The world is a large place and sometimes it's not enough for a business to just stay in its home market. How can a brand receive protection as a trade mark internationally? This article will give an overview of the international trade mark registration system.

Unfortunately, there is no “World Trade mark”, which allows you to obtain trademark protection in all countries in the world. Instead, each territory has its own requirements. Nevertheless, there is a system in place for an “international” registration of trade marks, which allows a person, on the basis of a “basic application” and with the intermediation of the World Intellectual Property Organisation (WIPO), to secure the protection of a trade mark in multiple countries.

This procedure is designed to lower the costs and lighten the administrative burdens for international applicants. By using one Trade Mark attorney in the jurisdiction of the basic application and communicating only with WIPO, you can secure a trade mark in more than 100 countries. Achieving such results with individual national trade marks would be extremely expensive, as each territory would require a local representative to be hired at potentially considerable cost. In addition, most territories require communication in their own local language, whereas communications with WIPO can be in English, French or Spanish.

The stages of an international trade mark registration:

Basic application and choice of countries

To make a basic application, the applicant must have a connection with a member state that is part of the international registration system. You must either have a business (a real and effective industrial or commercial establishment), be domiciled, or be a national of such a state, and the basic application must be made in that state. For a business based in Bulgaria, the basic application could be for a Bulgarian trade mark, or a European trade mark.

It must be considered carefully in which international territories you are interested in, as each one can add additional risks, costs and effort for you. It is recommended to conduct a trade mark search for each target territory in order to anticipate and overcome any obstacles in advance, instead of spending much more money later on to try and deal with any unexpected problems.

International application and national phase

Via the receiving office of the basic application, an international application is made to WIPO, where WIPO assigns it with a unique number and publishes it in its official journal. At that stage, you do not have protection yet – from here, the trade mark application must be approved by the specific territories you are seeking registration in.

In the National Phase, each target territory will review your application under its own laws and rules. If there are no issues, the trade mark will be registered. If any problems arise, you may have to hire a local representative to assist you with the proceedings before the relevant national authorities.

Successful registration

After the registration, WIPO will make an official record of the territories where your trade mark enjoys protection. You will need to maintain the registration by paying renewal fees every ten years – the fees are paid centrally to WIPO. If you lose interest in a certain territory, you can decline to renew the trade mark there and thus the fees will be lower.

What to watch out for

In the first five years of its existence, international registrations are directly dependent on the basic application. This means, that if the basic trade mark is cancelled or revoked, the corresponding international registration will also be lost for all territories. This is why it is extremely important for the basic application to be thoroughly researched in advance and the registration is difficult to attack.

Be prepared for the procedure to take some time – all national authorities have their own procedures with varying lengths. Usually it takes between one and two years.

Not all countries in the world are members of the system for international registrations. In countries like Argentina, the UAE and Saudi Arabia, as well as others, separate national applications will be needed.

Separately, when running an international business, it always needs to be considered that in the event of any disputes, the expenses might be significant. In some countries (for example, the USA, Japan or Singapore), attorney fees and awards for damages can be very high. To avoid running into situations where such expenses might be incurred, it is important to consult a specialist early on in the process and develop a strategy that minimises any risks.

Contact our team for expert advice in the field of trade marks  

This article first appeared in our bulgarian-language column in инженер.bg.