You can have your trademark protected in countries that are signatories to the Madrid Agreement or Protocol with a single application. More than 110 countries in and outside Europe (including major economies such as the USA, China, India and Japan) are signatories to these treaties. With a single application, you can opt for protection in all signatory states, or in the whole of the EU, in one go. You can also file an application to obtain protection in only specific countries of commercial interest.
International trademarks are registered by the World Intellectual Property Organisation (WIPO) in Geneva, Switzerland. An international application must always be based on a previous basic registration (e.g. a Benelux trademark or an EU trademark). The application is therefore always made via the originating office. For a Benelux trademark, this is BOIP. If you file an international application within six months of the Benelux application, you can claim the priority of the Benelux application. International applications are filed with WIPO via the BOIP website. BOIP checks that your application is compliant and identical to your basic Benelux application. WIPO then takes over processing of the application.
International trademark registration generally has two important advantages:
- An objection to your trademark in a given country (refusal or opposition) only affects the protection afforded by the trademark in that country. This is a particular advantage over an EU trademark, which is subject to the 'all or nothing' principle: refusal or opposition in one EU country immediately affects the entire application. This poses a significant risk, which can be mitigated by building an EU trademark into an international registration.
- Flexibility is another advantage of an international trademark registration. If your client starts operating in new markets, you can broaden the protection by means of a territorial extension. All of your international protection continues under a single registration. This makes it easier and ultimately less expensive to administer because you only need to renew a single registration.
EU trademark via an international application
You can also obtain protection for the whole of the EU in one go by means of an international application.
The application is made in the same way as an 'ordinary' international application. You first file a Benelux application and then (within six months with priority) you can file an international application via BOIP. When making that application, you tick the relevant boxes: select the EU and, if your client also operates outside Europe, select the other relevant countries.
An advantage over directly filing an EU trademark application is that protection for all countries selected, both inside and outside the EU, is covered by a single application. This makes it easier to administer a trademark portfolio and also often results in less costly renewal.
Another advantage is that it moderates the tougher aspects of the 'all or nothing' principle of the EU trademark. A successful objection in one EU country is deadly to an 'ordinary' EU trademark and often leads to the application being converted into a large number of separate, and often expensive, national applications. However, if the EU trademark is part of an international registration, conversion for the desired EU countries can be done much more cheaply and more easily within that international application.
When filing an international application in which you have selected the EU, it is advisable also to designate the EU countries that are most important to your client separately. This is because it is easier to maintain and enforce national rights.
The fees for an international trademark application depend on a number of factors. They include the number of classes, the countries you select and whether the trademark is in colour.
Below is a list of the fees that make up the overall cost:
You can calculate the costs using the WIPO fee calculator.
The costs are given in Swiss francs because WIPO, which is responsible for international applications, is based in Switzerland.
A list of the countries that are signatories to the Madrid Agreement or Protocol is given here.
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. For further information about the consequences of Brexit for Benelux trademarks and designs, click here
It is important to note that an international registration depends on the basic registration for the first five years. If that basic registration lapses, it will usually be possible to convert the international registration into national applications for the countries in question.
International trademark: conclusion
The main advantage of an international trademark registration is that protection can be arranged fairly inexpensively and easily in a large number of countries, both within and outside of the EU. This can also be arranged at BOIP.
For more information contact our Information Centre or WIPO.