International trademark registration: important considerations

If you have aspirations to succeed in the global marketplace, international trademark registration is an essential step to consider. By securing your trademark in multiple countries, you guarantee its exclusivity and protection in different territories. You are probably interested to know what international trademark registration is and how you can successfully make your products transcend national borders – read on to find out!

What is international trademark registration?

In today’s business context, an international trademark is not only a symbol that identifies your products or services, but it also becomes a valuable asset that allows you to explore foreign markets. From this perspective, international trademark registration involves securing the rights to your trademark in several countries simultaneously. It is the preferred choice for companies seeking to expand globally while safeguarding their visual identity and reputation.

In Spain, the registration of international trademarks is handled by the Spanish Patent and Trademark Office (OEPM), the institution in charge of administering trademark and patent registrations in the country. However, the process requires a prerequisite and even an obvious one, from our perspective: having filed a national or EU trademark registration application.

The legal basis for international trademark registration lies in an international agreement signed by numerous countries. This agreement is governed under the Paris Union Convention and the Madrid System (Agreement and Protocol). Both establish a unified framework for the registration and protection of trademarks in different jurisdictions.

Preliminary search, the first step in international trademark registration

Before starting the international trademark registration process, it is essential to carry out an exhaustive search. This prior search has a clear objective: to determine whether the trademark you wish to register is already registered by another entity. That is, if there are existing trademarks that may be similar or identical to yours. This data will allow you to make informed decisions when filing your application.

In light of this, an invaluable tool for conducting this search is the WIPO ( World Intellectual Property Organization) Global Trademark Database . This database contains over 50 million entries from more than 70 national and international databases, including registers through the Madrid System. This platform is a solid starting point to explore the availability of your trademark in different jurisdictions.

In addition to the World Trademark Database, it is advisable to search national or regional trademark registers directly. Note that some trademarks may be registered directly with intellectual property offices in Madrid member countries without being reflected in the global database.

If during your preliminary search you discover a similar or identical trademark in your target market, do not worry. It does not necessarily mean that you should abandon your registration idea. If the trademarks relate to different goods or services, if the application has expired or if the registration has expired, you may still be able to move forward with your application.

In situations where the trademarks are linked to similar goods or services, you may face a provisional refusal. However, there are strategies to overcome this obstacle, and in many cases, the help of a trademark attorney or agent can be essential.

Next steps for international trademark registration

Protecting your trademark internationally is an investment that can boost your presence in the global marketplace. Here is a guide to the key steps – after the search – for a successful international trademark registration:

Apply for an international trademark

To begin with, you must file the international trademark application through WIPO. This application must include detailed information about the trademark, such as its name and description. In Spain, you can do this at the Spanish Patent and Trademark Office (OEPM), either online or in person.

Designate territories

In the application, you must indicate the territories in which you wish to register your international trademark. WIPO will be responsible for sending the application to the relevant IP offices in each country you have designated.

Make payment of fees

To proceed with the registration, you must pay fees to both WIPO and the intellectual property offices of the selected territories. These fees are essential to cover the costs associated with the registration process.

Waiting for the decision of the offices

Each intellectual property office will examine your application and issue a decision on whether to approve or refuse the registration of your trademark in its territory. Of course, such a process may take some time and it is essential to be patient while waiting for the answers.

Maintaining the trademark

Once your trademark is registered internationally, your responsibility does not end. You must keep it registered by paying the appropriate fees and renewing its registration in each of the territories where it has been approved. This ensures that your trademark remains protected and in force.

While the process may seem complex, following these steps will allow you to apply for and maintain your international trademark in Spain and other territories where you wish to operate. However, considering the complexity of the process and the importance of doing it correctly, it is advisable to seek the advice of an agency specialised in trademark and patent registration, such as ISERN.

Madrid system facilitates international trademark registration

At its core, the Madrid System is an innovative solution that simplifies the registration and administration of trademarks worldwide. Through this system, you can file a single international trademark registration application and pay one set of fees to file for protection in up to 130 countries. Through the Madrid System you can centralise and streamline the process of amending, renewing and expanding your global trademark portfolio.

This mechanism provides assistance throughout the entire lifecycle of your trademark, from application for protection to renewal. You can take advantage of the Madrid System if you are a national of one of the 130 member countries or if you are domiciled or have a business in one of them. Learn about some of the essential aspects of this solution:

  • Costs of international trademark registration. In this regard, the fees associated with international trademark registration include a basic fee, which varies depending on the colour or black and white file. While the additional fees depend on the geographical scope and the classes of goods and services involved. If you file in a less developed country, you can receive a 90% discount on the basic fee.
  • Efficient management with eMadrid. Once you have obtained your international registration through the Madrid System, the key to successful maintenance is to be vigilant in updating it. The eMadrid portal gives you direct access to online services that allow you to track the status of your registrations, extend protection, renew registrations and manage agents, among other procedures. This portal guarantees a more efficient management and an updated view in real time.

ISERN takes care of registering your trademark wherever you require it.

Without a doubt, the international trademark registration process can be challenging. As we said, it is advisable to have the support of specialised professionals to ensure that you carry out the procedures correctly and effectively. At ISERN we have almost a century of experience in the registration and protection of patents and trademarks in Spain and abroad. We also protect all creations subject to intellectual and industrial property rights. For this purpose, we have 150 specialised professionals, including lawyers, engineers and agents. More than 40,000 clients served and more than 350,000 files handled certify our leadership in the European ranking of trademark filings. Contact us and visit us at any of our 12 offices in the most important cities in Spain. Entrust your international trademark registration to our great team!

If you have any questions about Trademarks, Designs or Patents, please contact us.

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