INTELLECTUAL PROPERTY / TMT PRACTICE
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PATENT & TM ATTORNEYS PRACTICE
Trademark registration abroad
To ensure legal protection of a trademark in other countries, there are several systems for international trademark registration - the Madrid system (Madrid Agreement and Madrid Protocol).
Each of these systems has its own advantages and disadvantages, which are difficult and sometimes impossible to evaluate without the services of a competent trademark attorney; and before choosing a country or countries in which the client would like to receive protection of particular trademark for successful business, it is necessary to study thoroughly how to obtain such protection in a cost-effective manner and in a minimum period of time.
Significant advantages of the Madrid system are the ability to file one application in one language and pay a single international fee for obtaining registration in the countries of the Madrid Agreement. There is no need (at least at the first stage) for the services of trademark attorneys in each of the foreign countries. This procedure significantly reduces the costs of the fees of foreign trademark attorneys, translators, as well as the fees for filing an application with the International Bureau of WIPO. Trademark attorneys of other countries get involved only at the stage of examination of a trademark application in case if obstacles to registration in these countries are identified.
Besides, the Madrid system also has the advantage of allowing trademark holders to make further changes (for example, addresses, names, registration of cession of trademark rights) to the international registration and extend its validity in all countries by filing a single application.
However, filing an international application is not a guarantee of obtaining registration in other countries of the Madrid System, because the examination of an international application is carried out in each country in accordance with its national legislation.
If the basic registration is cancelled within 5 years from the date of international registration, the international registration is subject to cancellation (central attack principle), all registrations obtained in other countries are also cancelled, if there is a possibility of its conversion into national registrations.
Besides, in case of rejection of the basic application, the already filed international application will be cancelled.
It is obvious that the procedures for international registration are complicated, and the development of efficient strategy for obtaining international registration requires the patent trademark attorneys’ consultation and advice.