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Author
Olga Plyasunova

Trademark attorney

11 August 2020

How to register a trademark in the country that is not the member of the Madrid System for the registration of trademarks

The use of a trademark on the international market requires a serious approach to the full defense of a designation. It is advisable to register the subject matter of intellectual property not only at the territory of the state, where the company is located, but also in the countries, where the right holder plans to be engaged in business activities.

To ensure the legal protection of a means of individualization abroad, there are several international systems of the registration of trademarks. They differ in the composition of the member countries, the procedure of the registration, and the authorities authorized to implement it. The most well-known and frequently used system is the Madrid System for the registration of trademarks. Obtaining protection under such system requires the registration of the designation in the national Patent Office. If the registration is cancelled within 5 years from the original date at the national Patent Office, a certificate on the international registration shall also be cancelled.

Despite the fact that more than 120 states are the members of the system, there are still some states that do not support the Agreement. Or for certain reasons, the person does not wish to use the Madrid System of the registration. In this case, depending on the presumed countries of the use of the means of individualization, the owner of the trademark may use other foreign systems of the registration of designations. The most popular among them include:

• The European Union Intellectual Property Office (EUIPO).The institution allows obtaining the registration of the trademark of the European Union (Community Trademark — CTM) in 27 countries of the European Union. The general information is available on the organization’s website: https://euipo.europa.eu/. This registration does not require the registration in the national Patent Office. It shall not be allowed to grant protection in one or more countries of the European Union. If the grounds for a refusal occur in one of the states, the registration shall be rejected. The trademark shall be valid during 10 years, but if the designation is not used during 5 years, then the protection may be terminated. The total costs for obtaining the European trademark are lower than when obtaining the registration in each member country separately. If the registration of the common trademark is refused, it is possible to convert the application into the national application in one of the states.

• The Benelux Office for Intellectual Property (BOIP).According to the information provided on the official website https://www.boip.int/en, the registration of trademarks in the Benelux countries (Belgium, the Netherlands, Luxembourg) implies the existence of a single legal space. In accordance with the legislation of the countries, only the registered trademarks shall be defended. Before the registration, the trademark shall be checked for its distinctive ability or uniqueness.

• The African Intellectual Property Organization (Organisation Africane de la Propriete Intellectuelle — OAPI) — http://www.oapi.int/index.php/en/.The institution grants defense to intellectual property of the French-speaking states — the former colonies.  The system allows registering the trademark in one of 17 member countries: Gabon, Guinea, Mauritania, Congo, Senegal and others. Such protection shall cover the territory of all allied states.

The owner of the trademark is also entitled to file the application for the registration of the designation directly to the national Patent Office of the chosen country. The list and the email addresses are publicly available on the Rospatent website: https://rupto.ru/ru/links/pat_vedomstva. At the same time, it is important to take into account the requirements imposed by the institutions, as many Patent Offices accept documents from foreign citizens only through authorized representatives. These are the patent attorneys, who have the national certificate.

The registration of the trademark in the Offices of other states is preferable in a number of cases:

1. When the designation is not registered in the Patent Office of the applicant’s country (for Russia — in Rospatent). This allows registering the designation in the foreign countries without having the national registration or after a refusal in it.

2. The registration in the foreign national Offices is economically justified, when it is necessary to register the trademark in a limited number of countries.

An individual fee shall be paid to each chosen Office, usually in national currency. If there are no obstacles to the registration, the applicant becomes the right holder of the trademark and he receives the certificate. Due to the territorial principle of protection, the right holder may use the mark and defend the rights to the designation only in the country, where it is registered.

In the end, a number of conclusions should be noted:

⎯ The applicant is entitled to choose how to file the application for the registration of the trademark: using the international system or the national Office of the particular state.

⎯ The registration of the designation through the international organizations is advantageous, if the right holder intends to use the means of individualization in the majority or all countries that are the members of the chosen system.

⎯ Obtaining the certificate for the trademark in the national Offices is preferable, when it is necessary to register the subject matter in one or two countries, or the state is not the member of the established systems of the international registration. Such application does not depend on the Russian application or the certificate, what allows the applicant, if necessary, avoiding (bypassing) the registration of the designation in Russia.

⎯ The correct choice of the system of filing the application allows saving money on the payment of the state fee and time for carrying out an examination.

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