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UK and European Trademark Attorney

International Trademarks

If trademark registration is needed in a number of countries, you have two options:-

1. To file national trademark applications in each of your countries of interest; and/or

2. To file an international (Madrid Protocol) registration, designating countries of importance.

The International (Madrid Protocol) registration system allows for a single tradmark application to be filed, designating up to 90 countries (correct as of July 2013).

The main benefit of the Madrid Protocol Registration is that is it is administered centrally, through the World Intellectual Property Office (WIPO), which, in most cases, avoids the need to engage local attorneys in each state, therefore reducing costs.

A further benefit of the international trademark registration system is that additional countries can be added at a later date, allowing you to administer your International Portfolio as easily and as cost efficiently as possible.

  • Albania
  • Antigua and Barbuda
  • Armenia
  • Australia
  • Austria
  • Azerbaijan
  • Bahrain
  • Belarus
  • Belgium
  • Bhutan
  • Bosnia and Herzegovina
  • Botswana
  • Bulgaria
  • China
  • Columbia
  • Croatia
  • Cuba
  • Cyprus
  • Czech Republic
  • North Korea
  • Denmark
  • Egypt
  • Estonia
  • European Union
  • Finland
  • France
  • Georgia
  • Germany
  • Ghana
  • Greece
  • Hungary
  • Iceland
  • India
  • Iran
  • Ireland
  • Israel
  • Italy
  • Japan
  • Kenya
  • Kazakhstan
  • Kyrgyzstan
  • Latvia
  • Lesotho
  • Liberia
  • Liechtenstein
  • Lithuania
  • Luxembourg
  • Madagascar
  • Mexico
  • Monaco
  • Mongolia
  • Montenegro
  • Morocco
  • Mozambique
  • Namibia
  • Netherlands
  • New Zealand
  • Norway
  • Oman
  • Philippines
  • Poland
  • Portugal
  • South Korea
  • Moldova
  • Romania
  • Russia
  • San Marino
  • Sao Tome and Principe
  • Serbia
  • Sierra Leone
  • Singapore
  • Slovakia
  • Slovenia
  • Spain
  • Sudan
  • Swaziland
  • Sweden
  • Switzerland
  • Syria
  • Macedonia
  • Tajikistan
  • Tunisia 
  • Turkey
  • Turkmenistan
  • Ukraine
  • UK
  • USA
  • Uzbekistan
  • Viet Nam
  • Zambia

 

Filing an International Trademark Registration

In order to file a Madrid Protocol Application you must meet the criteria to be an Applicant. You must be either a UK national or resident, or a UK company or a company with a "real and effective place of business" in the United Kingdom. Albright Patents file Madrid Protocol Registrations via the United Kingdom Intellectual Property Office (UK IPO) or Office for Harmonization in the Internal Market (OHIM).

In order to file a Madrid Protocol Registration, the Applicant must have a UK or community trademark application/registration for the same trademark and corresponding or broader goods/services. This is called the “home” application or registration. If this "home" registration is less than 6 months old, it may also be possible to use it to claim "priority", that is backdate the Application to the date of earliest filing, essentially extending your protection  by up to 6 months.

The UK IPO/OHIM forwards the newly filed Madrid Protocol Registration to the World Intellectual Property Office (WIPO) in Geneva, where the registration is examined for compliance with formalities and classification.

Publication of an International Trademark Registration

After examination by the World Intellectual Property Office (WIPO), the Madrid Protocol Registration is published in the Official Gazette and the Registration Certificate issued.

National Designations in an International Trademark Registration

The Madrid Protocol Registration will cover the countries specified in the international registration.

After examination, WIPO sends the international trademark registration to the national trademark offices in each of the designated countries. The Application is then treated like a national trademark application and is examined according to the relevant national laws.

Each national trademark office has a period of up to 18 months to notify WIPO of any examination objections and/or the filing of third party opposition. If they will not complete their examination prior to the 18 month deadline, or if the Application is still vulnerable to third party opposition after the 18 month deadline, the national trademark office must notify WIPO. If objection/opposition is encountered, local Attorneys have to be appointed in the country concerned.

Renewal of an International Trademark Registration

The Madrid Protocol Registration will remain in force indefinitely, subject to the trademark being used in relation to the goods/services for which it is registered and the timely payment of renewal fees at 10 yearly intervals.

It is important to remember that certain countries covered by the Madrid Protocol have special requirements following registration, for example, the USA requires that a Statement of Use is filed between the fifth and sixth year following registration. It is important that all these deadlines are monitored as failure to submit the correct documentation can mean you lose your rights.

Albright Patents will ensure all these deadlines are monitored to ensure your rights are maintained.

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