Filing an international trade mark via WIPO Madrid

If you are seeking worldwide trade mark protection, it is not possible to apply in all countries via a single application. Additionally, if you wish to file an international trade mark through the Madrid System, you must already have an existing registered trade mark in either the UK or EU (or both), which will then provide you with the basis for filing internationally. You can then apply to register the same mark for global protection through the World Intellectual Property Office (WIPO) Madrid System.

If you are hoping to file a trade mark internationally but do not currently have a registered mark to form the basis of your application, we suggest applying for registration in the UK first (as opposed to the EU, unless that is your final intention). Subject to the success of this, an application can then be filed under the Madrid System, where the Mark will first be considered by WIPO, before it is then passed on to the relevant countries for additional consideration and subsequently, the final registration.

Although you can file a trade mark in any country around the world, directly with their national office, the Madrid System enables you to file and maintain a mark in up to 128 countries in a cost-effective manner. You may file a single application in one language – this convenient and structural process eliminates the need for excess correspondence via multiple local national agents. Further, this filing enables you to widen the geographical scope of your mark via a subsequent designation (by adding countries to an existing registration).

Please note that you will need to cover the official filing fees for each country you want to register in (1), fees for classes of goods and services, the cost for which will vary depending on the country (2) and finally, any legal fees if you wish for us to assist you with your application (3).

Once registered, your trade mark will be valid for a period of ten years. Further costs will be involved in renewing or modifying your mark.

If you have any queries regarding the above, or you require assistance with a trade mark, please do not hesitate to get in contact with us.

Tel: 02380 000190

E-mail: tmr@trademarkroom.com

By Lora, an Intellectual Property Law Consultant at the Trademarkroom

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