Trademark rights in multiple jurisdictions

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Trademark rights in multiple jurisdictions

  • 19 January 2024
  • Author: FinHub
  • Number of views: 248
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Trademark rights in multiple jurisdictions

Today’s business owners have the opportunity to expand like never before. To avoid the worry of somebody illegally taking a piece of the pie when expanding and being part of the global economy, it is vital to protect one’s IP in as many countries as possible. The rise of technological development provides for a seamless expansion experience. This can be done either by directly applying to each jurisdiction or by using the facilitation of the Madrid system as explained below. 

In general

The international system is based on the multilateral Madrid Agreement Concerning the International Registration of Marks of 1891, as well as the Protocol Relating to the Madrid Agreement (1989). It is often referred to as the ‘Madrid system’ and is administered by the International Bureau of the World Intellectual Property Organization (WIPO). Unlike its European counterpart which allows for a single registration throughout the European Union, the Madrid system only provides for a centrally-administered system of obtaining a bundle of national trademark registrations in separate jurisdictions. Nevertheless, when juxtaposed with the fees imposed by local agents on a pursuit for individual trademark registrations for each jurisdiction, this mechanism can truly be cost effective as well as time saving. 

Advantages

  • single application
  • one set of fees
  • one language,
  • easy recordals (e.g. changes of name or address, renewals)

Disadvantages

  • dependable on a basic application
  • not all jurisdictions worldwide are covered
  • requirement of local presence in the event of an opposition

Requirements

The application must be submitted by the same owner that submitted the basic application, and the goods and services provided with the basic application must also match the international application or be limited down to just some of the goods and services of the basic application.

Before applying

Some important considerations are:

  • Current business
  • Future business
  • Establishment
  • Manufacturing
  • Amount of jurisdictions

In summary, business owners are able to take advantage of the simplicity of the international registration system and the financial savings made when obtaining and maintaining the protection of their trademarks in multiple jurisdictions by always being diligent about their strategy and by having the end in mind.

Michael Kyprianou & Co LLC. has a leading Intellectual Property practice with a team of experienced lawyers who are able to advise and assist clients in relation to both contentious and non-contentious IP matters. If you need any advice in relation to Intellectual Property Rights, please contact Agis Charalambous, at telephone +357 22 447777 or email agis.charalambous@kyprianou.com

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