An International trademark registration enables a Swiss or a Community trademark (European Union trademark) to be extended to other countries. Trademark owners may use the Madrid System (comprised of the Madrid Agreement and the Madrid Protocol) to secure International trademark registration in countries which are parties to one of these treaties. Protection may be obtained in some or all of these countries through a single application. The Madrid Agreement and the Madrid Protocol have been joined to by Members of the Madrid System.

International trademark registration is administered by the International Bureau of the World Intellectual Property Organization (WIPO), located in Geneva, Switzerland.

An International trademark may only be filed by an applicant who has already filed an application to register a national trademark (i.e. a Swiss trademark) or a Community trademark (European Union trademark). Only a person or legal entity who is a national of or is domiciled in or has a commercial or industrial establishment in a country which is party to the Madrid Agreement or the Madrid Protocol may use the Madrid System of International trademark registration to secure trademark protection internationally.

The procedure for the registration of an International trademark is very complex starting from the filing phase, therefore it is highly unadvisable to proceed without the help of an expert.

The application has to be filed at the Trade Mark Office of the applicant’s home country/region, corresponding to the base application or registration upon which the International application is based. The Office of origin checks the details of the applicant’s home application or registration and forwards the application to the WIPO. The application can be filed in either English, French or Spanish and can designate any number of the countries/regions members of the Madrid Agreement and/or the Madrid Protocol.

Should all requirements of WIPO be met in the application, the trademark is recorded in the International Register and published in the WIPO Gazette of International Marks. After this, the International Bureau distribute the application to the designated countries.

After receiving the application, each designated country has the right to refuse registration of the trademark if the application does not comply with the national registration laws of that country. However, rejection of registration may only be made within the applicable time limit that varies from 12 to 18 months from the date in which the WIPO has notified the international registration to the National Office of the designated country. The 12 or 18 months period may be extended where an opposition is filed against the relevant designation. In case no acceptance or rejection is received by the International Bureau within the specified time period, then protection of the trademark in the designated country is awarded to the Applicant by default. It is good to point out that if one or more countries refuse to register an international trademark, in any case such trademark remains valid in the other designated countries where no objections have been raised.

The application for an International trademark registration shall be identical to the base national trademark with regard to both the word/image and the goods/classes for the products and services claimed. However, an application for an International trademark registration shall claim only part of the classes claimed in the base national trademark.
The International trademark registration remains dependent on the base national trademark for a 5 years period starting from the date of the registration of the International trademark. This means that during this period the International trademark registration shall loses its effect if the national base trademark is invalidated in the country of origin. After the 5th year of registration, the International trademark registration is no longer dependent on the office of origin’s registration and it is thoroughly governed by the Madrid System rules.

The International trademark registration remains in force for 10 years starting from the date of the registration and is renewable for periods of 10 years.