The INTERNATIONAL TRADEMARK allows to extend the protection of a trademark registered in Italy or in the European Union in the member states of the Madrid System for the International Registration of Marks.
Signs meeting the requirements of the national legislation of the Member States designated by the applicant - which may be any natural or legal person belonging to or resident in a member state of the Agreement or Protocol or having an actual or effective industrial or commercial production plant therein - can be registered as an international trademark.
The application for the protection of an international trademark shall be based on a previous and corresponding national application or registration oor on a previous and corresponding European Union trademark application or registration
Before filing a trademark, it is advisable to conduct:
- a trademark validity assessment on the characteristics inherent in the sign;
- priority search on any prior third-party rights.
When filing a trademark, it is necessary to very clearly define products and/or services for which one intends to request protection. All products are conventionally classified into 45 classes defined by the International Classification of Goods and Services.
After carrying out the suitable preliminary verifications and defining the products/services subject of interest, we file the application before the UIBM or before the EUIPO. These offices will forward the application to the WIPO (World Intellectual Property Organization) in Geneva.
Subsequently to the international trademark registration, each member state may, within 12 or 18 months from the notification of the international registration, notify the WIPO Central Office of the issuance of a rejection of the trademark registration in the territory thereof. If required by the national law, proprietors of prior rights may initiate an opposition proceeding against the granting of the international trademark in the territory of the State.
IIn the absence of grounds of rejection, the national Office of the designated ensures the registration of the international trademark in the territory thereof.
DURATION AND RENEWAL
As far as protection is concerned, the international trademark registration is equivalent to a national filing in all the designated States, in accordance to the respective national legislation.
The duration of the international registration is 10 years from the date of registration. Renewal is required every 10 years. Thus, an exclusive right to a trademark could potentially be maintained indefinitely.