International Trademark registration is an essential part of building a strong brand identity and protecting intellectual property. Businesses and individuals seeking to protect their trademarks internationally can do so through the World Intellectual Property Organization (WIPO) system.

In this article, we will discuss the procedure for trademark registration through the WIPO system, the countries it covers, the benefits, the timeframes, oppositions, and what happens procedurally when an opposition is filed, and when an opposition can succeed or fail.

Procedure for  International Trademark Registration through the WIPO System

The procedure for trademark registration through the WIPO system is similar to the registration process in individual countries. The application process begins with a trademark search to ensure that the trademark is available for registration. Once the trademark search is complete, the application can be filed online through the WIPO’s Madrid System.

The Madrid System is an international system for the registration of trademarks, which enables applicants to file a single application with the WIPO, designating one or more member countries in which they wish to obtain protection for their trademark. The Madrid System covers over 120 countries, including the United States, Canada, the European Union, Australia, China, Japan, India, Russia, Brazil, and many others. A full list of the countries that are members of the Madrid System can be provided upon request.

The Madrid System simplifies the registration process, as it allows applicants to file one application, in one language, and pay one set of fees. Once the application is filed, it is examined by the WIPO to ensure that it complies with the requirements of the Madrid System and the applicable laws of the designated countries.

If the application is accepted, the WIPO will publish the trademark in the WIPO Gazette of International Marks. This publication serves as notice to the public that the trademark is pending registration. If no oppositions are filed within the specified time period, the trademark will be registered and protection will be granted in the designated countries.

Benefits of Trademark Registration through the WIPO System

Registering a trademark through the WIPO system has several benefits. The primary benefit is that it provides protection for the trademark in multiple countries, which is especially useful for businesses and individuals seeking to expand their brand internationally. It also simplifies the registration process, due to the single application, in one language and one set of fees.

Another benefit of registering a trademark through the WIPO system is that it can be used as evidence of ownership in legal proceedings. If a trademark is registered with the WIPO, it is presumed to be valid, and the burden of proof is on the party challenging the validity of the trademark. This can save time and legal fees in the event of a dispute.

Timeframes for Trademark Registration through the WIPO System

The timeframe for trademark registration through the WIPO system can vary depending on several factors, including the number of countries in which protection is sought, the complexity of the application, and the number of oppositions filed.

The initial application can take several months to process, as the WIPO must examine the application and ensure that it complies with the requirements of the Madrid System and the applicable laws of the designated countries. If the application is accepted, the trademark will be published in the WIPO Gazette of International Marks, and a three-month period is allowed for oppositions to be filed.

Oppositions and What Happens Procedurally

Oppositions to a trademark registration can be filed by any party who believes that they may be damaged by the registration of the trademark. Oppositions must be filed within three months of the publication date of the trademark in the WIPO Gazette of International Marks.

If an opposition is filed, the WIPO will notify the applicant, who will have the opportunity to respond. The WIPO will then examine the opposition and any response, and make a determination as to whether the opposition should be upheld or dismissed.

If the opposition is upheld, the trademark will not be registered in the designated countries, and the applicant may appeal the decision. If the opposition is dismissed, the trademark will proceed to registration in the designated countries.

When Can an Opposition Succeed or Fail?

Whether an opposition will succeed or fail depends on several factors, including the grounds for opposition, the evidence presented, and the applicable laws of the designated countries.

Common grounds for opposition to a trademark registration include:

• Likelihood of confusion: This is the most common ground for opposition, and it refers to a situation where the trademark is likely to be confused with an existing trademark in the same or a similar field of business;
• Descriptiveness: A trademark that is purely descriptive of the goods or services being offered is not eligible for registration. If the trademark is descriptive, it may be opposed on the grounds that it is not distinctive enough to serve as a trademark;
• Non-use: A trademark that has not been used in commerce for a certain period of time may be opposed on the grounds of non-use;
• Bad faith: A trademark that has been registered in bad faith may be opposed on the grounds that it was registered with the intent to cause harm to another party or to take advantage of an existing trademark.

Oppositions can succeed or fail depending on the evidence presented. To succeed in an opposition, the opposing party must provide evidence to support their claim.

This evidence may include:

• Evidence of prior use: If the opposing party can demonstrate that they have been using the trademark in question before the applicant, they may be able to successfully oppose the registration of the trademark;
• Evidence of likelihood of confusion: If the opposing party can demonstrate that the trademark is likely to cause confusion with an existing trademark, they may be able to successfully oppose the registration of the trademark;
• Evidence of bad faith: If the opposing party can demonstrate that the trademark was registered in bad faith, they may be able to successfully oppose the registration of the trademark.

Conclusion

Trademark registration is an important step in building a strong brand identity and protecting intellectual property. The WIPO system provides a simplified process for registering trademarks in multiple countries, which can save time and legal fees for businesses and individuals.

At AGP Law, we pride ourselves on our experience and dedication to providing high-quality services to our clients. Our team consists of expert lawyers in the field of trademark registration, with years of experience in helping businesses and individuals navigate the process of protecting their intellectual property. We understand the importance of trademark registration and the potential risks and legal issues that can arise without proper protection.

We are committed to providing personalized attention to each client. Our services include comprehensive research to ensure that the chosen trademark is available for registration, expert guidance on selecting appropriate classes and categories, and diligent monitoring of the registration process to ensure a smooth and successful outcome.

We take pride in our ability to provide efficient and cost-effective services without lowering quality or attention to detail. We are available to answer questions and provide guidance throughout the trademark registration process, and we are committed to ensuring our clients have the protection they need to succeed.

For EU Trademark Registrations you may also look at our European Union Intellectual Property Office (EUIPO) Applications article.

If you are looking to register a trademark, we would be happy to assist you.  You may either submit for Trademark Registration through the AGP Law online application form, otherwise you may contact us at agp@agplaw.com to learn more about our services and how we can help you register your trademark.

The information provided by A.G. Paphitis & Co. LLC is for general informational purposes only and should not be construed as professional or formal legal advice. You should not act or refrain from acting based on any information provided above without obtaining legal or other professional advice.