories? Let's say you want to protect your trademark not only in the EU, but also in the USA, the UK, Switzerland, Russia, China and Thailand. Do you have to file one EU trademark application and six national trademark applications? That would be exceedingly complicated and expensive, if only due to language barriers and formal requirements specific to each nation.

Fortunately, in such cases you can file a request for an International Registration with the World Intellectual Property Organization (WIPO). The Madrid Union currently has 114 members and covers 130 countries. The EU, too, is a member.

So, to protect your trademark in the EU, the USA, the UK, Switzerland, Russia, China and Thailand, you can file one single application with the WIPO (provided all countries or territories are members of the Madrid Union). You can find a list of members here (link: https://www.wipo.int/madrid/en/members/). The WIPO will examine the application and send it to the designated countries, which in turn will examine it according to their national law and approve or reject it.

This way a bundle of trademark rights is created that can be managed jointly via the International Registration (further details below). A local representative will have to be involved only if problems arise in one country, for instance because the national office issues an objection.

It should be noted, however, that the International Registration only protects the trademark in the countries that have been expressly designated and does not automatically offer "international" protection.

What do you need for an International Registration?

International Registrations always require a so-called basic application or registration in the country or territory in which the applicant has their registered office (or, in the case of a natural person, their main residence). In addition, there are a few other connecting factors. An Austrian applicant first needs an Austrian or EU trademark application or registration, based on which the International Registration can then be established. This means that the applicant owns a basic application or registration plus the International Registration.

Additional requirements must be observed for some countries. The USA, for example, requires a "Declaration of Intention to Use" to be submitted with the request for International Registration.

Dependence on the basic application/registration

According to the current legal situation, the International Registration is dependent on the existence of the basic registration for a period of five years from the date of registration. The choice of the basic application and its existence are, therefore, extremely important. If the basic registration ceases to exist fully or partially within these five years, the International Registration will also be cancelled fully or partially as the case may be. In such a case, the International Registration could be transformed into national or regional applications that would enjoy the same priority as the International Registration. Naturally this is associated with corresponding costs and effort.

Always important: costs and effort

Depending on the type and number of countries in which the trademark is to be protected, an International Registration is usually significantly cheaper than individual applications. This applies both to the application process as well as future administration (e.g. in the case of amendments, but also renewals).

The International Bureau of the WIPO generally charges a basic fee for applications and renewals. In addition, country-specific supplementary fees are charged for each designated territory.

As everything can be processed via one system, the administrative effort is lower. However, the system is complex; if you don't work with the system regularly, you may end up with undesirable results. It is worth researching the processes thoroughly or hiring a professional.

Subsequent designation

Trademarks live and, ideally, grow. Should your trademark grow beyond the originally designated territories, the International Registration can be extended quite easily at a later date by subsequently designating any other member states of the Madrid System.

In a nutshell

If your trademark is to be protected in several territories, an International Registration may be the right thing for you. We will be happy to advise you on the filing strategy to obtain the best protection as efficiently as possible.

authors: Johanna Wiesinger, Dominik Hofmarcher