Trade Marks

Apply for an International Trade Mark Registration to register your Trade Mark in up to 96 countries

January 06, 2016

The international Trade Mark registration system (known as the Madrid System) enables a trade mark applicant to file a single trade mark application covering a large number of countries worldwide. Algeria, Cambodia and The Gambia recently became the latest members of the Madrid System, bringing the total number of countries available via an International trade mark application to 96.

The Madrid System now offers trade mark applicants impressive global coverage across Asia, Africa, Europe, the Middle East, the Pacific Rim and the Western Hemisphere. It enables brand owners to extend their brands internationally to some of the world’s largest economies, such as China, the EU, Japan, Russia and the US, with relative ease through a single international trade mark application.

The key advantages of obtaining an international trade mark registration are:

One application - There is no need to file separate national trade mark applications in each country of interest;

Reduced costs - As a result, obtaining an international registration is generally significantly cheaper than filing separate national or regional applications;

Faster registration - international trade mark applications are registered relatively quickly, in around 3-6 months, following which the national trade mark offices of the designated countries have up to 18 months in which to grant or refuse the national registration. For many countries, this is often quicker than the examination process for direct national applications. After the 18 month period, registration is automatically granted if a decision has not already been made by the national trade mark offices;

One language - An international application can be filed in one language, regardless of the national languages of the countries designated on the international application;

One renewal fee – international registrations are renewed centrally at the International Bureau, removing the administrative burden and higher costs associated with renewing individual national trade mark registrations at the respective national trade mark offices;

Centralised administration – Any changes to an international registration, such as a change in name, ownership or address, are made centrally at the International Bureau;

No need to appoint a local associate – Unless a national objection or opposition is received (via the national trade mark offices of the designated countries), there is no need to appoint a local associate for each national designation, which can help to reduce costs;

Additional countries – The international system allows trade mark owners the flexibility of adding additional countries to an international registration at any point in thr future, in order to extend coverage to suit current and future commercial activities.

Existing trade mark portfolios can therefore be expanded and enhanced by ‘rolling out’ an international trade mark registration to new market territories of interest as and when required, as part of an international business strategy.

An international trade mark registration can therefore be an important tool in the global development of a brand. The International trade mark system can help individuals and businesses to achieve international commercial objectives by enabling them to register their trade marks throughout the world relatively quickly, easily and at a comparatively low cost.

The list of countries available via the international trade mark (Madrid) system can be found here.

If you have any questions concerning international trade mark registration, or would like more information about the benefits of applying, please get in touch with your usual contact at Swindell & Pearson or with Natalie Dyer at natalie.[email protected]. Natalie is a trade mark advisor and is based at our Derby office.