The idea of being able to protect a trademark "worldwide" may sound appealing, but in reality, there is no such thing as a global trademark registration. Registration in all countries of the world is, for budgetary reasons, within the reach of very few multinationals. Trademarks are territorial, which means that their protection is limited to the countries or regions where they have been registered. This means that a trademark registered in Spain is not necessarily valid in Colombia, the United States or Japan, unless specific registrations are made in those territories.
However, there are tools that facilitate registration in multiple countries. One of the most useful is the Madrid System, which is managed by the World Intellectual Property Organization (WIPO). This system allows, through a single application, to designate protection in several member countries of the convention. In today's article we explain in more detail what it consists of.
First requirement: you need a base brand.
Before using the Madrid System, it is essential to have a basic trademark in one of the countries adhered to the agreement. This means that the trademark you wish to register internationally must be previously applied for or registered in the country of origin.
The international trademark must be identical to the basic trademark, both in its denomination and in the designated products or services. That is to say, you cannot extend or modify the protection at the time of applying for the international trademark. This underlines the importance of strategically planning the initial registration.
If you are here in Spain, our recommendation is that the basic registration should be as a European trademark, preferably (with the EUIPO). The reason for this recommendation is that the European trademark has a generally much faster granting process than the Spanish trademark (usually 4 months versus 8, if there are no objections), which can help to ensure that the basic trademark is already registered when I apply for the international one. This is especially important for priority claims and the dependence of the international trademark on the basic trademark, as explained below.
Parenthesis: if you don't know how to register a trademark in Spain, at this guide we explain it to you.
Dependence on the base brand for five years.
One of the most critical aspects of the Madrid System is the so-called dependency of the international trademark on the basic mark during the first five years. In practical terms, if the basic mark is refused (never registered), annulled (cancelled once granted), expires, or is revoked for any reason within that period, all related international designations will also be invalidated.
This point underlines the need to conduct a thorough investigation before registering the basic trademark in the country of origin. A search reportThe use of a legal tool, such as the ones we do at Bamboo.legal, can prevent future problems, minimizing the risks of oppositions or legal conflicts. There are free tools such as TMView with which you can make a first analysis.
Similarly, although the Madrid System allows the basic mark to be a not-yet-registered application, the reality is that the risk of the whole house of cards falling down is usually greater. Our advice is, as far as possible, to try to base the international mark on an already granted registration, so that the dependency is not so weak.
The application process: three key steps.
The procedure for processing an international trademark consists of three main phases:
- Before the office of origin: the holder must file the application before the registration office where he has his basic trademark. For example, in Spain it would be the Spanish Patent and Trademark Office (OEPM).
- Before WIPO: WIPO is responsible for conducting a formal examination of the application. If it finds no irregularities, it grants the international trademark and transmits it to the offices of the designated countries.
- In each designated office: each country conducts its own examination, according to its local legislation. This means that a designation may be accepted in some countries and rejected in others. Objections usually relate to aspects such as the list of goods and services, which brings us to the next section.
The list of products and services: a challenge of precision.
One of the most complex aspects of any trademark registration is the drafting of the list of goods and services. In an international trademark application, this list must meet the criteria of the offices of all designated countries. This can be especially complicated in jurisdictions where the definitions of goods and services have many particularities, such as the United States or Canada.
To avoid rejections, it is essential to adapt the wording to the specific requirements of each country, balancing clarity and comprehensiveness. At Bamboo.legal we offer a customized approach to try to optimize these lists from the outset.
The WIPO tool Madrid Goods & Services Manager can help in this regard. If the United States is designated, the Trademark ID Manual can also be useful.
The calculation of fees in the international trademark: the WIPO Fee Calculator.
Applying for an international trademark involves the payment of fees that vary according to various factors, such as the number of countries designated and the classes of goods and services. WIPO makes available an online tool, known as the Rate Calculatorwhich facilitates the estimation of costs.
It is important to consider that, in addition to the WIPO fees, the office of origin also charges a fee for processing the initial application. All this can add up to a significant cost, but it is a key investment to protect the trademark in strategic markets.
Please note that WIPO fees are paid in Swiss francs and that, if you pay by bank transfer, this may take a few days as it is an international transfer, since WIPO is based in Switzerland.
Trademark priority claim.
The Paris Union Convention allows, within 6 months after the first trademark application, to apply in any other country of the Convention claiming the priority date of the first trademark. This is known as unionist priority.
That is, for example, if you register a trademark in Spain and within six months you file the same trademark application in the United States, you can claim the date of your initial application in Spain. This means that, for legal purposes, the U.S. application will be deemed to have been filed on that initial date, which is crucial to protect you against possible competing applications in other territories and to defer the decision on where to extend for those months.
This priority claim can also be made for an international mark under the Madrid System.
In how many countries do I register my trademark?
A very frequent question, especially when applying for an international trademark designating several countries, is how many of them to protect.
Not extending to countries where I may have a potential market in the short term may be a flagrant mistake if I later want to position my brand there and an identical or similar brand already exists. At the other extreme, applying in many countries, beyond where I really have a market, will mean a significant and probably useless economic expense.
Let's have common sense. Let's register in those countries where it would really be a serious inconvenience to have to change brands. Think about where you have a real market now or where you may have a real market in the short-medium term, and map out your protection strategy accordingly.
Conclusion: strategic planning for success.
The Madrid System is a powerful brand protection tool for companies seeking to expand internationally. However, its proper implementation requires careful planning, from the choice of the base trademark to the drafting of the list of products and services. At Bamboo.legal, we have the experience to guide you through every step of the process, maximizing the chances of success and minimizing risks.
If you need more information or personalized advice, do not hesitate to contact us. Protecting your brand is our priority.
