How to register an international trademark?
The trademark is one of the most valuable assets of a company, which is why it is important to protect the rights relating to one’s own trademark, both nationally and internationally. The registration of an international trademark allows you to acquire the rights to a trademark in the countries that are part of this international protocol.
In the following, we will discuss the advantages of international trademark registration and the process required to complete the registration.
What is an international Brand?
A trademark is a set of graphic elements that identify a company or product. Trademarks grant an exclusive right of use to the registering entity, preventing third parties from using these symbols.
As far as international trademarks are concerned, protection against misuse extends not only to the country of origin of the company, but also to foreign countries. The registration of an international trademark is the administrative process necessary to protect the rights to use a corporate distinctive.
The process of registering an international trademark, requirements
The administrative process related to the international registration of a trademark is part of the so-called Madrid System, which is made up of two international treaties: the Madrid Agreement and the Madrid Protocol.
It is important to note that trademarks are only protected in the countries covered by these treaties, and there are currently 80 countries that are part of this pact.
Before learning about the process, it is important to evaluate the conditions that a trademark must fulfil in order to proceed with its registration at an international level.
- In Spain, it will be necessary to process the process through the OEPM, the Spanish Patent and Trademark Office.
- It will only be possible to carry out the process if the natural or legal person is a Spanish national or is domiciled in Spain. For legal entities, it is also possible to apply for registration if you have an industrial establishment or a real business in Spain.
- The application must be made in Spain; to designate more countries, the trademark must already be registered in Spain.
- The trademark must have the same owner, distinctive sign, goods and services as in the national registration.
- It will be compulsory to pay a national fee, independently of the fees established for international registration.
Steps to register a trademark at the international level
Currently, completing the registration of a trademark at the international level consists of 3 phases.
- The process begins with a first application to the Spanish Patent and Trademark Office, which acts as the office of origin. It is this body that receives the first application and evaluates it to check that it coincides with the registration at the national level. It is the SPTO itself that forwards the application to the international office once it has been accepted.
- The second phase involves the World Intellectual Property Organisation (WIPO). This institution receives the application and carries out a thorough examination of the trademark. If the evaluation is favourable, it is published with an international number that identifies it.
- Finally, the process is confirmed in the national office of the company of origin; in the case of Spain, the application is returned to the SPTO, which finally decides whether to grant the international registration based on the particular legislation of the national territory.
The international registration of a trademark can be complex if an assessment of the brand and the application is not carried out; having the necessary legal advice reduces waiting times and guarantees the granting of the registration, provided that the trademark complies with the legal requirements.
How long does international legal protection last?
The period of validity is 10 years, after which time it will be necessary to renew the application for the registration to remain in force. If the application is not renewed before the SPTO and the WIPO, the trademark and its attributes are not protected and cannot be claimed by the trademark if they are used by third parties.
Legal advice not only makes the registration available, but also facilitates the renewal processes.
The advantages of registering a trademark internationally
The main advantage is that the trademark has the exclusive right to the name, logo and the general visual elements that identify your brand.
Through this registration we prevent competitors from using our corporate signs and also prevent other brands from offering similar products or services.
The international trademark is an asset that can be licensed or franchised, and it is also a boost to the value of the company. International registration is a guarantee when exporting a company or product.
International trademark registration fee
The cost of an international trademark registration is currently between €35.92 and €42.26, depending on the type of application.
At Asesoría Orihuela Costa we are specialists in administrative procedures related to intellectual property protection, contact our legal team and protect your brand and your products in the main markets of the world.
