International trademark registration

How to register a trademark in several countries?

The Madrid system for the international registration of trademarks gives the possibility to register a trademark in several countries by filing a single application at the World Intellectual Property Office. This application is made in one language, with one set of fees, in one currency (Swiss francs).

MAS LEGAL provides BrandToBe trademark search and registration package for your International trademark registration.

What is an international trademark?

An international trademark produces the same effects as an application for registration made in each of the countries designated by the applicant. The examination procedure takes place at each national office. If the registration is granted, the trademark protection is the same as if it had been filed at the national Office.

The Madrid system greatly simplifies the subsequent management of the trademark. Additional countries may be designated subsequently.

How to file an International Trademark?

To benefit from the Madrid system, it is necessary to register a “base” trademark in the country where the owner is established (country of origin). An international application may be based on several registrations or (where appropriate) applications with the Office of origin. The goods and services of the subsequent international application must be covered by those listed in the base registration(s) or base application(s).

What do I need to know about international trademarks?

For a period of five years from the date of its registration, the international registration remains dependent on the trademark registered or applied for in the Office of origin. If, and to the extent that, the basic registration ceases to have effect, whether through cancellation following a decision of the Office of origin or a court, or through voluntary cancellation within this five-year period, the international registration will no longer be protected.

Similarly, where the international registration was based on an application in the Office of origin (when the trademark is not yet registered), it will be canceled if, and to the extent that, this application is refused or withdrawn within the five-year period.

How long does a trademark registration last?

An international registration is effective for 10 years. It may be renewed for further periods of 10 years on payment of the prescribed fees. The International Bureau sends a reminder to the holder and to his representative (if any) six months before renewal is due. The international registration may be renewed in respect of all the designated countries or in respect of only some of them.

Freedom to operate in the world

In order to launch a new brand or target new markets, it is important to verify your freedom to operate. BrandToBe® is a trademark search and registration package for international trademark registrations.

BrandToBe® is designed to research and analyse new brand availability. We prepare a full risk assessment, conducted by legal experts.

How does BrandToBe^® work?

We conduct availability searches on proprietary databases. We assess a broad range of Intellectual Property rights that might prevent exploitation (trade names, Common Law marks, domain names, company names, copyright, etc.). We assess the pros and cons of a particular brand name compared to alternates; We propose mitigation solutions if we find obstacles and risks to the registration of your trademark.

Filing your international trademark

If your brand is available for registration or if our lawyers find a suitable mitigation strategy, we will prepare and file your international trademark application for no additional costs (terms apply).

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