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International Trademark Registration: Not what you think it is!

Madrid International Trademark Application

Is there such a thing as an “International Trademark Registration”, which allows your trademark to get registered throughout the world with one single application? That is quite a common question asked by many.

Unfortunately there is no such thing yet. For people familiar with trademark applications, they would know that trademark protection is territorial, meaning if you wish to obtain protection of your trademark in a certain country, you will have to file an application directly to the local Trademark Office. There are indeed some exceptions allowed by some trans-national organizations, e.g. by registering a trademark with the European Union Intellectual Property Office (EUIPO), you will have your trademark registered and valid in all 27 member countries.

You might ask: “How come we hear sometimes about the term International Trademark Registration? What does that mean?” Yes, you just raised a good question!


Madrid Trademark Registration System (The Madrid System)

When we talk about International Trademark Registration, we are usually referring to the trademark registration system under the Madrid System. This system originates from the international agreement “Madrid Protocol”, with more than 100 countries being the participating members. Please note while Hong Kong plans to join the Madrid System, as in 25 August 2023, we are still not a participating jurisdiction yet.

Requirements for Filing a Madrid (International) Trademark Application

To file an International Trademark Application, two prerequisites are required:

  1. The applicant must be an entity of/ resides in/ runs a business in a participating country/ jurisdiction of the Madrid System (That is why Hong Kong people and companies cannot participate in the System and file an International Trademark Application yet)

  2. You should have a local trademark application filed to the local IP office first/ have a registered trademark in the local IP office first, and then extending it to the countries desired for registration

Features of a Madrid (International) Trademark Application

If the above requirements are fulfilled, applicants could then file their international applications to the target countries through local IP offices. All the official notices and your responses will first go through your local office, and then to be sent to the designated country’s IP office. Simply speaking, your local office will be the middleman of your application, for filing your application and sending you the notices from abroad.

You also need to know that these international applications will also go through standard examination and publication procedures in the target countries. They can be refused or opposed, just like what an ordinary application in Hong Kong would be. It is not true that international applications will always be approved and registered automatically.

Pros and Cons of a Madrid (International) Trademark Application

Filing an international trademark application via the Madrid System has its own pros and cons. Before applying, you should consider the following points first:

Pros of a Madrid Application

  1. Relatively Simple: You will only have to deal with your local IP office for filing and receiving documents

  2. (Possibly) Lower Costs: Your costs of application could be lower when compared to directly filing to the IP offices in different countries (only if you file a larger number of applications)

Cons of a Madrid Application

  1. Not for Hong Kongers Yet: Hong Kong citizens and companies cannot make use of the Madrid System yet, unless you have another entity of a participating member

  2. Costs not necessarily lower: Filing an International Trademark Application with few number of applications (i.e. filing to less than 5 countries) might have the costs even higher than filing directly to IP offices in those countries

  3. Tight time for Responding to Official Notices: As all the official notices will be sent to you through your local IP offices, there would inevitably be delays. If you are required to file any response regarding your application, you will have much less time for preparation. The worst scenario would be you might have no time to file a response and risk your application to be refused/ abandoned

  4. Unexpected Costs: If your application is refused or requires professional advice, you might have to engage with local agents for assistance. Unexpected costs would then arise

  5. Requires Extra Trademark Knowledge and Experience: As applications will still have to go through full sets of examination procedures in the countries you are applying for trademark registrations and you are handling on your own, you would have to be familiar with the steps of applications in different countries, in order to avoid unfavourable results

From the above points, we can see that although an International Trademark Application seems to be convenient for an applicant, hidden traps are indeed there and extra preparations would be required before filing.

Actualis’ Professional Trademark Service

Actualis is a professional intellectual property agency focusing on providing trademark services. Our extensive knowledge and experience come from the thousands of cases we handled. We excels in providing tailor-made trademark solutions to companies in different industry, and are well-equipped in handling trademark-related applications worldwide.

Should you have any question on trademark issues, just feel free to contact us for free consultation: +852 9545 3177 (Phone/Whatsapp); (Email).


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