All about the international brand

The international trademark is a practical tool for applicants who wish to extend the protection of their French trademark abroad.. To file an international trademark, it is necessary to already have a basic trademark (for example a French or European trademark). The international application cannot be broader than the basic trademark.

Moreover, the international brand is not a global brand. Although it is possible to target a large number of countries, the idea is to select those where you plan to really exploit your brand. The amount of the application fee will depend on the number of countries to be covered.

The advantage: a centralized deposit system

Thanks to the Madrid System, it is possible to benefit from a simplified procedure for filing an international trademark. The idea is to file a single application, in one language, with a single office (the INPI, which forwards your application to WIPO - the World Intellectual Property Organization).

But beware: the international brand is not a unitary title. At the end of the filing procedure, WIPO forwards your applications to the various national offices, which will carry out the examination of your application. It is therefore possible that protection will be accepted in some countries and refused in others. At the end of this examination phase, you will obtain a set of national trademarks.

The international brand: a truly economical solution?

The Madrid System allows you to register your trademark in many countries by paying only one global fee. This avoids having to pay filing fees in each of the designated countries. The amount of the fee depends on several criteria: the number of countries covered, but also the number of classes chosen and the representation of the mark. A colour trademark will cost more! To estimate the amount of the fee, you can use the WIPO tax calculator. To this should be added the basic "emoluments" (fees paid to INPI and WIPO). The cost of an international application can therefore quickly rise to several thousand euros!

Finally, unlike a French application, there are hidden costs in the international trademark. Thus, some countries ask you to pay registration fees at the end of the procedure. This is the case in Japan and Brazil. Other countries frequently issue notifications ("official letters") which must be answered for the procedure to be successful. However, it is then necessary to entrust this response to a local agent, who will charge quite high fees.

Conclusion: a practical but not indispensable tool

In view of these different fees, international filing is only interesting if one considers filing in a fairly large number of different countries. Conversely, if you are interested in only one or two countries, it may be cheaper to make direct deposits.

Similarly, it should be noted that the basic trademark and the international trademark are linked during the 5 years of the international application. This means that if your French trademark is not renewed, or is cancelled (following the action of a third party), your international deposit will automatically cease to have effect. The mark will be cancelled from the register. The international trademark is therefore at risk during its first few years.

To register your trademark successfully, make sure you are accompanied by a professional. We are at your disposal to advise you!

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