In the international registration of trademarks, the most common forms are the Madrid international registration and the country-by-country registration. Before choosing the registration method, let's introduce and compare the two methods.
I. Madrid agreement on the international registration of trademarks and the protocol thereon to the Madrid agreement on the international registration of trademarks
The Madrid agreement on the international registration of marks was signed in Madrid, capital of Spain, on April 14, 1892 and came into force in 1892.
On 27 June 1989, the protocol relating to the Madrid agreement on the international registration of marks was signed in Madrid, Spain. The state designated by the applicant may choose to use English or French if it contains at least one pure protocol member state.
At present, 80 countries and national organizations have joined the Madrid international trademark registration system.
The main advantages of Madrid registration are:
1. The procedure is relatively simple (without agents).
If by way of Madrid international registration, trademark applicants may submit an application and only through to ZhuGuanJu was specified in multiple countries get trademark protection at the same time, the application procedure is simple, compared with one by one country to register formalities to bother some (one by one national register is usually entrust some experience on foreign firms, so also is not complicated) for the applicant.
2. Relatively low cost (with successful registration)
Madrid international trademark registration fees include three parts: first, the basic registration fees; Second, the cost of the designated country; Expenses incurred by the national trademark office; Additional, entrust agent to deal with, still need to pay certain agency fee. The international registration applicant may designate a member state or the entire member state in one application, the trademark international registration applicant all needs to pay one basic registration fee, therefore, the designated country more more economical.
3. The time required is relatively short (in some countries).
The international registration certificate of a trademark issued by the international bureau of the world intellectual property organization (WIPO), which contains the international registration number and international registration date of the trademark, can be obtained about 6 months after the applicant submits the application for international registration of the trademark to the trademark office. Of course, the international registration certificate of the trademark only indicates that the international bureau has received the application for international registration. From international registration date, if within the prescribed time limit designated countries (in accordance with the protocol for 12 months, according to the protocol for 18 months) without sending the notice of rejection to the international bureau, the trademark will automatically receive protection in the designated countries (if one by one country to apply for a registered trademark, obtain the time needed for the exclusive use of a trademark, such as France, Burma, Denmark, Britain, for half a year, Israel and China for a year in Hong Kong, India, for four years or so).
Madrid has its own advantages in applying for international trademarks, which can save time and cost if successfully applied. It is more suitable for batch countries. This kind of application is suitable for European enterprises and small and medium-sized enterprises to protect their own brands.
But the Madrid registration system also has serious flaws.
1. Not conducive to expanded protection.
To apply for a trademark through the Madrid system, it is necessary to keep the trademark and designated goods exactly the same as the trademark of the country of origin. The selection of goods has great limitations, which is not conducive to brand protection and is also very unfavorable to the diversified development of enterprises overseas.
2. The certificate has no validity.
Although the trademark application through the Madrid system can be announced soon and get the official certificate, such announcement and certificate are equivalent to the domestic notice of acceptance, which can only prove that the trademark has been applied through the Madrid system, and whether the trademark is protected by other countries needs to be proved by other countries. By Madrid application for trademark registration, the applicant can't get the specified the trademark registration certificate issued by the state, if you need to get the registration certificate, you must apply to the competent authority of the designated countries, and the business also inevitably needs to be handled by when the agency organization (enterprise often because of the lack of effective certificate and cause not timely processing overseas infringement).
Power is unstable.
If the basis of the trademark registration in the country of origin of Madrid is revoked or declared invalid within five years of the application, or if the basis of the application is rejected, the whole Madrid application will be invalid. In particular, applying for international registration through the Madrid protocol has greater potential risks.
4. Difficulty in follow-up.
If a trademark designated countries reject or require corrections or be objection, will only to inform the international bureau, specific affairs entrusted to deal with when the firm, and reply the official dismissed, corrected and objection defense has a time limit, once encounter the above situation, not only is the cost problem, more likely to be due to at that time to find suitable when the firm reply official advice which is invalid in applications. In addition, when the international registration is renewed, the international bureau has no obligation to remind the applicant. Failure to renew the registration in time will result in the whole Madrid registration being invalid.
5. Priority issues.
According to the Paris convention, any of the Paris convention for the member enterprises in the original territories again six months after the application for trademark application for trademark registration in other countries can enjoy priority, and the trademark office in China is just issued the acceptance notice requires six months or so, so many large enterprises for fear of registered trademarks have been registered and are reluctant to choose Madrid.
6. No valid query can be made.
Through the Madrid system to apply for the trademark, can only look up to the Madrid system has applied for a trademark, and not to the specified query, the query results cannot achieve effective comprehensive, so applicants in late may face the risk of knowing, the applicant for the reason of the events of the infringement occurred occasionally.
7. Limited scope of registration.
Although the Madrid system has 80 members, they are mainly concentrated in the European region. Most American countries, including Canada, and asean (only Singapore is a member of the Madrid system) are not included in the Madrid system.
Ii. Separate national registration one by one.
There are about 200 sovereign states, regions with independent legal systems and national organizations in the world. As long as the country or region has relevant provisions on trademarks, trademark protection can be implemented through registration one by one.
1. Flexible application.
In the vast majority of countries in the world, one-by-one registration does not require the registration basis of the country of origin. It is relatively free for enterprises to apply for what kind of trademark and what kind of goods or services they want to specify. Therefore, enterprises can achieve the trademark before the commodity to join the overseas market. And be able to extend brand protection.
2. Relatively small risks.
Through trademark registration in each country, the applicant can clearly know whether his/her trademark is registered in that country, what kind of application result the trademark will have, and whether the use of the trademark in that country will involve infringement.
3. It is convenient to safeguard rights.
Generally, the country-by-country registration is carried out through the national intellectual property law firm or law firm. After successful registration, the registration certificate jointly issued by the country's official can be obtained, and the exclusive right certificate can be issued in time in case of infringement to avoid the expansion of losses. In addition, the law firm will also pay attention to this trademark to some extent, and timely find and deal with problems such as infringement or malicious registration of others.
Power is relatively stable.
Where the trademark is applied for, it will be governed by the relevant trademark laws of that country. Except for the serious violation of the trademark laws of that country by the authorized person, the right to exclusive use of the trademark will remain stable in the period of validity. In addition, registered trademarks are about to expire, the agency will generally remind the renewal, which is not through the Madrid registration.
5. Wide range of registration.
There are about 200 countries and regions in the world that can be registered one by one. Compared with applying for trademark registration through the Madrid system, country-by-country registration is more flexible and safer, and at the same time, it can carry out more effective late-stage attention. It is more suitable for large enterprises or enterprises with higher requirements for external rights protection, or enterprises without the registration of the country of origin but in urgent need of using trademarks overseas.
Accordingly, country-by-country registration also has certain advantages, mainly reflected in:
1. Higher costs.
In the case of bulk registration, the cost of registering through the Madrid system is more than half that of registering through the country-by-country system (of course, the services received are different). A few countries register, its notarization, attestation charge is on the high side really, if uae notarization, attestation program needs 8500 yuan RMB, but the country charge that most needs notarization, attestation does not exceed 1000 yuan RMB.
Some countries take more time.
It usually takes no more than 18 months to register through the Madrid system, but it takes much longer to register one country at a time. For example, it takes about 4 years to register in India, 3 years in Brazil, and roughly 3 years in the Philippines. However, in some countries, such as Switzerland, Singapore, Germany, France, etc.
In conclusion, Madrid registration and country-by-country registration have their own advantages and disadvantages, and applicants should consider their own situation and various risks before making a choice.
In this book compilation process, mainly saw the following bibliography, expressed thanks here!
1. THE TRADEMARKS THROUGHT THE WORLD ", Edited by Nanay H.M orowitz
2. Website of the Egyptian intellectual property office Http://www.egypo.gov.eg
3. The official website of Macao intellectual property department is http://www.asiaci.com
4. Website of the intellectual property office of Benelux at Http://www.boip.int/
5. Website of the French state industrial property office Http://inpi.fr.boip.int
6. Canadian official website http://www.cipo.ic.gc.ca
7. Website of South African companies and the office of intellectual property registration at http://www.cipro.goc.za
8. Website of the Swiss federal intellectual property office http://www.ige.ch
9. Official website of the Hong Kong intellectual property department: www.ipd.gov.hk
10. New Zealand's official website http://www.iponz.govt.nz/cms
11. Intellectual property office of the United Kingdom http://www.ipo.gov.uk/
12. The United States patent and trademark office http://www.uspto.gov/
14. European internal market coordination bureau website http://oami.europa.eu
15. Trademark law and practice in various countries, lu pushun, zhang baoguo, industrial and commercial press, March 2006
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