Registering Your Trademark Internationally
Registering in every country is an almost impossible task. If you are doing business online, it can be difficult to know ahead of time which countries the people shopping at your site come from and therefore where you may need to protect your trademark. Having said that, though, there are ways to register your trademark internationally without having to go through the process of registering with individual countries.
When You Need to Use International Registration
International registration is not a requirement. For example, all of your customers come from the U.S., it’s probably not worth your time and money to register internationally. But if you sell online, your trademarked products or services are available—at least viewable—internationally. So, if you are planning on working worldwide, international registration is a good idea. Doing business in multiple countries means you should probably use the international trademark registration process.
The International Trademark Registration Process
The international trademark registration system is called the Madrid system or Madrid Protocol. It is administered by the World Intellectual Property Organization (WIPO) located in Geneva, Switzerland.
The Madrid system allows you to have a trademark protected in several countries by filing an application directly with your own member country. The international trademark registration is equivalent to an application or a registration of the same mark in countries you designate. The trademark office of the designated countries must allow the protection of the mark.
The Madrid system also simplifies management of your trademark or service mark, since changes or renewals of the registration can be recorded directly, without making those changes in each country of registration. You can also designate registrations in additional countries through the Madrid process.
Basic requirements
You may file an international application if you meet the following two requirements:
1. Entitlement
To be entitled to use the Madrid System, you must first have a connection with one of its members (known as “Contracting Parties”). This connection will determine your Office of origin (national/regional intellectual property office). You must submit your international application through this Office of origin.
To meet the entitlement requirement, you must:
– have a business (i.e., a real and effective industrial or commercial establishment) in a Contracting Party, or
– be domiciled in a Contracting Party, or
– be a national of a Contracting Party
For example, if you are a national of, or have a business in Australia, your connection will be with Australia (a member of the Madrid System) and you must file your international application through Australia’s Intellectual Property (IP) Office.
If you have a connection with several members (for example, you may be a national of Mexico living in the United States of America), you can choose any one of these countries to file your international application.
To determine your eligibility to file an international application under the Madrid System, use the International Application Simulator.
2. Basic application/registration (“basic mark”)
If you have the necessary connection to a Madrid System member (as outlined above), you must have either applied for or obtained a trademark registration with the IP Office of that member (i.e., your Office of origin). A local trademark registration is required before can you file an international application for your mark through the same Office (your Office of origin).
Fees and payment
The fees payable in connection with an application for international registration comprise:
– the basic fee;
– a complementary fee for each designated Contracting Party; and
– a supplementary fee for each class of goods and services in excess of three.
For certain Contracting Parties, the complementary fee is replaced by an “individual fee”. To confirm whether or not a Contracting Party applies the individual fee (and the amount of such fee), check the list of Individual Fees.
For an overview of the basic, complementary, and supplementary fee amounts, see the Schedule of Fees.
