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International trademarks

International trade marks and the REAL Madrid

What do Cristiano Ronaldo and international trade mark registration have in common?

The real Madrid

For brand owners looking to register their trade mark rights in multiple jurisdictions, the Madrid System for the international registration of marks provides a simple and cost-effective route to protection; a one stop shop for the registration and management of trade marks worldwide. As of April 2016, you can protect your trade mark in the territories of up to 97 countries.

Administered by the World Intellectual Property Organisation (WIPO), a UN specialised agency based in Geneva, Switzerland, the Madrid System has helped businesses register and protect more than one million marks worldwide. Through the System, WIPO offers centralised registration and management of internal trade marks. Rather than having to file numerous applications for each separate export market, an enterprise need only fill in one application in one language at one national or regional trade mark office.

Home and away

You cannot use the international trade mark system to pursue registration in an international country until you have applied to register the same trade mark onto the UK or European Community Trade Marks Register. Moreover, the international trade mark will be dependent upon the United Kingdom or European Community trade mark (the “home” trade mark) for the first five years of its life, so it is vital that the home registration is maintained until the 5 year period has ended.

It is important to note that if your “home” registration is refused registration, declared invalid or is revoked within the first 5 years of the filing date of the intentional application, the international application will also be cancelled.

… but what’s the score?

The cost of an international trade mark application depends on which countries you have chosen and how many. You can use WIPO’s fee calculator to work out the cost of your application, however, regardless of which countries you apply to, remember that the fee is always charged in Swiss Francs (CHF).

Once you’ve filed your application, it should take on average, between 12-18 months to process  (although each country has its own time limit for processing applications). Your trade mark registration should last for at least 10 years once finalised and can be renewed, just like UK trade marks.

Red card

As with UK and EU trade marks, your application for international trade mark registration can be contested, therefore, there is no guarantee that your application will succeed in every country you apply to. In the event that your application is contested, you may have to contribute towards the other party’s costs, so it is important that you seek advice from a trade mark attorney. The good news is, however, that if your trade mark application is contested or refused in any particular country, it won’t affect your applications in other countries in any way.

So what do Cristiano Ronaldo and international trade mark registration have in common?

Both are associated with esteemed Madrid institutions that have made a global impact. While Real Madrid represents the leading force in the globalisation of professional football, the Madrid System has led the way in internationalising the world’s economy by centralising a notoriously administrative and complex system.

Register your trade mark today.

Lauren Delin

Lauren Delin

Paralegal at Rocket Lawyer
Lauren is a paralegal at Rocket Lawyer UK. She is a passionate law enthusiast and particularly interested in intellectual property and commercial law. She is committed to producing useful legal templates and making legal services accessible to everyone.
Lauren Delin