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Trademark Application Process: Choosing Jurisdictions

Intellectual Property FirmsNational trademark applications may be filed in one or more countries according to the applicant’s choice. For example, one may decide to file trademark applications in the US, Japan, and Israel. Separate applications must be filed in each of the chosen countries, making the cost an important factor when considering a global IP strategy.

 

Alternatively, an international trademark application, a process known as the Madrid System (based on the Madrid Agreement (MA) and Madrid Protocol (MP)), is an international system which facilitates the registration of trademarks in multiple jurisdictions around the world. The Madrid System provides a channel for obtaining trademark protection in many member countries around the world, which is more efficient than seeking protection separately in each individual jurisdiction of interest. Intellectual property firms specialize in such activities.

 

Prior to filing through the Madrid System, one is required to have a basic national or regional trademark registration or application at the office of a country of origin that is a contracting member of the Madrid Union (parties to the MA and/or MP). An applicant must establish a legal base within the country of origin through one of the following; the applicant must:

  1. be a national of the contracting state that is use as the country of origin,
  2. be domiciled in the country of origin, or
  3. have a real and effective industrial or commercial establishment in the contracting state.

 

There are several advantages to filing through the Madrid System. It involves filing a single application in one language, and results in trademark protection in all designated countries. One has the option to extend protection to additional countries after registration. Furthermore, any modification to the registration (such as assignments, name changes, and address changes), or a request for renewal, can be conducted via a single administrative process for all designated countries, rather than applying for each country separately.

 

On the other hand, the main disadvantage of the Madrid System is that any refusal, withdrawal, or cancellation of the basic application or registration within five years of the international registration will lead to the refusal, withdrawal, or cancellation of the international registration to the same extent.

 

Another filing option is the Community Trade Mark (CTM), which provides a unified trademark registration system in Europe, whereby a single registration offers protection in all member states of the European Union (EU). The Community Mark (renamed the European Union trademark on March 23, 2016) is obtained by registration through the Office for Harmonization in the Internal Market (OHIM) – renamed to the EUIPO, the European Union Intellectual Property Office, on March 23, 2016.

 

In addition to the advantage of efficiency in applying for 27 member countries through one application, cost is another attractive benefit to consider. The initial fees for filing an application to register a CTM are much less than filing separate national applications in all EU member states. On the other hand, while a CTM registration is enforceable in all member states, one should be aware that an objection against a CTM application in any member state can defeat the entire application.

 

One must carefully factor the pros and cons of each option to form a sound filing strategy and overall IP strategy for the desired mark. Intellectual property firms specialize in such activities. FPIP trademark attorneys are experts at considering the particulars of a business activity, its goals and concerns, advising our clients regarding trademark options, and assisting in formulating a trademark filing strategy that best suits each client’s position.

 

FlashPoint IP, a leader among intellectual property firms, provides all types of professional trademark searches for registered and unregistered marks worldwide, as well as national and international trademark registration. We assist in the candidate selection process of brand names to maximize IP value and protection. Contact us to discuss your options regarding IP strategy and positioning, and to find out more about FPIP trademark filings. On Your Mark, Get Clearance, Go!