International Trademark Registration

International Trademark Registration
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International trademark registration is facilitated through the Madrid System, which is governed by the Madrid Agreement and the Madrid Protocol. This system allows trademark owners to seek protection for their marks in multiple countries by filing a single international application with the World Intellectual Property Organization (WIPO).

Here are the general steps involved in the international trademark registration process through the Madrid System:

### 1. **Eligibility Check:**
– Ensure that you are eligible to use the Madrid System. Typically, the applicant must have a connection to a member country of the Madrid Agreement or Madrid Protocol, such as being a national or having a real and effective industrial or commercial establishment.

### 2. **Basic Trademark Registration:**
– Before applying internationally, you should have a basic trademark registration or application in the home country (known as the “basic application” or “basic registration”). This serves as the foundation for the international application.

### 3. **Select Member Countries:**
– Choose the member countries where you want to seek trademark protection. These can be countries that are parties to the Madrid Agreement, the Madrid Protocol, or both.

### 4. **File an International Application:**
– File an international trademark application with the International Bureau of WIPO. This can be done online using the Madrid e-Filing system. Include details such as the mark, the list of goods/services, and the priority claim based on the basic application/registration.

### 5. **Examination by WIPO:**
– The International Bureau of WIPO examines the international application to ensure it complies with the formal requirements. If there are issues, they will communicate with the applicant for corrections.

### 6. **Transmittal to Designated Countries:**
– If the international application meets the requirements, WIPO transmits the application to the intellectual property offices of the designated member countries.

### 7. **National Examination:**
– Each designated country conducts its own examination of the trademark application according to its national laws and regulations. They may issue office actions or require additional information.

### 8. **Grant of Protection:**
– If the trademark office in a designated country approves the application, it grants protection to the mark in that country. The protection is based on the international registration.

### 9. **Renewal and Maintenance:**
– Keep track of renewal deadlines for the international registration. Renewal is typically required every 10 years. Renewal fees are paid to WIPO, and the protection in each designated country is extended accordingly.

### Important Considerations:

– **Centralized Management:** The Madrid System allows for centralized management of international trademarks. Changes to the ownership, address, or renewal can be recorded centrally with WIPO.

– **Dependence on the Basic Application/Registration:** The international registration is dependent on the continued existence of the basic application or registration for at least the first five years. If the basic registration is canceled during this period, the international registration may be canceled as well.

– **National Examination and Protection:** Each designated country independently examines and grants protection based on its own laws and procedures.

Before initiating the international trademark registration process, it’s advisable to seek legal advice and ensure that the selected countries are part of the Madrid Agreement or Madrid Protocol. Professional assistance from trademark attorneys or agents with experience in international trademark law can be valuable for a smooth and successful registration process.

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