Benelux trademarks offer protection for Belgium, the Netherlands and Luxembourg while a community trademark offers protection in all member states of the European Union.
If you would also like protection for your trademark beyond the European Union, you may follow the local procedures in each country separately. If there are a lot of countries involved, this process can become long and costly. In this case, it could be useful to use the international request system (Madrid System). This possibility must be examined on a case by case basis, preferably with the assistance of an expert.
The advantage of the international system is that by using a single request (sent to the office in charge of international registration, the World Intellectual Property Organization – WIPO – located in Geneva), you can obtain protection for your trademark in all of the countries which you designate. This option only exists for countries which adhere to the Madrid System, of which there are currently around 80 throughout the world. Since the European Union signed the Madrid Protocol, it is also possible to designate the European Union.
A “Madrid System” request has two steps.
- First, you must file your trademark in the country of origin. In other words, if you are located in Belgium, you request a Benelux or community trademark in accordance with the normal procedure.
A very small minority of countries require you to first obtain definitive registration of your trademark in your country of origin. These are countries which signed only the Madrid Agreement and not the Madrid Protocol.
Next, on the basis of this prior request (or registration) in the country of origin, you must request international registration from the same office. On this form, you must indicate the countries in which you would like to receive protection for your trademark. This is only possible for countries which are members of the Madrid Union. The international request is transmitted to the International Office of the WIPO in Geneva, which publishes the request in its monthly publication (WIPO Gazette of International Marks).
The WIPO then sends your request to the national patent offices of the countries which you designated, where it is processed according to the normal registration procedure of each country. At this stage, the grounds for refusing your request may be invoked and your request may or may not be accepted in certain countries. If the national trademark offices do not indicate a refusal within a certain time period, the request is considered accepted.
International registration does not have the same value as an international trademark, which would be automatically valid in all the countries of your request. It replaces national registration in each of these countries and therefore consists of a bundle of registrations of national trademarks.
The Madrid System also simplifies the subsequent management of the trademark given that any changes or a renewal of the registration may be recorded simply by contacting the international office of the WIPO. In addition, other countries may be designated even after the international registration.
Where and how?
While the international registration is handled by the international office of the WIPO, you must submit your international requests to the office where your original request was filed. This will be either the Benelux Office for International Property or the Office for Harmonization in the Internal Market.
Complete, up-to-date information on the member countries of the Madrid System and the characteristics of international registration may be found on the website of the WIPO.