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Introduction to Trademarks


 


International Trademark Rights


1. In which countries should I register my mark?

You should consider registering your mark in any countries in which you currently offer your products or services under that mark and you should also consider filing in those countries where you intend to use the mark for your products or services in the future. Use of a mark is not required before filing an application in the U.S. and in most other countries.


2. Is it possible to secure a trademark registration covering many different countries through a centralized source or service?


Yes. Several international agreements coordinate the procedure of filing applications for trademark registration in more than one country. A registration with the Benelux Office for Intellectual Property (BOIP) covers Belgium, Luxembourg and the Netherlands. A Community Trade Mark (CTM) protects a trademark in all of the member countries of the European Union. The Madrid Agreement and Madrid Protocol provide an opportunity to file an application for an international registration that will cover multiple member countries. Filing with the African Intellectual Property Organization (OAPI) protects trademarks in all of the member countries in Africa. There is also the possibility of filing with the African Regional Industrial Property Organization (ARIPO), under which a trademark owner can protect its trademark in the member states in southern Africa.

See also 
Community Trade Mark 
Community Trade Mark and the Madrid Protocol Comparison 
International Treaties 
Madrid Protocol


3. What is a Community Trade Mark (CTM)?


A CTM is a single unitary trademark right that must be applied for, and which provides protection for a trademark or service mark in all of the member countries of the European Union. A CTM registration may be beneficial as use in one member country may be considered to be use in all member countries. There are also administrative efficiencies through maintaining a single registration.

See also
Community Trade Mark
Community Trade Mark and the Madrid Protocol Comparison


4. What is the Paris Convention?

The Paris Convention is an international treaty concerning the protection of intellectual property. The nationals of any country that is a member of the Paris Convention are afforded the same advantages with respect to intellectual property that the national law grants it citizens.

See also International Treaties


5. What is meant by "Convention Priority?"

Under the Paris Convention, any person who files a trademark application in a member country may claim priority of that filing date if an application is filed in any other member country within six months from the date the original application was filed.


6. What is the Madrid System?

The Madrid System constitutes two separate treaties, the Madrid Agreement and Madrid Protocol. Under the Madrid Agreement the nationals of any signatory country may secure protection of their trademark registered in the country of origin in all other Madrid Agreement Countries. Under the Madrid Protocol, nationals of any signatory country may secure protection in member countries based on a pending application in the country of origin. Both the Madrid Agreement and Madrid Protocol are administered by the International Bureau of the World Intellectual Property Organization (WIPO) based in Geneva, Switzerland. As from September 1, 2008, for States bound by both the Madrid Agreement and the Madrid Protocol, only the provisions of the Protocol apply. Consequently, from this date, International Trademark Registrations are governed by the Madrid Protocol only in all member countries which are a party to the Protocol and also in those which are party to both the Protocol and the Agreement. The Agreement will only remain applicable in relations with those member countries bound solely by the Agreement.

See also Madrid Protocol


7. What is an International Registration (IR)?

An International Registration (IR) is the designation for a registration secured under the Madrid System.

See also Madrid Protocol


8. What is ARIPO?

ARIPO is the “African Regional Intellectual Property Organization” which was formed by members of certain English-speaking African nations and enables members to file one regional application for the protection of trademarks in member countries.

See also International Treaties


9. What is OAPI?

OAPI is the “African Intellectual Property Organization” which was formed by members of certain French-speaking African nations and enables members to file one regional application for protection of trademarks in member countries.

See also International Treaties


10. What is the Andean Pact?

The Andean Pact is an agreement among Bolivia, Colombia, Ecuador and Peru, members of the Andean Community, which provides for one common trademark law among the member countries.

Does the Andean Pact Provide a common registration?

No, rather, it provides for certain reciprocal rights to be available upon request of the trademark owner. For example, an entity that first applied for registration of a trademark in any Member Country, may lodge an opposition against a similar mark filed in the other Member Countries. Moreover, use of a trademark in any one of the Member Countries constitutes use of the trademark in any Member Country for purpose of non-use cancellation proceedings.

See also International Treaties


11. Can the same mark be owned by different parties in different countries?

Yes, this is possible. Since trademark rights are generally geographic in scope, it is possible for some trademarks to be registered in different countries by different owners. In a few countries, including the United States, a trademark can have multiple owners in different geographical regions of the same country.
 

Additional INTA Resources

Topic Portal: Registration


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