How To Complete International Trademark Registration?

If you operate globally and wish to protect your brand, you must understand how to register an international trademark. The greatest method to guarantee that the time you invested in developing your brand image will not be wasted or imitated by others is to do this. The Madrid System, which is made up of the Madrid Agreement and the Madrid Protocol, regulates the protection of international trademarks.

Source: https://www.trademark.net.ph

The 122 nations that now consent to reciprocally protect each other's citizens' trademarks are collectively referred to as the Madrid Union. By adhering to the Madrid System, you may safeguard your intellectual property across these nations.

Requirements to register an International Trademark

The prerequisites for an international trademark application are quite similar to those for national applications. In reality, as we will see later, you must first go via one of the national Trademark Offices of a Contracting State to the Madrid System to acquire worldwide protection for your trademark. But first, a short overview of what this system can protect:
Logos
Names
Images
Colours
Patterns
Shapes
Packaging of goods
Sounds
Smells (with specific requirements which shall not be explored here.)

However, it should be noted that to file for international protection, you must be either:

A citizen of a Contracting State to the Madrid System.
A legal entity resident in a Contracting State.
A legal entity with a real and effective industrial or commercial establishment in a Contracting State.
Scope and duration of IP protection

Your brand will be safeguarded for ten years by an international trademark. You can request a renewal following this 10-year window; specifics will be addressed in the section below under "Follow up: IP Monitoring and TM Renewal."
It fully depends on your filing and where you want to allocate resources for trademark protection as to how many countries it will be protected in. Don't worry if you wish to start small and gradually expand protection; you can always ask to add other nations to the trademark through a Territorial Expansion Application. The price for this is 300 CHF plus an extra 100 CHF for each additional nation. There can also be a variable element to this fee. To be sure, check out WIPO’s Fee Calculator.

How can I apply for an International Trademark?

First, you must submit an application to a national trademark office associated with a Contracting State to register a trademark globally. You don't apply to WIPO directly (World Intellectual Property Organization).
Steps of the Trademark Registration:
Apply to the appropriate National Trademark Office.
Examination of trademark application by the WIPO.
Examination of trademark application by National Trademark Office of each requested country
Step 1: Apply to the appropriate National Trademark Office
Applying to the appropriate National Trademark Office is the initial step in the procedure. With a fast Google search, you may find out about this rather easily. A handful of the national offices are listed here, along with links to their websites.
UK: IPO (Intellectual Property Office)
Germany: DPMA (Deutsches Patent- und Markenamt)
France: INPI (Institut National de la Propriété Industrielle)
Spain: OEPM (Oficina Española de Patentes y Marcas)
Italy: UIBM (Ufficio Italiano Brevetti e Marchi)
You will need to complete Form MM2 to apply to this national office. The national office will review the application after filing. They will subsequently forward your application to the WIPO for additional international review if the file is error-free. Usually, this takes up to two months.
Step 2: Examination of trademark application by the WIPO
The WIPO will review your application when the country office has given its approval. This examination is primarily intended to make sure that your application is flawless and that you are a genuine candidate who satisfies the standards. The application will subsequently be sent to the national offices of each desired country after being approved and published in the WIPO's International Trademark Gazette.
Step 3: Examination of trademark application by the National Trademark Office of each requested country
The process for registering an international trademark is substantially the same to apply to register a national trademark in each of the countries you specify. The appropriate national trademark offices will thus review your application at this point for any flaws and, more significantly, any potential IP conflicts with trademarks that have already been registered in that nation.
Publishing the application in their national gazette or bulletin and allowing other trademark owners to express their concerns are often two key components of the national procedure. The national office has one year to send a notification of provisional denial if there are any inconsistencies with pre-registered trademarks; this deadline may occasionally be extended to 18 months or longer.
The trademark is awarded and your company's name is now formally protected in that nation if there is no indication of such a preliminary denial. Congratulations!
A follow-up IP monitoring and TM renewal
IP Monitoring
You could think that your work is done now that you have a valid international trademark registration. Unfortunately, that is not the case. Many businesses and people may desire to imitate your brand and utilize it for their own personal or professional advantage.
Therefore, it is crucial to set up an IP monitoring tool to make sure that your efforts have not been in vain. Fortunately, we've teamed up with [insert partner name here with a link] so you can relax knowing your trademark and brand image are protected.
Trademark Renewal
It's also critical to keep in mind that your foreign trademark is only secured for ten years. You must submit a renewal application once this period has passed. You should carefully manage this or work with a reliable IP lawyer to make sure that you don't wake up one morning to find that you have to start the process over again. The WIPO and the great majority of country trademark offices do not send out automatic reminders.
Register an International Trademark: Conclusion
Now that you are aware of how to register an international trademark, safeguard your brand, and keep track of your intellectual property, it should be mentioned that the procedure itself might take some time. Furthermore, errors in your application or notification of provisional denial sent to the WIPO or another national trademark authority might confuse things even further and cause protracted delays.
If you would feel safer hiring an attorney to take you through the whole procedure, you can contact us.