International (IR) Trademarks

The International Trademark (IR) system, governed by the Madrid Agreement (1891) and the Madrid Protocol (1989), enables trademark protection across multiple countries through a centralized filing process managed by the World Intellectual Property Organization (WIPO). Below is a detailed overview of the IR trademark system, including types, registrability, procedural steps, and notable legal decisions.

1. Overview of the Madrid System

Key Features

• Centralized Filing: A single application provides trademark protection in multiple member countries.
• Territorial Expansion: Additional countries can be added later through a subsequent designation.
• Cost-Effectiveness: One application eliminates the need for multiple national filings.

Participating Jurisdictions

• As of 2024: 130+ member countries, covering major global markets, including the EU, the United States, China, Japan, and Germany.

Eligibility

• Applicants must have a:
• Basic Mark: A trademark application or registration in their home country.
• Connection to a member state (e.g., residence, nationality, or business location).

2. Types of Trademarks under the Madrid System

The Madrid System allows registration of similar types of trademarks as national or EU systems, including:

• Word Marks: Words, letters, and numbers.
• Figurative Marks: Logos or designs.
• Three-Dimensional Marks: Product shapes or packaging.
• Non-Traditional Marks: Sound, motion, holograms, and color marks (subject to member states' national laws).

3. Registrability Criteria

Absolute Grounds for Refusal

• The same grounds apply as in national systems:
• Lack of distinctiveness.
• Generic or descriptive terms.
• Marks contrary to public order or morality.
• Deceptive marks.

Relative Grounds for Refusal

• Potential conflicts with earlier trademarks are examined by the designated countries' trademark offices.

4. Application Procedure

Step 1: Basic Application/Registration

• The applicant files a trademark application or secures a registration in their home country (the "basic mark").

Step 2: File an International Application

• Submit the IR application via the Office of Origin (e.g., DPMA for Germany, EUIPO for EU-based applicants).
• The application is forwarded to WIPO for review.

Step 3: Formal Examination by WIPO

• WIPO checks compliance with procedural requirements, such as:
• Consistency with the basic mark.
• Correct classification of goods and services (using the Nice Classification).
• If valid, the mark is recorded in the International Register and published in the WIPO Gazette of International Marks.

Step 4: Examination by Designated Offices

• Trademark offices in each designated country assess the application under their national laws.
• Refusals must be issued within 12–18 months; otherwise, the mark is protected.

Step 5: Registration and Renewal

• If no refusals are raised, the mark is protected in the designated countries for 10 years, renewable indefinitely.

5. Key Benefits of the Madrid System

Simplified Process:

• One application, one language, and one set of fees.
• Centralized updates for renewals, assignments, and amendments.

Cost-Effectiveness:

• Avoids the expense of filing separate national applications.

Flexibility:

• Allows subsequent designation of additional countries.

6. Challenges and Considerations

• Dependency on the Basic Mark: For the first 5 years, the IR registration depends on the basic mark. If the basic mark is canceled or rejected, the IR registration is invalidated (the "central attack").
• National Laws Apply: Each country evaluates the trademark based on its own legal standards.
• Refusals by Member States: If a designated country refuses the application, the applicant must address it through local counsel.

7. Notable Case Law

"Link" Case (C-96/11 P)

• Issue: A company registered the word "Link" as an international trademark. Opposition arose from earlier trademarks in some designated countries.
• Outcome: The CJEU ruled that an IR trademark's validity in the EU depends on its compliance with EU trademark law in each designated member state.

"Chocolaterie Guylian" Case

• Issue: Guylian registered a 3D shape as an IR trademark but faced challenges in Japan for lack of distinctiveness.
• Outcome: The case emphasized that distinctiveness criteria vary significantly between member states, requiring localized strategies.

8. Trademark Attorney’s Role in IR Marks

Pre-Filing Services

• Eligibility Assessment: Ensure the applicant qualifies for an IR application.
• Trademark Searches: Conduct searches in target jurisdictions to identify conflicts.
• Strategic Planning: Advise on the best designation strategy to maximize protection.

Filing and Management

• International Application: File the IR application via the Office of Origin.
• Designation Management: Handle subsequent designations for expanding protection.

Refusals and Appeals

• Respond to provisional refusals issued by designated offices.
• Coordinate with local counsel in case of litigation or opposition.

Maintenance and Renewals

• Monitor deadlines and renew IR registrations every 10 years.
• Update ownership records and handle trademark assignments.

Monitoring and Enforcement

• Monitor WIPO Gazette for potential conflicts with clients’ marks.
• Enforce rights in designated countries through cease-and-desist letters or litigation.

9. Future Developments in the Madrid System

• Digital Integration: Enhanced tools for filing, tracking, and managing trademarks via WIPO's eMadrid platform.
• Non-Traditional Marks: Increasing acceptance of sound, motion, and multimedia marks globally.
• Harmonization of Standards: Continued efforts to streamline national examination criteria among member states.

The Madrid System simplifies global trademark protection while allowing businesses to scale their intellectual property strategies efficiently. Trademark attorneys play a critical role in navigating procedural complexities, ensuring compliance, and maximizing the value of their clients' trademarks across international markets.