International trademark registration is administered by the International Bureau of the World Intellectual Property Organization (WIPO), located in Geneva, Switzerland, which maintains the international register and publishes international registrations in the WIPO Bulletin for international trademarks. The Madrid System is comprised of the Madrid Agreement and the Madrid Protocol and trademark owners, whose products or services are internationally traded, have the right to use this system to register their mark internationally in selected countries, which are parties to one of these treaties. In this way, by registering a trademark at the International Bureau of WIPO, the trademark will have the same effect on the territory of the countries referred to in the application as if the application for registration had been filed directly with the national patent authorities of those countries.
Advantages of the international trademark registration system
- The international trademark registration system provides a number of advantages for the proprietor of the trademark.
- The registration of a trademark at the International Bureau of WIPO shall have the same effect on the territory of the countries referred to in the application as if the application for registration had been filed directly with the national patent authorities of those countries.
- The international registration is equivalent to several national registrations.
- After the registration, other countries may also be added.
- Once an application for a trademark registration has been filed with the office of origin or the trademark has already been registered, the applicant or the owner shall only file one application in one official language and pay only one fee instead of filing separate applications in each patent office in different languages and pay separate fees at each institution.
- An important advantage is that there is only one expiry date of the registration and only one registration to be renewed.
- Changes made after the registration, such as changes in the name and address of the proprietor of the trademark, restriction of the list of the goods and services, and other similar changes may be recorded for the different countries by means of a single formality and payment of only one fee.
- During the period of validity of the international registration, the proprietor of the trademark has the right to designate other countries where the trademark has not received legal protection so far.
- An international registration may be transferred to a new proprietor only in respect of certain designated countries.
- An international registration may be revoked only in respect of one specified country.
Who can apply for international trademark registration?
Any natural or legal person having a nationality in a country party of the Madrid Agreement or the Madrid Protocol, or if such person has an effective and serious enterprise in such a country or has a permanent domicile in that country as well as a natural or legal person, a legal entity with such an enterprise or with a permanent residence in the territory of an intergovernmental organization that is a member of the Protocol or a national of a member of such an organization is entitled to file an application for international registration of a trademark.
Procedure
In order to obtain an international registration of a trademark, it is necessary that the applicant has filed for registration or has already registered a trademark (for example, at the Patent Office of the Republic of Bulgaria, at the EUIPO). The international application should indicate the countries in which trademark protection is sought. It is important to note that the application for registration of an international trademark shall be not filed directly with the International Bureau of the World Intellectual Property Organization (WIPO). It shall be filed at the Office of Origin, which shall certify the identity of the mark, identity of the applicant, identity of the goods and/or services of the basic application/registration with those specified in the international application. The Office of Origin shall also certify the date on which the application for international registration is received and forward the application for international registration to the International Bureau. The Office of Origin shall forward the application to the International Bureau of WIPO for which handling a handling fee shall be paid for that purpose. Also, the application for international registration of a trademark should be filed in one of the official languages of the Protocol: French, English or Spanish. The Patent Office of the Republic of Bulgaria does not accept applications in the Spanish language.
Upon receipt of the application, the International Bureau of WIPO shall verify whether the application complies with the requirements of the Agreement or the Protocol and the General Rules of Procedure. When the international application is found to comply with the relevant requirements, the trademark shall be entered in the international register and published in the Bulletin, after which the International Bureau of WIPO shall inform each designated country (the country where protection is sought).
The Patent Office of each designated country shall carry out the examination of the application in the same way as for any application filed directly with the Office. If there are obstacles or there is opposition to the registration of the trademark, the Office has the right to declare that protection cannot be granted in that designated country. The prior refusal should be entered in the international register and published in the Bulletin, one copy of which must be sent to the proprietor of the international registration. Any subsequent refusal procedure, such as a review of a pre-waiver, opposition, shall be handled directly between the proprietor and the Patent Office of that country. When these procedures have been completed, the relevant Office of that country shall send a declaration to the International Bureau indicating whether the withdrawal has been confirmed or whether it has been wholly or partially withdrawn. This declaration must also be entered in the International Register and published in the Bulletin.
The Patent Office of that country is not obliged to send a positive decision for granting protection.
Period of validity. Renewal.
The period of validity of the international registration shall be ten (ten) years from the date of entry of the international registration in the International Register. Registration may be renewed indefinitely for subsequent periods of 10 /ten/ years.
If you would like to register an international trademark you are therefore advised to contact a trademark attorney for professional advice and preparation of all necessary documents. The trademark attorney in Bulgaria Krasimira Kadieva will gladly assist you during the registration process of your trademark by providing professional advice and preparation of all necessary documents. All the steps in which the service “international registration of a trademark” includes can be found at the following link: https://kadievaip.com/en/services/trademarks/international-trademarks/.
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Legal Disclaimer: This material prepared by Krasimira Kadieva aims to give information about international registration of trademarks. It does not constitute a legal opinion and cannot be interpreted as individual consultation on any concrete facts or circumstances. The advice of an intellectual property specialist should be obtained for specific questions and situations. For more information on the above-mentioned issues and individual consultations, please contact Krasimira Kadieva at 00359 882 308 670 or make an inquiry using the contact form of this website. Krasimira Kadieva is a Bulgarian and European trademark and design attorney. She offers comprehensive analysis and strategy for the effective protection of trademarks as objects of industrial property, both at the time of registration and in violation of the rights thereto. The IP attorney in Bulgaria Krasimira Kadieva assists in all types of trademark registrations by providing professional advice and preparation of all necessary documents.