International Trademark Registration

International Trademark Registration

National trademark registration provides protection only within the relevant country. If a business enters new markets, it is necessary to separately protect the name, logo, or other sign in the countries where the brand will actually be used.

There are several main ways to obtain international protection:

• filing separate national applications in selected countries;
• registering a regional trademark if the relevant system covers several countries;
• using the Madrid System for the international registration of trademarks.

The Madrid System allows an applicant to file one international application, use one of the system’s working languages, and pay a centralized set of fees. However, the final decision on protection is made by the office of each designated country or region.

International registration does not mean automatic worldwide protection of a brand. The applicant independently selects the countries and regions where protection is required.

Basic Trademark for International Registration

To file an international application, the applicant must have a basic trademark — a national or regional application or registration filed through the applicant’s office of origin. WIPO expressly states that the basis for an international application may be not only an already registered trademark, but also a pending application for registration.

The applicant determines:

• the trademark to be submitted for international protection;
• the list of goods and services;
• the classes under the Nice Classification;
• the countries or regions where protection is required;
• the strategy for further territorial expansion of the brand.

After the application is checked by the office of origin, it is forwarded to WIPO. The International Bureau conducts a formal examination, records the sign in the International Register, and notifies the offices of the designated countries. Each office then carries out its own examination.

Advantages of the Madrid System

Main advantages:

• one international application for several selected countries and regions;
• a centralized filing procedure through the office of origin;
• the ability to choose the required jurisdictions instead of registering the brand in every country;
• centralized payment of international fees;
• the possibility of subsequent expansion of protection to new countries;
• centralized management of the international registration for a number of subsequent procedures.

After international registration, WIPO allows additional countries to be added through the subsequent designation procedure — further territorial extension of protection.

Benefits of Working with Prikhodko & Partners

We help:

• conduct a preliminary trademark search before filing an international application;
• determine the list of goods and services and the relevant classes;
• select countries for registration taking into account the business markets and development plans;
• calculate estimated official fees;
• prepare the international application under the Madrid System;
• support communication with trademark offices during the registration process;
• analyze provisional refusals and determine further actions;
• extend an existing international registration to new territories.

How to Choose Countries for International Trademark Registration

It is advisable to focus on countries:

• where goods are already sold or services are already provided;
• where the business plans to enter the market in the near future;
• where the main customers or partners are located;
• where products are manufactured or stored;
• where there is a risk of brand copying;
• where franchise or distribution development is planned;
• where the brand has commercial value for further scaling.

If the business later enters an additional market, the international registration may be territorially extended to other members of the Madrid System.

Dependence of International Registration on the Basic Trademark

During the initial period, the international registration is linked to the basic application or registration.

If, during this period, the basic trademark ceases to have effect in whole or in part in the cases provided for by the Protocol, this may also affect the international registration to the same extent. After the five-year period has expired, the international registration becomes independent of the basic trademark.

Therefore, the status of the basic application or registration is particularly important during the initial stages of international protection.

Transformation of an International Registration

Under certain conditions, the Madrid Protocol provides for the possibility of transforming an international registration into national or regional applications, which may help preserve the international registration date.

The Ukrainian IP Office also separately describes the mechanism of such transformation for international registrations whose protection extended to Ukraine.

This mechanism is particularly important in situations where the international registration ceases to have effect in whole or in part due to events affecting the basic trademark.

Refusal of International Trademark Registration

After notification of the international registration, each designated party has a prescribed period to carry out examination and may issue a provisional refusal.

In many cases, the period is one year, while for certain members it may be 18 months or longer in situations provided for by the applicable rules.

A refusal in one country does not automatically result in the loss of the international registration in other countries.

Possible reasons include:

• similarity to earlier registered trademarks;
• descriptive nature of the sign;
• lack of distinctive character;
• non-compliance of the list of goods and services with the requirements of a particular office;
• the existence of absolute grounds for refusal;
• requirements of the national legislation of a particular country;
• the need to provide additional explanations or documents.

Each selected country independently decides whether to grant protection, so a provisional refusal in one jurisdiction does not automatically terminate protection in the other countries.

Trademark Registration in the European Union

Important: the Madrid System does not mean that designating one European country automatically provides protection throughout the entire European Union.

To cover the territory of the European Union, the relevant regional EU designation must be selected, or another appropriate registration procedure must be used.

Before choosing a strategy, it is necessary to assess whether the business requires unified protection throughout the EU or protection only in selected European countries.

Trademark Registration in the United States Through the Madrid System

The United States is also a member of the Madrid System, so it can be designated in an international application.

At the same time, the USPTO applies its own trademark requirements, which means additional office actions or refusals may arise during examination.

When selecting the United States as a territory of protection, it is important to take into account national requirements regarding the list of goods and services, the sign itself, and subsequent trademark use.

Use of an International Trademark

After registration, it is also important to take into account the requirements of individual countries regarding actual use of the trademark.

The periods and consequences of non-use may differ depending on national law, so a universal rule cannot be applied to all jurisdictions.

Before entering a specific market, it is advisable to check:

• requirements regarding actual trademark use;
• the period after which the registration may become vulnerable due to non-use;
• which evidence of use should be retained;
• whether additional declarations or documents must be filed;
• local features of trademark rights enforcement.

Cost of International Trademark Registration

Costs may include:

• the basic WIPO international fee;
• individual or supplementary fees for selected countries;
• fees depending on the number of classes of goods and services;
• costs of preliminary trademark search and analysis;
• legal support for preparation of the application;
• costs of responding to office actions or provisional refusals issued by individual offices;
• costs of subsequent territorial extension.

WIPO applies a basic international fee and, depending on the selected members of the system, supplementary or individual fees. Therefore, the exact budget should be calculated after determining the geographical scope and classes of the future registration.

Conclusion

International trademark registration allows Ukrainian businesses to build brand protection in foreign markets through a centralized procedure. Before filing an application, it is necessary to determine the required territories, check the sign, correctly prepare the list of goods and services, and calculate the official fees. At the same time, each selected country conducts its own examination and independently decides whether to grant legal protection.

Planning to expand your brand into foreign markets? Submit a request on the Prikhodko & Partners Law Firm website. A lawyer will help determine the countries and classes, check the trademark, calculate the costs, and prepare the international application.