The International trademark

Two treaties regulate the International trademark:
The Madrid Agreement
The Madrid Protocol
There are countries that are part only to the Agreement (A) and countries that are part only to the Protocol (P), whilst other countries, amongst these Italy (from 17 April 2000), are part to both (A) (P).

[Main treaties differences ]

The two treaties are quite different from one another. One of the most significant differences is that under the Agreement an International trademark application must be based only on the registration in the country of origin, whilst under the Protocol this can be also based on a simple application for registration. Another difference is that, as per the Agreement, the application can be filed in the French language, whilst as per the Protocol, or per both the Agreement and the Protocol together, it can be done in French and in English.

[Applicable choice of treaties]

In countries such as ours, which is part to both, to file an application for a trademark you can choose to:
- designate countries which only adhere to the Agreement (in which case the applicable regulation is, in fact, governed only by the Agreement)
- designate countries which only adhere to the Protocol (in which case the applicable regulation is, in fact, governed only by the Protocol)
- designate countries which adhere to both the Agreement and the Protocol (in which case the applicable regulation is, by law, governed by the Agreement)

[Italian basic Trademark ]

If the applicant opts for the third instance, he must have a mark registered in Italy. Otherwise it will be possible to apply for registration of an International trademark on the basis of an application for registration, but it would be treated as follows:
- all the countries which are not part of the Protocol will be deleted from the application, as only these last ones can be designated on the basis of a registration application;
- if the applicant expressively declares that the application be treated as depending both on the Agreement and on the Protocol, the application will be kept and considered filed only on the day that the requested trademark is registered.
The International trademark lasts ten years from the filing date, but for the first five years, is bound to the basic registration, therefore if this last one lapses, the same happens to the International trademark.
The International mark has the same effect of a National trademark in every designated country. The selected countries may refuse the registration or make opposition within 6 months from the filing date, otherwise, the trademark will be considered granted in all the countries.

[Basic Community Trademark]

Even a Community one can constitute the basic mark. From the 1st October 2004 the European Community has also joined the Madrid Protocol, therefore the trademark’s holders can:

  1. Extend the protection of CM at International level. An application for a Community mark or a registered Community mark can be used as the basis of an International application.
  2. Designate the European Community in an International application.

The International application registration must be filed directly to the OHIM and must be in any of the official languages of the European Union. It is necessary to indicate a language authorised by the Madrid Protocol (French, English or Spanish) that will be the language of the International application registration.
The application can be based on a registered Community mark or on a Community mark’s application.
Upon receipt of the application, the OHIM republishes the International registration in a new section of the Bulletin of the Community marks. An International application designating the EU must indicate a second language, selected between the official languages of the OHIM (Spanish, German, English, French and Italian). In the case that a second language is not chosen, the OHIM will refuse the application and will postpone his republishing until a second language is available.
Following the republishing, the International application is subject to the research procedure, like the Community mark’s application.
Should there be a definite impediment to the registration, the OHIM is obliged to send, within 6 months after the republishing, a notification of provisional refusal to the WIPO. If there are no complications to the registration, the Office releases a first information (declaration) on the granting of protection and sends it to the WIPO. This has only an informative effect and is sent to the applicant before being published and being listed in the International register.
After being accepted by the European Community, the International application gets published in the Bulletin of Community trademarks. Starting from the date of the second publishing, the designation of the European Community acquires the effects of a registered Community trademark.
In the case where the OHIM does not approve the designation of the European Community, it is possible to convert it in:
- application of International trademark for the Countries in the European Union,
- designation of the Countries adhering to the Madrid Protocol.

[The Countries]

The 15th July 2005 the Countries are as follows:
Albania (A)(P), Algeria (A), Antigua e Barbuda (P), Armenia (A)(P), Australia (P), Austria (A)(P), Azerbaijan (A), Belarus (A)(P), Belgio (A)(P), Bhutan (A)(P), Bosnia and Erzegovina (A), Bulgaria (A)(P), Comunità Europea (P), Cina (A)(P), Croatia (A)(P), Cuba (A)(P), Cyprus (A)(P), Repubblica Ceca (A)(P), Repubblica Democratica di Corea (A)(P), Danimarca (P), Egitto (A), Estonia (P), Federazione di Russia (A)(P), Finlandia (P), Francia (A) (P), Georgia (P), Germania (A) (P), Giappone (P), Gran Bretagna (P), Grecia (P), Ireland (P), Iran (repubblica islamica di) (A)(P), Islandia (P), Italia (A)(P), Kazakhstan (A), Kenya (A)(P), Kyrgyzstan (A)(P), Latvia (A)(P), Lesotho (A)(P), Liberia (A), Liechtestein (A)(P), Lituania (P), Lussemburgo (A)(P), Monaco (A)(P), Mongolia (A)(P), Morocco (A)(P), Mozambico (A)(P), Namibia (A)(P), Norvegia (P), Paesi Bassi: - Territoriale dell’Europa (A)(P), Polonia (A)(P), Portogallo (A)(P), Repubblica di Corea (P), Repubblica di Moldavia (A)(P), Repubblica Iugoslava precedente di Macedonia (A)(P), Regno Unito (P), Romania (A)(P), San Marino (A), Serbia e Montenegro (A)(P), Sierra Leone (A)(P), Singapore (P), Slovacchia (A)(P), Slovenia (A)(P), Spagna (A)(P), Sudan (A), Swaziland (A)(P), Svezia (P), Svizzera (A)(P), Tajikistan (A), Turchia (P), Turkmenistan (P), Ukraine (A)(P), Ungheria (A)(P), U.S.A. (P), Uzbekistan (A), Vietnam (A), Zambia (P).

[Fees calculation]

This is very complicated to calculate as it varies according to the number of countries, also the countries (meaning that in some countries the fees are higher than in others) and the number of product classes and services.