International trademark

An international trade mark is a mark registered through the Madrid System, administered by WIPO, which makes it possible to obtain protection in many countries on the basis of a single application. The expression is misleading: there is no single worldwide title. The international mark is a bundle of national or regional protections obtained through a centralised filing and management procedure. The system rests on the Madrid Agreement and, above all, on the Madrid Protocol, to which most major economies are party.

Registration procedure

The applicant must first hold a basic mark, that is, an application or registration in its country of origin, for instance before the INPI or the EUIPO. It then files the international application through that office, designating the countries or organisations in which protection is sought. WIPO checks the formalities, registers the mark and notifies the designated offices. Each office then examines the application under its national law and may issue a provisional refusal within twelve or eighteen months. Absent a refusal, the mark has the same effects in that country as a national filing.

Dependency and duration

For five years from the international registration, the international mark depends on the basic mark. If the basic mark is cancelled, withdrawn or refused, the international registration is cancelled to the same extent, subject to transformation into national applications. This rule exposes the owner to a central attack against the basic mark. The registration lasts ten years and is renewable indefinitely through a single formality before WIPO. Subsequent designations allow protection to be extended to new countries.

Key points

In practice, the international mark greatly reduces the cost and administrative burden of multi-country protection, but litigation remains national: validity and infringement are assessed country by country. The choice between national filings, the EU trade mark and the Madrid route depends on the target markets and the strength of the basic mark. The firm advises on this strategy and handles the resulting disputes as part of its intellectual property practice.