International trademark registration

As you know, registration of a trademark has a territorial effect. It is understood that after the registration of a trademark in one or another country, legal protection will be valid only within the boundaries of a single country.

To protect a trademark abroad, there are two options:

1. To register a trademark in each country taken.
2. Register a trademark according to the international system.

The second option of trademark registration is more acceptable.

International trademark registration will simplify and speed up obtaining legal protection of a trademark abroad. Representatives of our law firm “PRIKHODKO & PARTNERS” will help you with this.

Trademark registration under the Madrid Agreement

Trademark registration in accordance with the Madrid Agreement and its Protocol is carried out by the International Bureau of the World Intellectual Property Organization (WIPO).

The international registration of a trademark has the same force as the application for registration, which is legitimized in each country according to the national procedure. If over time you need to increase the number of countries in which trademark protection is provided, you can submit a territorial extension application.
If you plan to sell your product in countries that are members of the Madrid Agreement, it is very important to go through all stages of the international procedure.

To ensure international trademark registration, you need:

• Obtain a certificate confirming the registration of a trademark in one of the participating countries that are part of the Madrid system. In particular, you can register your trademark in Ukraine.

It is advisable to get the certificate itself, since registration at the stage of examination allows you to identify possible risks and eliminate them. On average, the term of obtaining a certificate is 1.5-2 years. Of course, the lawyers of “PRIKHODKO & PARTNERS” will help to shorten the specified term, however, you should not delay the start of the procedure and consider all the terms.

• Get a statement from the International Bureau of WIPO.

The application can be obtained through the National Patent Office. You need to indicate in the application the countries in which you plan to obtain legal protection for the trademark.

• Pay the necessary fees.

The size of the fees directly depends on the number of countries in which the trademark will be registered.
The lawyers of our company “PRIKHODKO & PARTNERS” will help you calculate the terms of the procedure and the amount of fees.

Trademark registration is valid for 10 years from the date of application. After this term is over, it can be renewed every 10 years an unlimited number of times.

Important: if the trademark has not been used in the declared country for 5 years, there is a risk of termination of its registration. Thus, before choosing a method of trademark registration in other countries, it is necessary to take into account the peculiarities of national legislation.

Among the advantages of registering a trademark under the Madrid Agreement:

• Ability to submit one application for legal protection in all EU countries.
• The application is drawn up in one of the official languages of the European Union, without the need for translation into other languages.

In addition to registering a trademark under the Madrid Agreement, the following options are available:

• Registration through the Single Trademark of the European Union.
• Trademark registration in each country.

If you plan to operate in the US, a separate US trademark registration will be required. The term of registration is about 8-12 months. The cost depends on the number of classes of registration, the group of goods/services for which the trademark will be used.

What should be remembered when registering an international trademark?

Registration of a trademark involves considering the following factors:

1. Dependency on registration/base application

A trademark is considered dependent on the national basic registration/application for 5 years from the date of international registration. If it is canceled, the international registration/application of the trademark in the countries where it was protected is also canceled.

2. Conversion of application/registration

The Protocol to the Madrid Agreement provides for the possibility of converting an international registration/application into a national one.

3. Refusal for registration

If a national agency of a country refuses to register a trademark, this does not affect the decision of the other agencies.

4. Transfer of rights

International trademark rights are transferred in respect of all classes or countries where the registered trademark is active.

5. Territorial expansion

The effect of the trademark can be territorially extended on the territory of the necessary countries after its international registration.

Do you want to enter the international market while protecting your brand? Contact the lawyers of our company “PRIKHODKO & PARTNERS”. We specialize in international trademark registration, as well as other issues related to brand protection.

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