The most common methods for international trademark registration are Madrid international registration and country-by-country registration. Before choosing the registration method, let's first introduce and compare these two methods.

I. The Madrid Agreement on the International Registration of Trademarks and the Protocol Related to the Madrid Agreement

The Madrid Agreement for the International Registration of Trademarks was signed on April 14, 1892, in Madrid, the capital of Spain, and came into effect in 1892. It has a history of over a hundred years, and the agreement requires the language of use as French.

On June 27, 1989, the "Protocol on the Madrid Agreement on the International Registration of Trademarks" was signed in Madrid, Spain. If the applicant designates a country that includes at least one pure Protocol member, they may choose to use English or French.

Currently, 80 countries and national organizations have joined the Madrid International Trademark Registration System.

The main advantages of Madrid registration are:

1. The procedures are relatively simple (when there is no agent).

If registered through Madrid, trademark applicants can obtain trademark protection simultaneously in multiple designated countries by submitting a single application to the competent office. The application procedures are relatively simple, whereas country-by-country registration is more complicated (country-by-country registration is usually entrusted to firms with foreign-related experience, so it is not complicated for applicants).

2. Relatively low fees (if registration goes smoothly)

The cost of international trademark registration in Madrid includes three parts: first, the basic registration fee; second, the cost of designated countries; Third, fees incurred by the domestic trademark authority; Additionally, if you entrust an agent to handle the process, you also need to pay an agency fee. International registration applicants can designate one or all member countries in a single application. Both applicants must pay a basic registration fee, so the more countries you designate, the more cost-effective the designation.

3. Relatively short time required (compared to some countries).

From the date the applicant submits the international trademark registration application to the Trademark Office, it generally takes about six months to obtain the international registration certificate issued by the International Office of the World Intellectual Property Organization (WIPO), which specifies the international registration number and international registration date. Of course, the international registration certificate of the trademark only indicates that the International Bureau has received the international registration application. From the date of international registration, if the designated country does not issue a notice of refusal to the International Bureau within the specified period (12 months under the Agreement, 18 months under the Protocol), the trademark will automatically obtain protection in that designated country (if each country applies for trademark registration, the time required to obtain exclusive trademark rights vary, such as France, Myanmar, Denmark, and the United Kingdom requiring half a year; Israel and Hong Kong, China one year; and India about four years).

Applying for international trademarks through Madrid has its advantages; if the application goes smoothly, it saves time and costs, making it more suitable for bulk applications in countries. This type of application is more suitable for companies whose products are mainly sold in Europe, as well as small and medium-sized enterprises protecting their own brands.

However, Madrid's registration system also has serious flaws.

1. Not conducive to expanding protection.

When applying for trademarks through the Madrid System, the trademark and designated goods must be exactly the same as the trademark in the country of origin, which greatly limits the selection of goods, which is not conducive to brand protection and is also very detrimental to the diversified development of enterprises overseas;

2. The certificate is not valid.

Although applying for a trademark through the Madrid System can quickly be published and an official certificate obtained, this announcement and certificate act like a domestic acceptance notice, only proving that the trademark has been applied for through the Madrid System. Whether it is protected by each country requires additional certification from each country. When applying for trademark registration through Madrid, applicants cannot obtain trademark registration certificates issued by designated countries. If registration certificates are needed, they must apply to the competent authority of that designated country, and this process inevitably requires the local agent organization to handle it (companies often cannot promptly handle overseas infringement due to lack of valid proof).

3. Unstable power.

Within five years of the Madrid application, if the basis of the trademark registration in the country of origin is revoked, declared invalid, or the underlying application is rejected, the entire Madrid application becomes invalid. In particular, applying for international registration through the Madrid Protocol carries greater potential risks.

4. Difficulty in follow-up later.

If the designated country rejects the trademark or requests correction or opposition, the International Bureau will only notify the applicant, and the specific matter must be entrusted to the local country's firm to handle the matter. There are time limits for responding to official rejection, correction, and opposition defense. If such situations occur, it is not only a matter of cost, but may also result in invalidation of the application due to the lack of a suitable national office to respond to the official opinion in the first place. Additionally, when international registrations enter the renewal period, the International Bureau is not obligated to remind them; if the applicant does not renew in time, the entire Madrid registration will become invalid.

5. Priority issues.

According to the Paris Convention, any company from a member country of the Paris Convention can enjoy priority if it applies for trademark registration in another country within six months after applying in its original country. However, at the China Trademark Office, it takes about six months just to issue a "Notice of Acceptance," so many large companies are reluctant to register in Madrid out of concern for trademark squatting.

6. Cannot perform valid queries.

When applying for a trademark through the Madrid System, only trademarks already applied for within the Madrid System can be found, and searches in each designated country cannot be conducted. The results cannot be valid or comprehensive, so applicants are completely unaware of the risks they may face later, and cases of applicants being sued for infringement due to this issue occur from time to time.

7. Limited registration scope.

Although the Madrid System has 80 member countries, they are mainly concentrated in Europe, while most American countries, including Canada, ASEAN (with only Singapore joining the Madrid System), and others are excluded.

2. Individual national registration.

There are currently about 200 sovereign countries, regions with independent legal systems, and national organizations worldwide. As long as each country or region has trademark-related regulations, trademark protection can be carried out individually.

1. Flexible applications.

Registering individually in most countries worldwide does not require the registration foundation of the original country, so companies have more freedom to apply for trademarks and specify certain goods or services. Therefore, companies can enter overseas markets before their trademarks do so. And can provide expanded protection for the brand.

2. Relatively low risk.

By registering trademarks in each country, a preliminary search is usually conducted there. Applicants can clearly know whether their trademark has been registered in that country, what the outcome of the trademark will be, and whether using the trademark there constitutes infringement.

3. Convenient for rights protection.

Registration is usually done through the country's intellectual property office or law firm. After successful registration, you not only receive an official registration certificate from that country, but also receive a certificate of exclusive rights in case of infringement, helping to avoid further losses. Additionally, the firm pays close attention to the trademark, promptly identifying and handling any infringement or malicious registration by others.

4. Power is relatively stable.

The country in which the trademark is applied for is governed by the relevant trademark laws of that country. Unless the authorized holder seriously violates that country's trademark laws, the exclusive trademark right remains stable during its validity period. Additionally, when a registered trademark is about to expire, the agency will generally remind you to renew it, which cannot be achieved through Madrid registration.

5. Wide registration scope.

About 200 countries and regions worldwide can register individually, so we won't elaborate here. Compared to applying for trademark registration through the Madrid System, registering each country individually is more flexible and secure, and allows for more effective follow-up monitoring. It is more suitable for large enterprises, companies with high external rights protection requirements, or those without registration in their home country but urgently need to use their trademark overseas.

Correspondingly, individual country registration also has certain advantages, mainly reflected in:

1. High costs.

In bulk registration, registering through the Madrid System costs more than half compared to registering individually (of course, the services offered are different). For a few countries, the notarization and authentication fees are indeed quite high. For example, the UAE notarization and authentication process costs 8,500 RMB, but in most countries that require notarization or certification, the fees do not exceed 1,000 RMB.

2. Some countries are more time-consuming.

Registration through the Madrid System generally takes no more than 18 months, while registering individually by country takes much longer. For example, registration in India takes about 4 years, Brazil 3 years, and the Philippines about 3 years; However, in some countries, you can obtain a registration certificate within one year after applying, such as Switzerland, Singapore, Germany, France, and others.

3. Conclusion.

In summary, both Madrid registration and individual state registration have their own advantages and disadvantages. Applicants should make a choice after considering their own situation and various risks.

References

During the writing of this book, I mainly referred to the following bibliography, for which I would like to express my gratitude!

1.《TRADEMARKS THROUGHT THE WORLD》 Edited by Nanay H.Morowitz

2. Egypt Intellectual Property Office website Http://www.egypo.gov.eg

3. http://www.asiaci.com on the official website of the Macau Intellectual Property Office

4. Benelux Intellectual Property Office website Http://www.boip.int/

5. Http://inpi.fr.boip.int on the website of the French National Institute of Industrial Property

6. http://www.cipo.ic.gc.ca on the official Canadian website

7. South African Companies and Intellectual Property Registry Office website http://www.cipro.goc.za

8. Swiss Federal Intellectual Property Office website http://www.ige.ch

9. Official website of the Hong Kong Intellectual Property Department www.ipd.gov.hk

10. New Zealand Official Website http://www.iponz.govt.nz/cms

11. UK Intellectual Property Office http://www.ipo.gov.uk/

12. United States Patent and Trademark Office http://www.uspto.gov/

14. European Internal Market Coordination Office website http://oami.europa.eu

15. "Trademark Law and Practice in Various Countries," by Lu Pushun and Zhang Baoguo, Gongshang Publishing House, March 2006

For related inquiries, please contact Huaxu Zhengxin Intellectual Property: Tel: 010-67089491, WeChat Official Platform: huaip1, or Email: info@huaip.com.