Oficina Española de Patentes y Marcas

International trademark

What is the international trademark?

The international trademark is part of a trademark registration system for countries belonging to the Madrid System, and it includes two international treaties: the Madrid Agreement and the Madrid Protocol.

It is not a trademark that can be registered throughout the world, but only in the countries that belong to the Madrid System. There are currently 80 that either form part of the Agreement, the Protocol or both. A trademark may also be applied for protection in the European Union (see the list of member countries on the WIPO page: http://www.wipo.int/madrid/en/members/index.html). The system cannot be used to protect the trademark in other non-member countries.

Advantages of the system

The Madrid System simplifies and unifies a series of procedures, such as the formal examination and publication, in order to obtain a register with the same rights and responsibilities in each of the designated countries as if it were a national trademark.

With a single application, in a single language, paying a single fee in Swiss francs, it is possible to obtain protection in many countries (see fees on the WIPO page http://www.wipo.int/madrid/en/fees). In addition to this protection, it is possible to subsequently extend it to other countries party to the system at any time be means of a territorial extension application. It is also worth noting that the international trademark is easier to manage than several national trademarks, given that it will be subject to just one renewal (the duration of the international registration is 10 years, renewable every 10 years), and it is also easier to register changes of ownership, representation or limitations to the products or services.

In short, it is easier to obtain protection in other countries and to manage that protection in the future.

How is an international trademark applied for?

An international trademark may be applied for to the SPTO by individuals or legal entities with Spanish citizenship or residing in Spain or that possess a real and effective industrial or commercial establishment in Spain.

Applications for an international trademark with the SPTO require a Spanish national trademark with the following special features:

to designate countries party to the Protocol, only a Spanish-based application is required; that is, simply apply for a trademark in Spain
to designate countries party to the Arrangement, the Spanish trademark must already be registered (granted).

The international trademark must have an identical owner, identical symbols and identical products or services included among those applied for or granted in the national trademark.

International applications must always be submitted through the SPTO, which is the entity that must certify these situations.

The international trademark application includes a national fee that is independent to the fees to be paid to the International Office.

Application forms

To submit the International Trademark application, forms MM1, MM2 and MM3 must be attached (see forms on the WIPO page http://www.wipo.int/madrid/en/forms)

Registration procedure

The international trademark registration procedure involves three phases:

The first involves the Spanish Patent and Trademark Office as the source office, in which the application is received and an initial formal examination is conducted to verify that all of the application data coincides with the data for the national trademark, which is used as a basis. The application is then sent to the WIPO.
The second involves the World Intellectual Property Organisation (WIPO), in which a formal examination is conducted and the trademark is published with an international number in the WIPO's International Trademarks Gazette.
The third involves the national office of each requested country, which receives the WIPO designation (since the international registration has the same effect in each country as a national application in that country), which decides, in accordance with its national legislation, whether the international trademark should be granted or not with designation in that country.