International registration of Trademarks

For the individualization of goods or services of an enterprise, a Trademark (TM) is used. Before submitting TM for registration in another country, it is necessary to register it in the country of origin, or at least apply for such registration.

In case of refusal of registration on the national application, the international registration will also be denied. The cancellation of the registration of TM in the country of origin for any reason during the first five years of the duration of the international registration also leads to the cancellation of the international registration. However, after five years, international registration becomes independent of the registration of TM in the country of origin and continues to be valid.

To ensure the legal protection of TM in other countries, there is the Madrid system (Madrid Agreement and the Madrid Protocol) as well as the European Trademark System, which allows obtaining trademark registration in the European Union.

Important advantages of the Madrid system are: filing an application in a single language; payment of a single international fee for obtaining registration in the countries of the Madrid Agreement; no need for professional services in each of the foreign countries. Such options significantly reduce the cost of paying foreign specialists and the amount of fees for filing an application with the WIPO International Bureau. Patent attorneys of foreign countries might take action only at the stage of examination of an application for TM in the event that interferes with its registration.

It is worth noting another important advantage of the Madrid system, which allows TM copyright holders to make further changes (for example, addresses, names, registration of assignment of trademark rights) to the international registration and extend its duration by submitting one application. However, filing an international application is not a guarantee of obtaining registration in other countries of the Madrid System, since the examination of an international application is carried out in each country in accordance with its national legislation.

Important advantages of the European trademark system are: the ability to file an application without a national application or registration of TM in the Russian Federation; no substantive examination to identify the rights of third parties; registration of TM in the absence of protests of third parties.

International registration of TM is extended by paying a fee every 10 years without limiting the number of renewals.
Thus, both the Madrid system and the European trademark system, serve as a preferable solution for protecting TM abroad. However, the procedure for international registration of TM is complex and requires participation of specialists in the protection of intellectual property rights, the services of which Erfis, an intellectual property protection company, is able to provide.
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