Trademark registration abroad

A trademark has a territorial principle of protection, meaning it is protected only in the country where it is registered. Therefore, if your commercial activities extend beyond the Russian market, it becomes necessary to protect exclusive rights and register the trademark abroad.

SUBMIT AN APPLICATION

OUR AGENCY HAS EXTENSIVE EXPERIENCE IN REGISTERING TRADEMARKS ABROAD, AND THE QUALITY OF OUR SERVICES HAS BEEN APPRECIATED BY MANY RUSSIAN APPLICANTS.

WAYS TO ACQUIRE LEGAL PROTECTION FOR A TRADEMARK IN VARIOUS COUNTRIES:

International trademark registration (Madrid System)

Registration of a trademark under national procedure

Registration of a trademark within a regional union

Which procedure to choose?

International trademark registration (Madrid System)

The functioning of the Madrid System for the international registration of marks is governed by the Madrid Agreement, concluded in 1891, and the Protocol to that Agreement, concluded in 1989. 

An application for trademark registration under the Madrid System can be filed based on a registered national trademark or a filed national trademark application. Registration of the trademark is carried out by filing a single international trademark application and paying one set of fees. 

Регистрация товарного знака осуществляется с помощью подачи единой международной заявки на регистрацию товарного знака и оплаты одного набора пошлин.
(When filing the application, Rospatent fees for acceptance and forwarding are paid: 5,000 RUB for 1-3 ICGS classes + 1,000 RUB for each class beyond the 3rd. After forwarding the application to WIPO, international fees are paid – from 753 Swiss francs for one country;
from 100 Swiss francs for each subsequent country;
Japan, Brazil, Cuba have an additional fee payable upon a positive decision (from 100 CHF per class).

Подача заявки на регистрацию товарного знака по Мадридской системе позволяет испрашивать охрану более, чем в 120 странах мира.

Международная регистрация сохраняет свою зависимость от базовой национальной заявки/регистрации в течение первых 5 лет своего действия (начиная с даты международной регистрации).

Упрощенная система последующего «обслуживания» регистрации, путем направления единого заявления о внесении изменений, продлении, передачи прав для всех или части указанных в регистрации стран.

Возможность последующего «расширения» международной регистрации посредством дополнительного указания стран.
При этом международная пошлина за данное «расширение» составляет примерно половину от первоначальной пошлины (пошлина ВОИС от 300 швейцарских франков).

Scope of services provided:

Preparation of the application for international trademark registration; translation of the list of goods and services for the application; payment of official Rospatent and WIPO fees; filing the application with Rospatent.
Notification of the client about registration and assignment of the trademark number;
forwarding incoming WIPO notifications regarding the international trademark registration to the client.
Notification of the client about received provisional refusals and decisions from national offices regarding the international registration.

If queries concerning the international registration are received from national offices, the cost of responding to the query will be agreed with you. This cost will include the fee of the patent attorney in the respective country and will depend on the complexity of the refusal.

Timeframe for processing an international registration

The timeframe for processing an international registration in each country designated by the applicant does not exceed 1 year under the Madrid Agreement and is about 18 months under the Madrid Protocol.

International trademark registration is granted for 10 years with the possibility of renewal.

Registration of a trademark under national procedure

Подача заявки регламентируется требованиями и нормами права, установленными национальным законодательством страны, на территории которой необходима регистрация товарного знака

Filing an application is governed by the requirements and legal norms established by the national legislation of the country where trademark registration is required. 

An application for trademark registration under the national procedure does not require a previously registered mark in the country of interest or applicant residency.

When filing a national application, it is necessary to consider the specifics of the legislation of the country of interest. For example, in Kuwait, UAE, and Saudi Arabia, registration of trademarks for ICGS Class 33 (alcoholic beverages) is prohibited.

Trademark registration is granted for 10 years with the possibility of renewal.

Registration of a trademark under the national procedure is carried out with the help of our partners – patent attorneys in the specified countries.

Scope of services provided: 1. Provision of comprehensive information on required documents, fees, timeframes, and stages of the trademark registration procedure abroad, and we will agree on the fees of foreign attorneys. 2. Case management support (monitoring deadlines; correspondence with foreign attorneys; receiving and analyzing correspondence). 3. In case of receiving a query/provisional refusal/third-party opposition in the application materials, we will advise you and agree on a further strategy.

Registration of a trademark within a regional union

Protection of trademarks within the EAEU

Protection of trademarks within the European Union

TREATY ON TRADEMARKS, SERVICE MARKS AND APPELLATIONS OF ORIGIN OF GOODS OF THE EURASIAN ECONOMIC UNION

The Treaty establishes a regional system for registration and legal protection of intellectual property assets of the EAEU, under which an applicant can obtain legal protection for a trademark or appellation of origin based on a single application filed with any of the five national patent offices.

Currently, filing an application for a trademark within the EAEU is not possible, as the mechanism has not been fully finalized by the intellectual property offices of the participating countries. In this regard, the most effective way to protect the rights of Russian applicants in CIS countries currently remains filing an international application seeking protection in CIS countries. All CIS countries are members of the Madrid Agreement and its Protocol.

SUBMIT AN APPLICATION

FILING A REGIONAL APPLICATION WITH THE EUROPEAN UNION INTELLECTUAL PROPERTY OFFICE (EUIPO)

Filing a single application for trademark registration. Legal protection extends to all countries of the European Union (27 member countries); separation of individual countries is impossible. Use of the trademark in even one country is considered use of the EU trademark. However, a refusal of the European application based on examination results will lead to the loss of the possibility of obtaining legal protection in all EU member states. 

The EU application examination procedure includes checking for absolute grounds for refusal (descriptiveness, deceptiveness) and publication for opposition by third parties. If no oppositions are filed during the publication period by third parties, your designation will be granted protection as a European Union trademark, valid in all EU countries. If a third-party opposition is filed, proceedings on your European application will be suspended until the dispute regarding the filed opposition is resolved. The trademark application can be filed for any designation and will not depend on a Russian registration.

SUBMIT AN APPLICATION

FILING AN INTERNATIONAL REGISTRATION UNDER THE MADRID SYSTEM SEEKING PROTECTION IN EUROPEAN COUNTRIES.

One option when designating territory under the Madrid System is to designate the European Union countries as a single territory. This option is the most budget-friendly, as the fee is paid only for the European Union as one jurisdiction. A possible negative consequence is that any third party that has a similar, in their view, national registration/priority application in one EU country or a European registration/priority application as a single designation, can file an opposition against your application. Until the opposition issue is resolved, the registration process will be suspended in the EU as a whole. An alternative option for filing an international registration seeking protection in EU member countries is to designate each European country separately. An opposition by a third party holding a European registration can be filed in each EU country, which is quite labor-intensive and costly. If the party only has a national registration in one EU member country, they can only file an opposition in that country; in the others, proceedings will continue.

SUBMIT AN APPLICATION

Which procedure to choose?

The Bureau of Patent Agency "Ermakova, Stolyarova and Partners" provides qualified assistance in the application filing process, advising on the choice of countries and classes for registration.

The cost of registration under this convention depends on the number of countries where trademark protection is required, as well as on the classes of goods and services specified in the application.
The choice of registration procedure by each applicant is based on many factors, which may be more significant for some and less so for others. Before making a choice, the applicant needs to answer several questions, including:

- Is there a basic Russian application or registration?

- Is there a risk of refusal of the trademark application in Russia or a risk of challenging the trademark registration on which the international application or Russian registration will be based (risk of consequences from the dependence of the international registration on the basic Russian application or trademark registration)?

- In which territory is legal protection needed now, and is expansion into other countries planned?

If a country is not a member of the Madrid Agreement and its Protocol, the only option for obtaining trademark protection on its territory is to file an application with the national patent office or seek regional protection if the country is a member of a regional union.

The specialists and patent attorneys of Patent Agency "Ermakova, Stolyarova and Partners" are ready to provide professional assistance and support on all matters related to the international registration of trademarks.

We also provide legal support for transactions involving the further disposal of rights to trademarks. Additionally, we will be glad to provide services for protecting exclusive rights to trademarks throughout their validity period against attempts at cancellation by third parties and unauthorized use.