Protection through the registration of a trademark is essential when we undertake a new business or project, regardless of its size, since one of its main functions is to allow consumers to identify the business origin of the products and/or services, as well as to differentiate them from those of their competitors.
Furthermore, the registration of a trademark grants its owner the exclusive right to prevent third parties from marketing identical or similar goods and/or services using his trademark. It therefore confers on its owner the ‘ius prohibendi’ or right to prohibit its use without his consent or authorisation.
Principle of territoriality
This principle implies that the validity and protection of the trademark is limited to the territory where the registration has been obtained. Thus, in the event that the owner wishes to obtain protection in different countries, it is necessary to register the trademark in question in the corresponding territories.
The legal effects of trademark protection are limited to the territories in which it has been protected or registered. However, despite the validity of this principle, there has always been a will to harmonise in this area on the part of the States, which has led to the conclusion of international treaties establishing minimum standards of protection in the field of industrial property.
International trademarks
It is not possible to register a trademark worldwide. Therefore, when we refer to the registration of an international trademark, we are referring to those in which there is the possibility of extending protection to the countries that are members of the Madrid System.
The Madrid System is governed by the Madrid Agreement and the Madrid Protocol and is administered by the International Intellectual Property Organisation (‘WIPO’) which is located in Geneva, Switzerland.
This system simplifies and unifies the registration process by filing a single application in a single language and paying a single set of fees, equivalent to as many national applications as there are countries or organisations designated in the application.
The procedure consists of three stages involving an ‘office of origin’, i.e. the office where the ‘basic mark’ was applied for. The following are the steps involved in this procedure:
(i) Filing of the application for international registration with the SPTO/EUIPO, or corresponding office of origin;
(ii) Formal examination by the International Bureau (WIPO):
(iii) Substantive examination by the Offices of the designated member countries.
Once the Offices of the countries or organisations designated in the application for international registration receive the application from WIPO, the said Office will proceed with the examination in accordance with its national legislation.
Trademark protection is conferred for ten years from the date of registration granted by WIPO and can be renewed indefinitely, as long as the corresponding fees are paid.
In case you wish to expand your business and operate in other countries, it is advisable to obtain the registration of the trademark in that territory to avoid the appropriation of your trademark by third parties.
Metricson can help you with the procedure for the international registration application, advising you strategically throughout the process.
For more information, you can contact us here.
Article written by:
Estefanía Asensio
Intellectual property and data protection lawyer
estefania.asensio@metricson.
About Metricson
Metricson is a legal services firm specialising in technological and innovative businesses. We are specialists in data protection, privacy and technology law and we help companies all over the world to develop and protect their activity with the maximum legal guarantees.
If you want to set up your website or ecommerce and want us to help you, do not hesitate to contact us here. We look forward to talking to you!