International trademark registration
An international trademark registration gives you relatively inexpensive protection quite easily in over 110 countries, both within Europe and elsewhere. It is up to you which countries you choose.
Benefits international trademark
- Over 110 countries
Valid in countries that are parties to the Madrid System. Choice of over 110 countries within Europe and elsewhere, including big economies such as the US, China, India and Japan.
You select only those countries that are relevant for your business. You can increase the number of countries of your international trademark registration at a later date.
Bundling a number of national registrations in a single international registration makes it more convenient and cheaper to manage.
1. Based on a national trademark registration or EU trademark
You need to have a basis before filing an international application. A national trademark registration or EU trademark, or an application for one, are all valid bases. If you already have a Benelux trademark or have filed an application for a Benelux trademark, for example, you can extend this application or registration to other countries that are parties to the Madrid System. This is called an international application. If you have a Benelux trademark or an application for one, the international application takes place through BOIP. If you have a national trademark registration or an application for one in another country that is party to the Madrid System, you can extend that application or registration via the authority in the relevant country.
The details in your national trademark registration and the details in the application for your international trademark registration must be identical.
You are not obliged to apply for international trademark registration for all the goods and services that are covered by your national trademark registration. You can choose do so for only a selection of them. It is, however, not possible to register more goods and services than in your national registration.
2. Online filing via BOIP
If you are using a Benelux trademark registration or an application for one as the basis, you must file your international application online via BOIP. You state the countries that you want your trademark registration to cover in the application. You can choose from over 90 countries.
Impact of Brexit: EU trademarks and international applications and registrations designating the EU are subject to measures put in place since 31 December 2020 that ensure trademark owners do not lose their existing rights. In short, this means that registered trademarks will be automatically converted and that, for ongoing applications, an application can be filed in the UK within the nine months following the end of the transition period, i.e. within nine months from 31 December 2020, and the priority date will be retained. More information is available from the websites of EUIPO and UKIPO.
BOIP checks that your international application is compliant and that it is identical to your Benelux basis application. We then forward your application to WIPO (World Intellectual Property Organisation), the official authority that manages the international trademarks register.
If you file your international application within six months of applying for your Benelux trademark registration, you can claim priority for your international application. The advantage of this is that protection for your trademark starts on the same date in the countries covered by your international application as those covered by your Benelux application.
You can claim priority for all countries that are parties to the Treaty of Paris or members of the World Trade Organization. This amounts to almost every country in the world.
3. Assessment by WIPO
WIPO checks that your application meets the formal requirements, e.g. that the goods and services are clearly described and the application has been paid for. If all the formalities are in order, your application is entered in the international trademarks register and published in the WIPO Gazette of International Marks. WIPO then informs the relevant authorities in the countries for which you have filed your application. These authorities will each examine your application separately.
4. Individual examination
Depending on the outcome of examination of your application by the individual countries, your trademark is:
- registered for all goods and services, or;
- registered for some of the goods and services, or;
- refused completely.
BOIP has no influence on this process and has no knowledge of the status of your application. You can monitor the process yourself via the WIPO Madrid Monitor.
It is best to use the services of an IP professional for any communications with the authorities in the relevant countries. In some countries, including the US, it's compulsory to appoint an IP professional as an intermediary.
If you are planning to file an international application, please take account of the following:
- If your application for a Benelux trademark registration has not yet been finalised and a trademark registered, there may be repercussions for your international application. For example, if a definitive refusal has been issued against the application for your Benelux trademark registration, your international application will automatically be revoked. The cost of filing the Benelux application are not refunded. The costs for the international application are partially refunded. It is therefore wise to gauge risks and options in advance. An IP professional can advise you on this.
- Your national and international application or registration are dependent on each other for the first five years, running from the date of your application. If, for example, a restriction of goods and services applies to your national application or registration, the same restriction automatically applies to your international application or registration. If your national application is cancelled, your international application is also cancelled. Five years after your application, your international registration will no longer be dependent on your initial national registration, or developments therein, and the international application will remain unchanged.
Fees for international trademark registration
You can apply for registration of a trademark in one or more non-Benelux countries (international registration) via BOIP. This takes place via WIPO (World Intellectual Property Organization).
The fee for BOIP forwarding your application to WIPO is 100 Swiss francs (± 84 euros). In addition, the basic fee for an international registration and the fees for registering your trademark in the relevant countries apply. You must pay WIPO directly. Current fees can be found at www.wipo.int. You can use the WIPO fee calculator to calculate the cost of an international registration.
Renewal or modification of an international trademark
Just like your Benelux trademark registration, your international trademark registration needs to be extended every ten years (renewed). You can submit your request for renewal directly to WIPO.
You can easily submit most modifications concerning your international trademark registration online via the WIPO website.
In the case of some modifications, you should submit your request to BOIP. For example, in the case of judicial cancellations and transactions (transfers, licences, rights of pledge and attachments), for which the request is submitted by someone other than the registered holder or registered representative.
Proceed as follows
- Complete the WIPO form (PDF);
- Send the form to BOIP via the contact form;
- Append the necessary supporting documents, such as transfer deed, licence certificate, deed of pledge or declaration by the attaching party;
- Clearly state in your message that the modification concerned is one that cannot be submitted to WIPO directly.
You can extend your international trademark registration to include other countries. This is called territorial extension. The fee for territorial extension consists of a basic fee plus an amount that depends on the countries you choose. You must submit the request for territorial extension directly to WIPO. For more information and up-to-date fees, see the WIPO website.
You run a lower risk with an international application in comparison to an application for an EU trademark. It is 'all or nothing' when it comes to an EU trademark application. In other words, you receive protection in all 27 EU countries in one go, but similarly, your application is refused if an opposition is successful in any one of the 27 countries. In this case, the whole application will have been moot and the costs are not refunded. This principle does not apply to international applications: your application will be examined separately in each country. This means, for example, that if your application is refused or opposition is filed in one of the countries, it might still be possible to receive protection in the other countries named in your application.
It is however possible to mitigate the risk by 'embedding' an EU trademark in an international registration. This is done by filing an international application with the EU as such specified in it. More about the EU trademark