Articles

INTERNATIONAL TRADEMARKS

An international trademark is a trademark that through a single application gives the applicant the possibility to obtain protection in all the countries party to the Madrid Union, consisting of the countries adhering either to the Agreement or to the Protocol (or both).

 

International trademarks are governed by two regulations:

 

  • Madrid Agreement
  • Madrid Protocol

 

There are countries which adhere only to the Agreement and countries which adhere only to the Protocol, whereas other countries, including Italy (since 17 April 2000), adhere to both of them.

 

Main normative differences:

 

  • The two regulations are quite different from one another. One of the most relevant differences is that the Agreement provides that a trademark can be obtained only based on a trademark registered in the country of origin, whereas the Protocol provides that it can be obtained even based only on a simple application. Further, according to the Agreement, the procedure has to be executed in French language, whereas according to the Protocol it may be filed both in French and in English.
  • Italy has adhered to both the Agreement and the Protocol, the procedure can be therefore filed both in English and in French.

 

The applicable rule: in countries such as ours, which adheres to both rules, who applies for a trademark may choose to:

 

  • Designate countries adhering only to the Agreement.
  • Designate countries adhering only to the Protocol.
  • Designate countries adhering to both the Agreement and the Protocol.

 

Ownership of the international trademark:

 

  • Natural and legal persons, belonging to or residing in a member State of the Agreement or the Protocol.

 

Classification of goods and services:

 

  • In the international trademark, the internationally recognized classification of goods and services applies.

 

Where to file the international trademark application:

 

  • International trademark applications are to be filed at the National Patent and Trademark Office where the corresponding national or international trademark was filed or registered. The application will then be forwarded to the World Intellectual Property Organization (WIPO).

 

Priority:

 

  • It is possible to claim the priority of an earlier national or Community trademark application within 6 months from the filing date of that application.

 

Designation of States:

 

  • The updated list of the member States is on the WIPO website.
  • It is mandatory to indicate the states chosen at the time of the application filing.

 

Territorial extension of the trademark:

 

  • It is possible to territorially extend the protection of an international trademark by designating one or more member states of the Madrid Agreement and/or of the Protocol.

 

Rights conferred by the international trademark:

 

  • An International trademark registration is equivalent to a national trademark registration in each of the countries designated by the applicant. The examination and potential oppositions shall be based on the laws of each State.

 

Examination of the application:

 

  • Each member state designated in the trademark application may inform the WIPO of its refusal to grant the trademark registration in its own territory, within 12/18 months from the communication of the international registration. Parties having rights to a prior trademark may file an opposition against the grant of the International trademark.

 

Duration and renewal:

 

  • The Community trademark registration lasts 10 years from the filing date.
  • The trademark is the only title of  intellectual property to be potentially meant for life, since it is renewable for subsequent 10-year periods.