brand abroad

Register an international trademark

The constraints of globalization and the internationalization of trade often make it necessary to to extend the protection of a trademark internationally. From this imperative was born the "Madrid system", the result of two international texts, the Madrid Protocol and the Madrid Agreement. Managed by WIPO (the World Intellectual Property Organization), the Madrid System allows any individual or legal entity to extend the protection of its trademark abroad while greatly facilitating the procedures.

A centralized repository

Unlike the European trademark, the international trademark is not a unitary title: not all countries are members of the Madrid system, and it is necessary to choose the countries in which protection is desired. Indeed, the Madrid system offers simply a single procedure, the latter giving rise to a series of national trademarks studied on a case-by-case basis by the countries concerned. The advantage of the Madrid system therefore lies in its centralization: the applicant only has to submit a single file to a common office, WIPO, without having to draft it in several languages or pay a registration fee in each country. The costs of filing an international trademark application are in fact globalized to form a single fee, which is more advantageous from a certain number of countries.

More than a financial gain, the Madrid system offers the applicant not only a saving in time but also in administrative procedures. On the other hand, the validity of the registered trademark will be examined by each of the countries concerned, whose response may vary according to the rules in force and, above all, any opposable prior rights. As the title of an international trademark is not unitary, a negative response in one country does not in any way call into question applications made in other countries.

National trademark and priority period

Again in opposition to the Community trade mark, the registration of an international trademark must necessarily be preceded by the registration of a national trademark. It is only after this step that it will be possible to extend it to the international level, directly through the INPI. It is therefore not surprising to note that the two marks, national and international, are closely linked during the first 5 years following the registration of the latter. If the national trademark ceases to have effect for any reason whatsoever, the international trademark will suffer the same fate and will be cancelled.

What is the priority delay? The priority period provides the applicant with an additional period of time to think about whether or not it is appropriate to file an international trademark application. It begins on the French filing date and runs for a period of 6 months; if the international trademark is filed during this period, it will then be considered as having been filed at the same time as the national trademark, and applications filed by third parties during this period cannot be opposed to it. On the other hand, if the six-month period expires, protection will only be effective from the date of filing of the international trademark.