There are two main ways to apply for trademark protection overseas: independent national trademark registration and Madrid trademark registration.
Independent national trademark registration,as the name suggests, is to submit a trademark registration application directly to the country where you plan to apply for protection. Since when a trademark is applied for registration overseas, the trademark has often been applied for registration domestically for many years, and it is no longer possible to claim priority for 6 months. Therefore, priority will generally not be requested. If you are applying for a new trademark in China and want to apply abroad, you can request the 6-month priority period for the domestic trademark.
Madrid international trademark registration refers to trademark registration among members of the Madrid Union in accordance with the provisions of the Madrid Agreement on the International Registration of Marks and the Protocol Relevant to the Madrid Agreement on the International Registration of Marks and its Common Implementing Regulations. The International Bureau is like a post office. It only serves as a transfer platform, that is, the applicant submits its trademark registration application to each union member state through the International Bureau, and then the trademark office of each member state examines whether to grant registration protection in accordance with its laws. In essence, it provides applicants with provides a more convenient application channel. The Madrid Agreement and the Protocol are two different treaties. Applicants between members designate countries through international registration and apply for trademarks in accordance with the applicable treaties. As of January 2020, there are 106 members of the Madrid Alliance, basically covering the world's major economies.
Relevance of Madrid International Registration and Domestic Registration/Application
(1) Madrid international registration must be based on domestic registration/application, the designated agreement country must have been registered domestically, and the designated pure protocol member must have been applied domestically, that is, a trademark application acceptance notice has been obtained.
(2) The Madrid international registration application should be consistent with the content of the domestic registration/application, that is, the name of the applicant is consistent, the trademark is consistent, and the goods and services do not exceed the scope of domestic registration. In addition, international registration can be applied for in multiple categories.
(3) Central Strike Principle, that is, within 5 years from the date of Madrid international registration, if its associated domestic trademark registration is rejected, revoked, or invalidated, its effect will extend to all designated countries of the international registration. After 5 years, the international registration will not be the same as the domestic registration. Reconnect.
Salient features of Madrid international registration
(1) Madrid International Registration has the convenience of simple procedures and low cost. Applicants can designate dozens of countries with just one application, avoiding the unique requirements of each country such as agency, translation, notarization and certification. At the same time, It can also save considerable costs (currently, the registration fee for a class of ordinary trademarks does not exceed RMB 100,000 even if all members are designated). International registration also pays a fee for renewal every ten years. Other procedures such as subsequent designation, transfer, change, renewal, etc. are relatively simple and the fees are relatively low.
(2) The Madrid registration certificate is issued by the International Bureau very quickly, usually only 6-8 months. However, the registration certificate of the International Bureau is not proof that registration has been approved in each country. It only means that the application has been registered with the International Bureau. It is forwarded to each designated country for review. Whether it can be registered in each designated country depends on whether each member country rejects the application. If it is not rejected, it will automatically be protected in that country, and the designated country will generally no longer issue a certificate. (Rejection period is 12 months for countries with an agreement and 12 or 18 months for countries with a pure protocol)
(3) Some disadvantages of Madrid international registration: International registration does bring many conveniences to applicants, but it also has disadvantages in some aspects. As an applicant, you must decide whether to register directly or obtain protection through international registration based on the specific circumstances. .
Compared with countries with relatively short direct registration review cycles, the Madrid registration cycle is too long; if the review in a member country requires responses to examination opinions, opposition responses, rejection reviews, etc., you still have to entrust a local agent, incurring new expenses.
The central strike principle has a great impact on applicants. Basic domestic applications will become invalid, and all Madrid applications will become invalid. Although pure protocol countries can convert to national registration, it will undoubtedly consume time and expense.
How to deal with a trademark that has been registered overseas?
There is a company that produces and sells stationery. It has many distributors at home and abroad. Among them, an American distributor was clever and registered the trademark of this stationery company in the United States first, and then sent a letter to Amazon, asking Amazon to transfer all other distributors. All stationery branded by this company has been removed from the shelves on the grounds that it constitutes trademark infringement. The stationery company is very angry and has no good solution. Come and ask us how to deal with it?
For trademarks that have been registered overseas by others, if you do not want to give up the country's market, you can only purchase and transfer the trademark; the application is invalid or the trademark is revoked and you submit a trademark application yourself; or you can change the trademark to a new one. When the US trademark of this stationery company was discovered, it was still in the application process. The stationery company stated that it would do its best to get the trademark back and entrusted a local trademark lawyer in the United States to apply for cancellation of the trademark. After more than a year of trademark cancellation process, The trademark was eventually revoked, and the stationery company simultaneously applied to register the trademark in the United States.
One characteristic of intellectual property is that the cost of applying for registration is relatively low, but the costs of subsequent revocation, opposition, and rights protection litigation will increase exponentially. In the above case, the cost of applying for a U.S. trademark is about 10,000 yuan, but subsequent The final cost of trademark revocation was less than 100,000 yuan (this was still the case when the other party did not respond to the lawsuit. If the other party responded, the process would be longer and it is expected to cost 150,000 to 200,000 yuan), so in order to avoid spending huge amounts afterwards It is better to spend the least amount of money in advance to prevent problems before they happen.
How to prevent trademarks from being registered overseas by others?
Those who engage in foreign trade or export products abroad may encounter the most common problem of trademark squatting. Coupled with the "trademark investment craze" that has arisen in recent years, there are many "trademark investors (squatters)" who specialize in various industries. Leading companies and brands in various industries rush to register some brands that have not applied for registration, and then start to resell them to obtain commercial benefits. The domestic boom in trademark investment has spread to overseas markets with Chinese people. In many countries, some malicious trademark squatters have registered some well-known domestic brands locally. Trademarks are not like patents, which require global novelty. Therefore, as long as a patent has been applied for in China, other people will not be able to apply for the exact same patent in other countries without the patent applicant transferring the priority. But trademarks are different. Based on the regional characteristics of intellectual property rights, trademarks do not have the concept of global novelty, so a trademark can be applied for in all countries around the world. For trademark protection, there is only one stupidest way, which is to apply for this trademark in all countries around the world.
Obviously, this approach is unrealistic and the cost is too high. As far as the author knows, only some luxury brands have registered trademarks in 200 countries around the world. In some very small countries, there is no need for trademark registration and no legal mechanism for trademark protection. So in this case, the trademark applicant only needs to select some countries for trademark registration. What are the conditions for selecting countries?
(1) The country where the product is produced, sold or intended to be sold;
(3) Countries with lower costs and stronger protection.
The author gives priority to recommending overseas trademark registration through the Madrid trademark system, which basically covers major economies and major production and sales countries. The rest can only be applied one by one through separate national trademark applications. Only by obtaining local trademark registration rights can you initially protect your trademark; for well-known trademarks, especially well-known trademarks that have great influence in the local area, it is best to entrust an experienced local trademark office to conduct trademark monitoring to avoid being used by others. Apply for a similar trademark, dilute or attach the trademark.
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