Registration of a trademark

INTERNATIONAL TM REGISTRATION

Despite the misleading name, there is no single TM that covers the entire world. The international registration of a TM is a procedure for registering a TM which allows a TM to be filed through an IP office in only one country and result in a registered TM in many countries.

In case of international registration of TM (or in other words, TM registration according to Madrid system) we form an application and submit it to Ukrpatent. In this application we indicate the countries in which we also want to obtain protection for our TM. These countries must be parties to the Madrid Agreement and Protocol to it. Ukrpatent then sends this application to the International Bureau of WIPO, which conducts a formal examination and sends the application to the offices of each country, which in turn should conduct an examination on the merits.

TM REGISTRATION IN THE EU

TM registration in the EU allows for one TM for the whole EU. The registration procedure is quite simple and, in the absence of opposition from other rights holders, takes up to 5 months from the filing date to the issuance of the certificate.

However, with such registration one needs to be very careful and weigh all the TMs registered both in the whole EU and in each EU country separately, because their number is more than a million and there is a big chance that one may violate someone else’s earlier registration.

TM REGISTRATION IN THE USA

Registering TM in the United States allows you to have your mark protected throughout the USA. Such registration procedure takes about one year.

TM REGISTRATION IN OTHER COUNTRIES

The question may arise why register TM in each country separately when there is an international registration of TM? This is a legitimate question, because with an international registration of a TM, you end up with essentially identical national TM certificates in each country marked in the application.

However, submitting multiple applications to each country separately may be a better option given the following:

• international registration of TM is not profitable if you register in a small number of countries (3-4)
• if your TM is challenged in the country of origin, you may lose TM in all countries
• International TM registration usually takes longer than if you register directly in each country