The International Trademark Registration Process
Stage 1 – Application through your National or Regional IP Office (Office of origin)
Before you can file an international application, you need to have already registered, or have filed an application, in your “home” IP office. The registration or application is known as the basic mark. You then need to submit your international application through this same IP Office, which will certify and forward it to WIPO.
Stage 2 – Formal examination by WIPO
WIPO only conducts a formal examination of your international application. Once approved, your mark is recorded in the International Register and published in the WIPO Gazette of International Marks. WIPO will then send you a certificate of your international registration and notify the IP Offices in all the territories where you wish to have your mark protected.
It is important to note that the scope of protection of an international registration is not known at this stage in the process. It is only determined after substantive examination and decision by the IP Offices in the territories in which you seek protection, as outlined in Stage 3.
Stage 3 – Substantive examination by National or Regional IP Offices (Office of the designated Contracting Party)
The IP Offices of the territories where you want to protect your mark will make a decision within the applicable time limit (12 or 18 months) in accordance with their legislation. WIPO will record the decisions of the IP Offices in the International Register and then notify you.
If an IP Office refuses to protect your mark, either totally or partially, this decision will not affect the decisions of other IP Offices. You can contest a refusal decision directly before the IP Office concerned in accordance with its legislation. If an IP Office accepts to protect your mark, it will issue a statement of grant of protection.
The international registration of your mark is valid for 10 years. You can renew the registration at the end of each 10-year period directly with WIPO with effect in the designated Contracting Parties concerned.
Please contact Kaliko & Associates, LLC at 201-739-5555, Info@kalikolaw.com, or visit our website at http://kalikolaw.com if you wish to learn more or discuss how our firm can assist you in filing for an international trademark under the Madrid Protocol.