National, regional and international brands

Registering a trademark can take place at three different levels: national, regional and international. Each of these is governed by specific rules and systems. Depending on your needs and objectives, you will have to choose one of these repositories.

National brands

A national trademark, as its name indicates, is valid only in one country. To obtain a national trademark, it is necessary to file directly with the national office concerned. In France, this is the INPI, but each country has its own office: the KIPO in Korea, the USPTO in the United States or the JPTO in Japan.

Filing a trademark only at the national level can be advantageous when the owner's objective also remains national. Similarly, if the owner does not wish to exploit his trademark in many countries, it may be interesting to make several national filings. However, since a registration fee will be required in each national office, the total amount can quickly become high. In this case, it will probably be more judicious to file a regional or international trademark.

It should be noted that almost all trademarks are originally national or regional trademarks. It is not possible to file an international trademark directly: a basic application is required.

Regional brands

Regional trademarks cover a set of countries, often a geographical area governed by a regional organization such as the European Union. These have the advantage of making a filing that automatically covers all member countries of the organization, with a single payment. With a regional trademark, it is not necessary to file in every country.

There are few regional trademark offices. The only ones that are usually mentioned are the EUIPO for the European Union and the OAPI, which includes 17 African countries. But there are also regional trademarks that target smaller territorial areas, such as the Benelux (which includes Belgium, the Netherlands and Luxembourg).

The EUIPO: European Union trademark

If you plan to exploit your trademark abroad, it is possible to file a European trademark and benefit from a right valid throughout the European Union. The cost is generally equivalent to 3 national trademark applications.

However, a thorough search of the availability of a trademark prior to its filing is essential, considering the difficulties that European trademarks may encounter during the registration process. Indeed, according to theEUIPO, the office responsible for the registration of European trademarksOne in five trademarks is opposed.

The explanation is simple: a European trademark must be accepted in all the countries of the Union, otherwise it cannot be registered as such. Therefore, it only takes one opposition (which can be made on the basis of a national trademark) for it to be refused when filed.

In this case, there is still a solution: the transformation of the European trademark. With payment, it is possible to transform a European trademark application into a national trademark application in one or more countries of the Union (except the one where the dispute took place).

THE OAPI

The African Organization has also set up an office dedicated to the registration of trademarks: the African Intellectual Property Organization. A trademark filed with OAPI will automatically be registered in the 17 countries that constitute it, i.e. Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, Congo, Ivory Coast, Gabon, Guinea, Guinea Bissau, Equatorial Guinea, Mali, Mauritania, Niger, Senegal, and Togo.

Unlike the European trademark, in the OAPI member countries, there is no national trademark. This means that one cannot choose only one or two countries from the list. One cannot have a trademark valid only in Senegal: the OAPI trademark will be valid among all the member states.

International trademarks: Madrid system

The Madrid system is governed by two international treaties: the Madrid Agreement and the Madrid Protocol. Contrary to its name, the World Intellectual Property Organization (WIPO) is not based in Spain, but in Switzerland. This organization is in charge of the centralized filing of international trademarks. Please note that unlike regional trademarks, the international trademark is not a unitary title. Rather, it is a unified filing procedure (with WIPO), from which a series of international trademarks will be created. Then, these different trademarks can be accepted or not by the chosen countries. It is therefore possible to have a partially valid international trademark (accepted in Switzerland and refused in Canada).

WIPO and the Madrid System

The Madrid System now allows you to apply for protection in a maximum of 128 countries. Before making a deposit, you should make sure that the countries you are interested in are members of the Madrid System. This is not the case for many countries in Latin America or the Middle East. For countries that are not members of this system, you will have to file a national trademark application.

The advantage of the Madrid System is obvious: the applicant only has to make one application, in one language and at one office, WIPO, and will only have to pay one application fee. But generally, international trademarks are expensive because fees have to be paid for each designated state. Therefore, going through the Madrid system to cover only two or three countries is not necessarily interesting from a financial point of view. In this case, it is generally more interesting to file directly the national trademarks concerned.

As mentioned above, a trademark must first be national or regional before it can become international. As a result, there is a very strong dependency link between the basic trademark and its international extension: for 5 years from the filing of the international trademark, the fates of the trademarks are linked. Thus, if the basic trademark ceases to produce its effects for any reason (opposition / cancellation), the international trademark will do the same. It is only after this 5-year period that the international trademark will be independent.

The Madrid Monitor

As mentioned above, WIPO will create a set of national trademarks, which will then be forwarded to the various national trademark offices for examination. Keeping track of the examination of these different trademarks is a complex process, and without experience, it is common to miss deadlines (for example, to respond to a notification).

In order to facilitate the management of the international trademark, and to follow the progress of the examination in the different offices, WIPO has set up the " Madrid Monitor" . This WIPO database provides detailed and regularly updated information on international trademarks registered through the Madrid system.

Article updated on 13/04/2022