By Fernanda Zaragoza Benitez, LL.M. in Intellectual Property
In the current economic conditions, many businesses are looking to expand their offer and brand beyond their home market. What are the options to build and grow an international trademark portfolio?
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- The national route which involves filing separate applications with the Intellectual Property (IP) Office of each country in which protection is sought.
- The regional route involves applying for protection through a regional trademark registration system with legal effect in all Member States. This includes applying for protection, for example, through the African Regional Intellectual Property Organization (ARIPO), the Benelux Office for IP (BOIP), the European Union Intellectual Property Office (EUIPO), and the African Intellectual Property Organization (OAPI).
- The international route, which involves filing through the Madrid System. The effects of an international registration in each designated member are the same as if the mark had been filed directly with the IP Office of that member.
The most appropriate option depends on the trademark business strategy, including access to financial resources, the export markets’ location, and the timeframes in which protection is sought.
The team at HSS IPM have been working with the Madrid System for many years. We have identified that it is a convenient and cost-effective solution for registering and managing trademarks worldwide. With a single application in one language and paying one set of fees, a trademark owner can apply for protection in multiple markets such as Africa, Asia, Australia, Europe, North and South America. The Madrid System also allows for the modification, renewal, or expansion of a global trademark portfolio through one centralized system.
A final word of caution – clients should be aware that for five years from the international registration date, Madrid System filing is dependent on the original country or “basic” application and/or registration. This means that if the basic application and/or registration is abandoned, cancelled, or expired, in whole or in part, during this five-year period, the international registration will also be cancelled.
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