Register an International Trade Mark

Status on August 26, 2024

This system cannot be used to protect a mark in a country outside the Madrid Union.

List of countries not belonging to the Madrid Union (in which the trademark must be protected in each one, individually)

If you want to protect your trademark in other foreign countries, this multiple designation system can be very useful and cost-effective, particularly when there are several countries of the Madrid Union involved, having in mind that the local filing fees would costly if you directly apply for your trademark in each individual country and follow the processes separately in each national Office.

Filing Language

An IR can be filed in any one of the three languages; English, French or Spanish.

Multi-Class Application

An international trademark may include as much classes as it has been included in the basic registration.

Centralised System

. International Registrations under the Madrid System are managed by a single Office; the WIPO. After definitive registration of the International Trademark, this system will also simplify the subsequent designation of other countries, as well as the renewals, changes in the name or address of the holder or assignments of the IR, which are recorded by the WIPO. Transfers of IRs for only some of the designated countries, or for only part of the goods or services, or to limit the list of goods and services with respect to only some of the designated Offices, is also possible as the system allows these steps to be taken by the WIPO. The Madrid System substitute national registration in each of these countries and therefore the International Trademark Registration would consist of a bundle of national trademark registrations.

Proceedings Before National and Regional Offices

. Although the IR consists of only one application, this is not a unitary system. This means that examination and opposition proceedings are managed by each national or regional Office, therefore the protection may be refused by some of the designated Offices, or it may be limited or renounced with respect to only some of the designated states. Additionally, cancellation actions or any infringement action of an IR are to be brought separately in each of the countries concerned.

Dependence on the Basic Mark

An IR would be dependent on the basic mark in your Office of origin during a period of 5 years from its registration date, which means that if your basic regional or national trademark is refused, withdrawn or cancelled, the IR will also cease and no longer have effect. After the expiry of the mentioned 5-year period, the IR will become fully independent of the basic trademark.

The value-added services we provide for international trademarks can be summarized as follows:

Plan Your IP Strategy

We can help you plan your IP protection strategy in the related territories, according to your needs and budget, but always with the aim to obtain the widest protection as possible by also avoiding common filing mistakes that could suppose a threat to the validity of your IP rights in the future.

Availability Search

We will conduct a free basic search in all European registers or an in-depth comprehensive search in multiple territories to help you finding a legally available trade mark for your new product or business before we apply for an IR and using a new product or business name by checking any earlier trademarks that could conflict with yours by finding if they are identical or confusingly similar. Our trademark search service can save you time, and a fortune in wasted design and incurred advertising costs, efforts, plus evade your potential legal liability in using by mistake a very similar name to someone else’s registered trademark, advising on risks to use a given sign in terms of infringement.

IR

Filings

We would electronically file the International application on your behalf, foreseeing the relevant aspects and the correct manner it should be applied for. We have fixed fees for International Trademark filings with the WIPO so you can foresee the estimated costs for your international protection. – Restriction: We can only file an IR in your name if, whether you or your company has an address or a real and effective industrial or commercial establishment in the territory of Spain (based on a Spanish Trade Mark) or in any other country of the European Union (based on a EU Trade Mark). If you have no said address, the filing must be done from the country’s Office of origin of the holder and we may only intervene by representing the EUTM or the Spanish part, where any of our jurisdictions aredesignated by your IR.

Prosecution

We will monitor your IR during all the process until there is a final decision and duly inform you of every official communication we receive from WIPO, or we can coordinate through our local associate of a designated Office, when needed, any advice or procedural steps to take, as well as by sending you the publications and informing you of all deadlines to have in mind, including reminders and next renewal due notices.

Defense. – Office Actions

Whether your international trademark is provisionally refused because an objection by a designated national Office or if an opposition is filed against your IR in any country or you want to oppose a conflicting application, we will coordinate the defense through our local associate of a designated Office by responding the Office action where your mark has been objected or opposed if it is needed during the ex officio examination, opposition and appeal proceedings, or we may directly defend your IR designating Spain or the European Union if they have been objected or opposed during the administrative procedure. – Litigation. In enforcement, we can represent and assist either the claimant or the defendant in trademark rights infringement proceedings or unfair competition issues with the Spanish and European Courts.

Watching Services

We can provide our clients with a paid annual watch service on the countries and territories designated by the IR, keeping an eye on what third parties are attempting to register. If we find a new published application that may be potentially conflicting with your prior rights, then we will send you an alert proposing you to oppose within the statutory deadline.

Other Actions

We can handle any associated matter on IRs such us the recordal of licenses, change of names and ownership transfers.

IRs that designate the EU (Madrid Protocol) will have the same legal effect as a EUTM and as if they were filed directly before the EUIPO, which must follow the same process and comply with the same requirements. The International Bureau of the WIPO will require the EUIPO, in the same way as all national Offices must accomplish, that a provisional refusal based on absolute grounds or on an opposition filed by a third party, must be notified to the International Bureau by the EUIPO within the common time limit of 12 months or within 18 months by Spanish OEPM, and WIPO will notify the holder of this issue along with the deadline given by the designated Office to remedy any deficiencies or to respond to this official action in defense of the provisional refusal of the IR designating the EU or Spain.

Designation of the EU

Note that the designation fee for an IR designating the European Union through this route, can be more expensive than if a EUTM is filed directly with the EUIPO.

Representation Before the WIPO

All persons or legal entities outside of the EU and those from the EU without a domicile in Spain, or EU members without a Spanish domicile for notifications are required to be represented by a local representative. Non-EU members always need to be represented by a registered Official IP Agent (not only a representative). Note that where the EUTM application is opposed or objected, the applicant may be requested to appoint a registered European representative to validly respond to the provisional refusal; if he is not domiciled, has no real, effective industrial or commercial establishment in the European Union. We would be glad to be your agent! You can enquire us about our representation and related services.

Filing of the Basic National or Regional Trademark

First, your trademark must be filed or registered in your Office of origin: If you are located in Spain, you should file a Spanish trademark or a UE Trade Mark application.

International Request

The international registration must be requested from the same Office of origin, indicating the countries which are members of the Madrid Union where you would like to protect your trademark, and then the request will be transmitted to the International Bureau of the WIPO, publishing this application in the weekly Gazette of International Marks.

Transmission of the Request

The WIPO will send your International trademark application to each national trademark Office of the countries you have designated, and where each application will be handled according to the normal registration procedure of that country.

Examination by Each Office

At this stage, your application will be examined as to the grounds for refusal, which can be objected by the national or regional Office or be challenged by third parties. As a result, your trademark may or may not be registered in certain countries. If these elected national trademark offices do not indicate a provisional refusal within a given time period (usually within 12 or 18 months from the date of request), the IR will be definitively registered, valid and with effect in those countries. Any procedure following the refusal, such as review, appeal or defense to an opposition, must be carried out directly at the designated Office concerned, although this national Office must send a statement to the WIPO once all the proceedings are concluded, indicating the status of the provisional refusal; confirmed, or totally or partially withdrawn, which will be published in the International Gazette.

Future Management of IRs

Renewals of IRs, subsequent designations of national Offices, changes in the register, etc. are also easy matters to manage at the WIPO.

What Can Be Registered?

An international application must contain a representation of the trademark, which must be identical to the basic application or registration; the list of designated countries in which the mark is to be protected and the list of the goods and services the mark should cover, which must be identical to or narrower than the list in the basic application or registration.

Who May Apply?

An international application can be filed only by persons or legal entitieshaving a real and effective industrial or commercial establishment in, or are domiciled in, or are a national of, a country which is party to the Madrid System, or who has such an establishment in, or is domiciled in, the territory of a regional Office which is a party to the Protocol, or is a national of a country covered by said regional Office. Natural persons or legal entities without this necessary connection through establishment, domicile or nationality with a member of this union cannot use this system.

Mandatory Use

We must refer to each local designated Office and its jurisdiction as to complying with the obligatory use; however this is to be made usually within five years from the date of registration.

Validity of an IR

Exclusive rights are conferred for ten years and IRs can be renewed indefinitely for further periods of ten years. Rights in an IR date back to the date of request in those designated countries.

Renewals

IRs may be renewed in respect of all the designated Offices or in respect of only some of them.

Information and Requirements to File an International Trademark Registration:

• The full name and address of the applicant(s)-holder(s).
• The nationality or country of establishment of the applicant(s)-holder(s).
• Spanish or European VAT Number (NIF/NIE), only if the applicant is Spanish or established in a country of the EU.
• Full details of the basic trademark registration or application (national or regional) on which the IR will be based.
• List of the countries you would like to designate from the Madrid System.
• Nice classes to be applied for which were formerly included in your basic mark (45 classes of goods and services).
• The details of the application on which Convention Priority is to be claimed, if appropriate, within 6 months from first application date, along with the Certificate of Priority.
• Your instructions on how we should proceed and approval of the likely costs.
• Your payment by bank transfer within 20 days from application and invoice date.
• A POA signed by the applicant(s)-holder(s), where no legalisation is required.