International IR Trademark
International Registration (IR)
An international registration (IR) with the World Intellectual Property Organization (WIPO) in Geneva enables a simplified international application in the form of the IR trademark.
Madrid System
The basis for international registration is the Madrid System. The Madrid System is based on two contractual agreements, the Madrid Agreement Concerning the International Registration of Marks (MMA) and the Protocol Relating to the Madrid Agreement (PMMA).
Participating States
The Madrid System currently has 108 members and covers 124 states. These are: Egypt, Albania, Armenia, Australia, Azerbaijan, Bahrain, Belgium, Bosnia and Herzegovina, Bulgaria, China, Denmark, Germany, Estonia, Finland, France, Georgia, Greece, United Kingdom (Great Britain), Iran, Ireland, Iceland, Italy, Japan, Kazakhstan, Kyrgyzstan, South Korea, Croatia, Cuba, Latvia, Liechtenstein, Lithuania, Luxembourg, Monaco, Montenegro, Morocco, Macedonia (FYR), Moldova, Netherlands, Netherlands Antilles, Norway, Austria, Poland, Portugal, Romania, Russia, Zambia, San Marino, Sweden, Switzerland, Serbia, Singapore, Slovakia, Slovenia, Spain, Syria, Tajikistan, Czech Republic, Turkey, Turkmenistan, Ukraine, Hungary, USA, Uzbekistan, Vietnam, Cyprus.
In addition, thanks to the membership of the African Intellectual Property Organization (OAPI), its members can also be registered via the Madrid System. These are Equatorial Guinea, Benin, Burkina Faso, Ivory Coast, Gabon, Guinea, Guinea-Bissau, Cameroon, Congo, Mali, Mauritania, Niger, Senegal, Chad, Togo and the Central African Republic.
Select Your Preferred Appointment Now:Free initial consultationRequirement
The prerequisite for international registration is the existence of an already registered trademark, which serves as the basic trademark for the international registration. This can be a national trademark or a Union trademark.
With the international registration, the protection of the basic trademark is extended to the states selected in the international registration.
Geographical Scope
When registering internationally, it must be specified to which countries the protection of the trademark should be extended. There are currently 124 countries to choose from.
International registration is therefore not a “globally valid” trademark, but rather a modular system where the desired countries can be selected.
Procedure
The application for international registration can be submitted directly to WIPO or via the trademark office with which the underlying trademark was registered. In the case of submission to the trademark office of the underlying trademark, the latter forwards the application to WIPO.
WIPO examines the application and, if all requirements are met, enters the trademark in the international register. WIPO then publishes the registration in the “Gazette des marques internationales”. The trademark is now filed as a request for protection in each of the designated countries.
From this point in time, the trademark offices of the countries concerned have the option of refusing protection under their national laws within one year (in individual cases also within 18 months). If protection is granted, the international registration offers the full rights of a national trademark.
Peter HarlanderHarlander & Partner Rechtsanwälte „Aufgrund der langen Vorlaufzeit bei internationalen Markenvorhaben ist es besonders wichtig, frühzeitig an die Markenanmeldung zu denken.“
Term of Protection
The protection of a Union trademark is valid for a period of 10 years and can be extended indefinitely for further 10-year periods by paying the renewal fee.
Fees
The fees depend on the number of classes to be registered and the selected states. The fees vary from state to state. All fees are quoted in Swiss francs and are therefore subject to currency fluctuations from a German or Austrian perspective.
Legal Fees
Our costs for the international registration of trademarks also depend on the number of selected states. If the international registration is commissioned in a package with the registration of the basic trademark, the international registration usually only causes very manageable additional costs due to the achievable synergies.
Advantages of International Registration
The main advantages of international trademark registration are the elimination of the requirement for a service address or a legal representative in the respective countries, the central possibility for registration and payment of fees.
Select Your Preferred Appointment Now:Free initial consultationAlternative: EU Union Trademark
Especially in Europe, it is significantly cheaper to register a Union trademark than to carry out an international registration of individual EU states. Nevertheless, the international trademark is also important in Europe:
If the registration of a Union trademark is not possible because earlier national trademarks stand in the way in individual EU states, then this problem can be solved by an international registration of the other states.
Although international registration for several EU countries is significantly more expensive than an EU trademark, it significantly reduces the risk of collision with earlier trademarks due to the smaller geographical scope.
Not all European countries are members of the EU. The most prominent examples are Switzerland and Great Britain. The easiest way to obtain trademark protection in these non-EU countries is to register an international trademark.
