If you want to protect your trademark abroad in more than three countries outside the EU, the quickest and best route is to register an international trademark under the Madrid Agreement and its Protocol. With a single application, you can register your trademark in all member countries of the Madrid System without having to pay separate national fees in each country.
Number of countries
Fewer than three countries: If you are registering a trademark in one to three countries, it is more cost-effective to file directly with the national patent offices of those countries.
More than three countries: If you wish to register a trademark in more than three countries (outside the European Union), it is better to obtain protection through a single international application. Applications are filed under the Madrid Agreement and its Protocol for all of its contracting parties.
Validity
A trademark takes effect when it is entered in the register of one of the competent offices of the country concerned or of the European Union (for trademarks valid in the EU). An international trademark can be registered with the International Bureau in Geneva on the basis of an earlier national mark. The applicant may claim priority from the national trademark application (as with an EU trademark), provided the international application is filed within six months of the national application. From that point on, the trademark is governed by the laws of the country in which it was registered.
An international trademark is entered in the register kept by the International Bureau of the World Intellectual Property Organization in Geneva, via the competent registration office in the applicant’s country.
Registration procedure
Duration: Trademark registration is valid for ten years from the filing date and can be renewed for further ten-year periods.
Classes: The goods or services covered by a trademark are listed in classes, of which there are 45.
Price: EUR 900 for three classes plus EUR 100 for each additional class/contracting state, plus the full fees in each chosen state, as for a national trademark. Additional costs may include fees for disputes and any refusal of protection for the trademark by the patent offices of individual contracting states, which are not covered by the basic fee.
The registration process
How registration works: Applications are made under the Madrid Agreement and its Protocol. Once the international application has been filed, individual national offices may request additional documents on the identity of the applicant or future owner, for which they may require an apostille, or proof of use in the course of trade, for which they may ask for evidence of the company’s incorporation.
How long it takes: 6 to 12 months
Expiry
Expiry: An international trademark registration depends on the underlying national trademark for a period of five years (e.g. in the Slovak Republic). If the national trademark lapses within five years, the international trademark lapses too. The trademark owner is, however, entitled to request the so-called transformation of the international registration into national trademark registrations in the designated contracting states.