International Trademark

Many people want to grow their business internationally and think about getting an international trademark. The Madrid Protocol, which consists of two treaties, offers a way to register trademarks globally. It allows trademark owners to apply in one place and extend their application to other countries. This system makes managing trademarks easier by using one local office, one language, and one payment in one currency. The Madrid System takes your application from your home country and applies it to other member countries.

Each trademark request is treated as a separate application in each country. The trademark office in each country reviews the application based on its own rules and procedures. If there are any objections, a local lawyer with Power of Attorney must handle them, not your home country lawyer.

Since WIPO applications can be more costly for most users, we suggest registering in each country individually. However, if you plan to apply in many countries at once, using the Madrid System might be a better option for you.

This system makes trademark registration easier. One application in one language creates multiple applications in different languages through various trademark offices, covering nearly 80% of global trade. The Madrid System operates in 114 regions across 98 countries, including the European Union (EU) and the African Intellectual Property Organization (OAPI).

The process for obtaining a European Union Trade Mark (EUTM) is different from getting local trademarks in terms of time and efficiency. By submitting a single application to a central authority, a trademark owner can secure protection in all EU member countries, which is cost-effective. This approach also prevents the cancellation of the trademark for non-use in other member countries if the business is focused on just one or two countries. However, the application must be accepted by all member countries; otherwise, it will be rejected across the entire EU. In some cases, the trademark owner can apply for protection in individual countries.

The European Union Intellectual Property Office (EUIPO), previously known as the Office of Harmonization in the Internal Market, is the authority responsible for registering EUTMs and is located in Spain.

The Madrid System, which includes the Madrid Protocol and the Madrid Agreement, serves as a central hub for trademark registrations, allowing trademark owners to extend their applications to other countries. However, the process can be a bit complex:

Applicants must meet specific criteria to apply for this type of protection. Only individuals or legal entities with a genuine and active industrial or commercial presence in, or who are domiciled in, or are nationals of a country that is a member of the Madrid Agreement or Protocol, or who have such a presence in, or are domiciled in, the territory of an intergovernmental organization that is a member of the Protocol, or are nationals of a Member State of such an organization, can file an international registration application.

For instance, if you reside in the USA, you would register your trademark there and then extend it to other countries through this office. The same process applies if you are a national of another country. The "country in which the trademark you wish to extend is registered" refers to your home country or domicile as mentioned earlier.

To extend a trademark to other members of the Madrid System, you must submit the request to WIPO via the trademark's Office of origin. Each country where you want to expand will review the trademark and can either accept or reject it. Once accepted by member countries, WIPO publishes, records, and notifies the designated parties and issues the certificate. Each trademark office individually handles the examination, objections, and oppositions. From the registration or recordal date, the mark's protection in each Contracting Party is the same as if it had been directly filed with that Party's Office. If no refusal is notified to the International Bureau or if a refusal is later withdrawn, the mark's protection in the concerned Contracting Party is the same as if it had been registered by that Party's Office.

It's important to note that if the trademark office objects to your application or a third party files an opposition, the attorney from your base country will need to hire a local attorney, as they cannot respond to the trademark office themselves. If you've already submitted a WIPO registration and need an attorney to address an objection or opposition, please fill out the contact form below.

The European Union Intellectual Property Office (EUIPO) manages trademarks and designs across the EU to support innovation.

A European Union Trademark (EUTM) provides similar benefits to national trademarks, protecting owners' rights to use their marks in commerce. EUTMs are more cost-effective to obtain and renew, with a simpler registration process compared to national trademarks, especially when considering the need for local registration in each territory. Additionally, EUTMs are valid throughout the entire EU, even if the EU expands, without requiring reapplication.

For businesses operating in a single region, a national trademark might be more advantageous as it can be more easily managed by a local attorney. If a mark is only used locally, obtaining an EUTM for exclusivity across all member countries can be challenged by any national trademark within the EU. If cancellation or invalidity proceedings are needed, those before national courts are generally more expensive than those before the EUIPO for an EUTM.

The Organisation Africaine de la Propriété Intellectuelle (OAPI) is a centralized system for registering intellectual property in 16 French-speaking African countries. Established by the Bangui Agreement on March 2, 1977, OAPI aims to enable member states to collaborate, share resources, and exchange ideas to address economic and social development needs while promoting literary and artistic expression. OAPI assists member countries in organizing administrative strategies to protect property rights, including copyrights, trademarks, and patents.

The OAPI treaty provides trademark protection in the following countries: Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Republic of the Congo, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal, and Togo.

The African Regional Intellectual Property Organization (ARIPO) was established to enable English-speaking African countries to collaborate by sharing resources and information on industrial property issues. The main goal of ARIPO is to promote technological progress that aids the economic and industrial growth of its member nations. This involves coordinating strategies that benefit all member countries, ensuring there is a skilled workforce knowledgeable in industrial property law, and providing training and development opportunities in this field.

The ARIPO treaty offers trademark protection in the following countries: Botswana, Lesotho, Liberia, Malawi, Namibia, São Tomé and Príncipe, Eswatini, Tanzania, Uganda, and Zimbabwe.