Registering an international trademark

If you wish to register a trademark in a country other than Italy and not belonging to the European Union, you can decide, if it is possible and convenient, to proceed with the registration of the international trademark.

In spite of the terminology which would suggest the contrary, the international trademark is not a trademark with worldwide validity; at the moment, there does not exist a trademark characterized by this kind of extraterritorial “global” effect. In the case of the international trademark, you will have to identify the States of interest in which to obtain protection and the trademark will be examined separately by the Trademark Office of each State designated in the application. At the end of the different phases of the examination, your trademark can obtain protection in all or part of the States designated in the application.

The difference between an International Trademark and a Foreign National Trademark

They are two different registration proceedings.

In the case of the international trademark, with a single application in a unique language I can file my trademark application to WIPO, a United Nations agency based in Geneva.

• The international brand presupposes the existence of a trademark (basis of the international application).
• It is possible to ask the international registration only in those States that have adhered to the conventions on the subject of the international mark (in the world, they are the majority).
• With a single application, I can ask that my trademark be registered in several countries. At a later date and when the need arises, I can also file an application for the subsequent designation of my international trademark, asking that its effectiveness be territorially extended to other States.
  For example: in May 2016, I file an international trademark application asking that my trademark is protected in India and the United States. After a couple of years I want to enter into other markets, such as China and the Russian Federation: I can ask that the effectiveness of my international brand be also extended to these countries.

In the case of the foreign national trademark, with a single application (or more applications, if it is a so-called “single class” system, in which each class must corresponds to a trademark application) I can ask the registration in one State only.

• The application is filed to the Trademark Office of the State in which I wish to obtain protection.
• The national trademark filing is indispensable if protection must be obtained in those countries that have not adhered to international trademark agreements (for example, Brazil or Hong Kong, at least at the moment).
• Nothing forbids, however, from registering national trademark applications everywhere.
• In order to file a foreign national trademark it is not necessary that a trademark already exists: for example, I am an Italian citizen but no one forces me to register a trademark first in Italy and then in other States. If my interest is China nobody forbids me to file a trademark in China as my first brand.

Proceeding of registering an international trademark

The choice of the international registration may give many advantages: with a single application, in the chosen language, it is possible to simultaneously ask for protection in many States and to pay the official fees in a unique currency (Swiss francs); there will be a renewal (for all the States designated in the international registration) and the possibility of extending subsequently in other Countries the effectiveness of the international application.

The official languages for filing the international registration are English, French and Spanish.

The international trademark is based on the existence of a basic mark: the application for the international registration shall be filed with the Trademark Office of the basic trademark (for example, UIBM if it is an Italian trademark or EUIPO if it is an EU trademark) and fees must be paid both to the Trademark Office of the basic mark (national fees) and to the WIPO (international fees, in Swiss francs); this latter is composed of a fix part and a variable part, depending on the States designated in the application and the number of classes.

WIPO, after having checked formal correctness of the international trademark application, shall record the same in the International Register and will notify the registration to the Trademark Offices of the States designated in the application. Such Trademark Offices shall examine the application and may issue an objection against international registration in their territory. Any acceptance of the objection issued by one or more Trademark Offices of the designated Countries (as well as the acceptance of any opposition filed by third parties in one or more designated Countries) does not affect in any way the validity of the international registration in the other Countries designated in the application.

Even after registration, the holder may file a subsequent designation in order to obtain protection in further States (so called “subsequent designation”).

Costs for the registration of an international trademark

It is not possible to provide you with a price list for the costs of an international trademark because there are too many variables that come into play (one or more States, which States, whether and which searches to perform, number of classes). We invite you to contact Eva Troiani law firm for more information.

Validity of the international trademark

The international trademark, registered with the World Intellectual Property Organization (WIPO, Geneva), lasts ten years from the date of registration and is renewable for further ten years, potentially ad infinitum.

The date of registration of the international trademark coincides with the date of filing of the international application to the Trademark Office of the basic application for registration. The international application is received by the EUIPO within two months of the date on which the Office of origin received the application; otherwise, the date of registration of the international trademark will be the date in which WIPO has received the application.

Remember, however, that the registration of an international trademark is not always possible. The State of your interest could be not adherent to the International trademark conventions (Madrid Agreement and Madrid Protocol), making it impossible to protect your trademark under the international registration procedure. For example, at the moment, Brazil, Saudi Arabia and the United Arab Emirates (by way of example) cannot be designated by an international registration.
You can find the updated list of Countries which can be protected with the international trademark registration at the following WIPO link.

Remember that a trademark can be protected EVERYWHERE: where it is not possible to register an international trademark, it will always be possible to file a national trademark application. For example, it is true that you cannot protect your trademark in Brazil through the international registration, but you can always do it with a Brazilian trademark.

suggestions to be followed before registering a trademark abroad
A well-known Italian proverb says: “When in Rome…as the Romans do”. The principle also applies in the kaleidoscopic world of brands because not all the States apply the same rules, therefore, EVERY STATE HAS ITS OWN TRADEMARKS.
First of all, it is necessary to apply some sound principles of good sense and to adapt your business to the local uses; for example we suggest you to enquire, before thinking to expand your business, on what you are allowed to sell.

Let’s see some examples:

• No one can reasonably expect to sell alcohol or pork meat in Iran or Saudi Arabia, countries in which it is impossible to obtain the registration of trademarks which distinguish these products.
• For similar reasons bar services and night club services are not applicable in UAE.
• In Iran, according to Islamic Codes, trademarks comprising portrait of “women” in any form are prohibited from registration.
• According to the article 10,8) of the Trademark Law of the People’s Republic of China “signs detrimental to socialist morals or customs, or having other unhealthy influences shall not be used as trademarks”.
• In Russian Federation only legal persons, non-profit organizations and physical persons conducting entrepreneurial activity can be trademark owners.
• In Chile it is not important the use of a trademark, which – unlike what happens elsewhere – cannot be subject to cancellation actions due to non-use, even though it has never been used.

The list of differences could go on but it is important to remember that, when we plan to expand our activity abroad, it must be included as a key element the study and verification of the brand in the country in which we will export our products or services. Therefore…EVERY STATE HAS ITS OWN TRADEMARKS.

Suggestions to be followed after registering a trademark abroad

Also for the international trademark we suggest, once the application is filed, to enforce the trademark protection with surveillance actions. Thanks to a network of professionals in every country of the wordl, Eva Troiani law firm is able to perform quickly this task and to inform you of any illegal action that may occur. It is essential for your business!