Товарный знак (ТЗ) пользуется полной защитой только на территории той страны, которая выдала ему соответствующее Свидетельство. Чтобы осуществлять производство или продажу товара на международном уровне, необходимо зарегистрировать ТЗ в каждой стране, которая представляет интерес для юридического лица или индивидуального предпринимателя. Ниже вкратце описываются 2 способа.
The Russian Federation has signed the Madrid Protocol and the treaty, so it is much more convenient for a Russian company or individual entrepreneur to file a single application for international legal protection of a trademark for a period of 10 years. It specifies the foreign states in which to register a trademark, provided that they have also signed the Madrid Agreement.
The Madrid system is characterized by the following features:
Such registration is advisable for companies that plan their activities in several countries. This may be related to the opening or expansion of production, development of trade network, conclusion of foreign economic contracts for the supply of products. The right to sell the designation or transfer it to other entities under license should also be taken into account. With a certificate under the Madrid system, the rights to foreign trademarks can be transferred under contracts in other countries.
It is worth highlighting 5 advantages of registering under the Madrid system:
The main disadvantage is that the regime of international protection of a trademark is determined by the law of each country of interest. At the same time it can be protected in different amounts.
Let us highlight 2 other disadvantages of the international registration:
If a company decides to obtain certificates in each country separately, it will have to submit several applications. Consequently, there is a need to translate the documentation into the official languages of each state, as well as to pay the national fees. This registration option can only be considered optimal for applicants who plan to operate only within one state.
The certificate for the object of commercial property will be valid within the territory of a separate country. This means that the sale or transfer of exclusive rights is also possible only in compliance with the borders. It will not be possible to extend the territory of the certificate, as the company will have to submit an independent application to the international patent office.
The international fee is 653 Swiss francs for a single color or 903 Swiss francs for a colored trademark (at the start of 2021). There is also an additional fee, the amount of which varies from state to state + additional fee for the classes of the International Classification of Goods.
Examination of documents in FIPS is paid in the amount of 4900 rublesFor each class of the ICS over three you will need to pay an additional 400 roubles. After a positive decision is taken, the final state registration fees are paid, the amount of which depends on the countries in which protection of the designation is sought.
If you already have a registered trademark in Russia and the countries of interest are registered in the Madrid system, the best option would be to register an international trademark. It is economically advantageous and simplifies the procedure of making changes about the data of the right holder and prolongation of the trademark term.
If there is no basic registration and there are only a few countries or they are not included in the Madrid system, the best option would be the national registration of the applied-for designation.
The term of international trademark registration takes on average from 6 to 12 months, but does not exceed 18 months (except for the countries where the Madrid Protocol provides for the possibility of increasing the opposition period beyond 18 months), as the examination period at the patent offices is limited. It is up to each country to decide on its examination. The examination period is usually 12 months, and as a result the IB of WIPO sends either a Request or a Decision on granting international trademark protection for each country separately. The aforementioned body extends the period of examination of the application by about 4-6 months.
No, because there is no single system and no single office which performs trademark registration worldwide. But it is possible to register a mark in as many countries as possible if there is no similarity with the registered marks. It is better to register a trademark in those countries where you intend to manufacture or sell the product.
No, protection is granted only to a trademark whose right holder has been notified by WIPO or by a decision of the patent office of a certain country. Once the international registration is filed and the applicant has received a certificate, the IB of WIPO sends notification of the international registration to all the countries designated in the application. The countries' patent offices then conduct an examination, exactly as for a trademark application under the national registration procedure.
The application shall include a statement from the applicant, designation and description thereof, list of product groups according to the Nice Classification. At the stage of filing the application it is necessary to determine the list of countries and pay all the fees before the end of the formal examination. The application is filed with the national patent office with the payment of registration and filing fees. In some cases (e.g. when applying for protection in the USA) it is necessary to submit an additional form - declaration of the intention to use the trademark. During the examinations the distinctiveness of the trademark is established, the fragments of the trademark are examined in order to establish legal protection.
If all the examinations are successful, the company will acquire exclusive rights to the designation in several states.
The applicant's data, the designation to be registered, the name of the country, the type of activity must be provided, and all fees must be paid. International registration services are provided by national patent attorneys, who deal with the patent office of a particular country. The attorney submits the application to the office.
No, verification can only be done on request in an individual country and on the WIPO database. There is no single procedure.
No, because the time depends on the decision of a particular foreign country to conduct an examination of the applied-for trademark. If it is carried out, the period of registration is on average 8-12 months. After 18 months, the right holder can be sure that the rights of third parties are not violated and there will be no objections from them, which will be an obstacle to the registration of the designation.
After a change in the legal entity or the legal address of the applicant, as well as when the mark is transferred to a third party, the right holder shall submit a corresponding application to the Office, which makes the changes to the Registry. It is necessary to submit supporting documents, e.g. annexes on the change, an agreement, and to pay the fees.
No, as the international application is filed only for exactly the same designation which is specified in the basic trademark. If it is changed, a new national application for registration of the mark must be filed in the country which signed the agreement and where the right holder is registered.
Yes, since at the trademark application stage it is possible to file a parallel application for registration under the Madrid system and to conduct the proceedings. However, the international application is dependent on the basic application for five years and the Madrid application also ceases to exist when it is cancelled.