The World Intellectual Property Organization, commonly referred to as WIPO, is the organization by which all international trademarks are registered. An international trademark can therefore by described as a mark that is registered by WIPO in a number of international jurisdictions, thus awarding the owner with a set of exclusive rights over the use of the mark. It is vital that when seeking trademark registration in a number of countries located across the globe, you are made aware of WIPO, its scope and your rights and obligations as provided by WIPO.
International trademark registration process
An international trademark may be registered with all countries across the globe provided they are party to the Madrid Agreement as stipulated by WIPO. When researching where you intend to have your mark registered it is advisable to view the WIPO website, which lists all the countries where trademark registration is applicable. However, the area of intellectual property, and in particular, international trademarks, can be complex to understand, and so it is advised to obtain the professional services of a trademark attorney or consultancy firm.
The typical process for registering is as follows:
- Prior to seeking registration, you must ensure your mark is created in line with the standards set under the Madrid System. By ensuring standards are met it is less likely that your application will be rejected by WIPO.
- Owners are required to obtain registration for their trademark in their country of domicile prior to applying to WIPO for international registration. This step, once completed, will qualify the trademark for international registration.
- It is necessary to perform a search with the WIPO registered trademarks database to ensure your mark is available prior to sending your registration application form. It is advised that a professional be enlisted to conduct the search on your behalf to ensure it is completed properly.
- After the above steps are completed, the trademark owner or acting representative will then apply via a single application to WIPO for registration of the countries selected by the applicant.
- Once WIPO receive the application, they will review and assess it to ensure all standards are met and rules adhered to, after which they will approve or reject the application for trademark registration.
- On approval by WIPO, the trademark is registered in the official gazette to allow time for objections to the registration of the mark to be voiced. Where valid objections arise the registration of the mark may be delayed or terminated. However, appeals can be made regarding the decision not to register a trademark.
- If no objections are voiced the mark is then legally accepted and registered and the owner will then receive a certificate of registration.
- Renewal of an international trademark is performed every 10 years.
As mentioned an international trademark is required to be registered with WIPO where the mark is to obtain legal rights in a number of countries across the globe. Although owners can register their mark separately with each independent trademark registry in each country they choose, this would be impractical in terms of costs and time spent. By registering with WIPO, the application can be processed in a timely manner. This is because the trademark owner only needs to submit a single application for registration, irrespective of how many countries he/she wishes to register the mark in.
Learn how Starting Business can assist you by viewing our Trademark Registration services page.