It is very necessary to understand foreign trademark registration management systems and corresponding norms, as well as the procedures and requirements for international trademark registration, and apply for trademark registration in a timely manner for export goods.
The rights conferred by the international registration of trademarks are trademarks registered by the International Bureau, which are called internationally registered trademarks. An internationally registered trademark is deemed to be directly registered in the country where it is protected.
Of course, each protection country specified in the application for international registered trademark must accept protection applications according to their respective national laws. If the trademark applied for protection, that is, a trademark that requires territorial extension of protection, is rejected by the country designated for protection within 1 year (or 18 months) from the date of registration by the International Registration Department, the applicant can entrust an agent according to the national law of the country of rejection. Make an application appeal; if the protection application is not rejected within the 1 year (or 18 months) period, the trademark has been protected.
The validity period of an internationally registered trademark is 10 years. According to the Madrid Agreement, the validity period of a registered trademark is still 20 years, but the validity period of a trademark registered under the Protocol is 10 years. In the future, applications for international trademark registration under the Agreement and the Protocol will be subject to a fee paid once every 10 years. For example, if a trademark has been internationally registered in accordance with the Agreement and the protection period is required to be 10 years, if it still needs to be protected in the relevant country after the expiration of 10 years, it shall be implemented in accordance with the Agreement and the Protocol. The protection period and charging standards stipulated in the "Details" shall be paid for the second 10 years. If you want to designate an internationally registered trademark in accordance with the Agreement, you must pay the subsequent basic registration fee and supplementary registration fee.
The scope of protection granted by international trademark registration can also be expanded. That is, after a trademark has obtained international registration, the trademark owner can also expand the scope of protection of its trademark according to the needs of foreign trade development, that is, apply for territorial extension to the International Bureau through the Trademark Office to extend the registration to other trademarks that have not yet obtained protection. Member of the Madrid League. Applying for a trademark with valid territorial extension is also deemed to be a direct registration in the relevant Madrid Union member state.
Madrid Treaty Countries
At the end of 1991, the Madrid League had 29 member states. After the disintegration of the Soviet Union and development in recent years, there are now 43 member states, most of which are Eurasian countries, except for Algeria, Germany, Austria, Belgium, the Netherlands, Luxembourg, Bulgaria, Egypt, France, Hungary, Italy, Liechtenstein, Spain, Monaco, Mongolia, Portugal, Morocco, Romania, San Marino, Sudan, Switzerland, North Korea, Vietnam, Yugoslavia, Czechoslovakia, Cuba, and some countries after the collapse of the Soviet Union such as Kazakhstan, Lithuania, etc. Since it officially became a member of the Madrid Agreement on the International Registration of Trademarks on October 4, 1989, it has started to handle the international registration of trademarks in Madrid.
Trademark international registration opens a new channel for enterprises to register trademarks abroad. In addition to submitting a single registration application to the registration authorities of various countries through agents, they can also apply for international trademark registration through the National Trademark Office. The International Bureau extends to all relevant countries.
However, it must be clear that if you apply for international registration, your trademark will be protected in all countries around the world. There are no countries such as the United States, the United Kingdom, and Japan among the members of the Madrid Agreement.
Therefore, even if an international registration under the Madrid Agreement is obtained, it can only be valid in its member states, and it must be designated. In other words, it is not valid if it is not designated.
Even if it is designated when applying, it may not be valid. Since the designated country still needs to review it, if it does not comply with the laws of that country or there is a previous registrant, the trademark will be rejected, and of course there will be no exclusive use. Right.
International registration of trademarks adds a convenient way for member countries to register trademarks abroad. It saves time, effort and money, but it is by no means valid for all countries around the world if you apply for national registration.
Non-Madrid Treaty Countries
1. The procedures for applying for trademark registration are similar in all countries around the world. Applicants are generally required to provide the following documents and go through relevant procedures:
1. Main documents to be provided
(1) Application form.
All countries require the application form to be filled in. Except for the United States, which stipulates that the application form must be filled in by the applicant himself, most other countries do not require it. The application form can be filled in by an agent. Such applications are also accepted. Since the regulations on commodity classification are different in different countries, Applicants often don't know how to fill it out, so they have to entrust an agent to fill in the vacancy application form that has been signed in advance. The content of the application is roughly the same in various countries, mainly including: - the trademark applied for registration, the goods and categories used, the applicant (company name), person in charge (signature) and position, company address, some countries also require the applicant to be specified Whether it is a manufacturer or a seller, or both; - The earliest date of use of the trademark in the country where registration is applied for (required to attach proof of sales of goods in that country); - If the text of the trademark does not belong to the language of that country, a description of the trademark is required Meaning and transliteration of the text. -Many countries also stipulate that products that are difficult to identify must state their uses and main raw materials, and provide samples and instructions. In addition, most countries stipulate that one application form should be filled in for each trademark. There are a few exceptions. As long as the trademark is the same, only one application form is allowed for several different categories of goods.
(2) Power of attorney. A power of attorney is an important document for a trademark applicant to entrust and authorize an agent to apply for trademark registration. Most countries require that a power of attorney be attached when applying for registration.
The procedures for applying for a power of attorney are also different. Generally speaking, developed countries have relatively loose requirements, such as the United States, France, Germany, Japan and other countries. They only require that the power of attorney be signed by the applicant. No additional steps are required. After notarization and certification procedures. Some countries require that the power of attorney must be notarized or authenticated. It is stipulated that the power of attorney must be notarized, but if the other country does not require notarization or authentication, it will be handled according to the principle of reciprocity.
(3)Domestic registration certificate. Some countries, such as some countries under the Madrid Agreement and Arab countries in the Middle East, stipulate that when applying for trademark registration, you must submit the certificate of registration of the trademark in their own country. Some countries also require the registration authority to provide confirmation that the trademark is valid for 10 years for registration certificates issued before the promulgation of the Trademark Law that does not have a registration validity period.
(4) Nationality certificate and enterprise registration certificate. The Certificate of Nationality is a document that confirms the applicant’s nationality. If the applicant is a corporate organization, it only needs to obtain proof from its home country that it is a company organized according to the laws of that country. Some countries stipulate that a business registration certificate can be submitted, or an extract from the company or trade registration can be used in place of the nationality certificate.
(5)Other documents. A few countries also require other documents to be attached, such as Switzerland requiring confirmation of business address; South Yemen requiring a declaration of trademark ownership, etc. 2. Submit trademark drawings. Countries have different requirements for trademark drawings. Some require 5 to 10, or 10 to 20. There are also different regulations on the size of the drawings. Some stipulate that the maximum should not exceed 10 cm - 10 cm, or 7.5 cm - 7.5 cm, and the smallest one should generally not be less than 3 cm - 3 cm. It is better to use plate printing for trademark images. Some countries do not accept photographic images. When printing the pattern, do not add the words "Registered Trademark" or the ? mark, because these words and marks cannot be registered as part of the trademark. They are only allowed to be added after the trademark is approved for registration. 3. Pay the prescribed application registration fee. Trademark laws of various countries stipulate that trademark applications for registration must pay fees. Failure to pay will not result in registration. The German Trademark Law stipulates that every time you apply for registration of a trademark, you must pay an application fee. For each class or subclass of goods and services requested for protection in the attached classification table, you must pay a classification fee in accordance with the fee schedule. If the fee is not paid, the patent will be lost. The Bureau immediately informed the applicant that if the payment was not made within one month after receiving the notice, the registered trademark would be deemed to have been withdrawn. If the application is withdrawn or the registration application is rejected, the fees paid will be refunded.
4. The priority declaration trademark system is an international system. Therefore, many international treaties coordinate the protection of trademark rights, the most important of which is the priority rights stipulated in the Paris Convention for the Protection of Industrial Property. This principle has been generally recognized by the member states of the Alliance. Any foreigner who enjoys priority treatment can apply for priority. An applicant may apply to any other country within six months after filing an application for trademark registration with the Trademark Office. In order for an applicant to obtain priority, it must be explicitly stated in the application document. A statement of priority claiming an earlier application must indicate the country of the earlier application as well as the date of the earlier application and the number of the earlier application.
2. Review and approval of overseas trademark registration applications
Trademarks and patents belong to industrial property rights. Therefore, except for some countries in the world, trademarks and patents are managed separately. The trademark and patent authorities are together, and the trademark authority is also the patent authority. Such as the United States Patent and Trademark Office, the British Patent Office, the Japan Patent Office (Patent Office), the Indian Patent and Design Office, the Canadian Patent Copyright and Design Office, the Mexican Economic Affairs Bureau, and the Industrial Property Offices of France, Brazil, the Netherlands, Belgium, and Norway. , the patent offices of the Philippines, Indonesia and Italy, the Danish Patent and Trademark Registration Office, the Swedish Patent Registration Office, the Swiss Intellectual Property Office, the former Soviet Invention and Discovery Committee, the Australian Patent and Trademark Office, the New Zealand Patent, Design and Trademark Office, the Thailand Industrial Registration Office, etc.
After receiving a trademark application, the agencies in charge of trademark registration in various countries must review the application. However, the forms of review vary.
Some countries only conduct formal examination, that is, whether the documents and required procedures for applying for a trademark are complete, and no other examination is conducted except for this.
In addition to formal examination, some countries also need to conduct substantive examination, such as whether the applicant is qualified to obtain trademark registration, whether an earlier trademark has been applied for, and whether it violates the prohibition provisions of the trademark law. wait.
After review, some countries will approve the registration, and some countries will also implement objections. The preliminary approved trademark will be published in the "Trademark Announcement", a publication sponsored by the trademark authority. Within the specified period, It usually takes 1-3 months for the public to provide comments and help with the review. Within the specified period, anyone can raise objections to whether the trademark application for registration complies with the provisions of the national trademark law. If no one raises an objection within the objection period or the objection raised is not established, the competent trademark authority of that country will approve the registration, register it in the trademark registration book, and issue a trademark registration certificate. The applicant will have obtained the exclusive right to use the trademark in that country.
After submitting a trademark registration application abroad, if there are no problems with the trademark, it will take about one and a half to two years to be approved for registration. However, the examination time, customary practices and examination standards for trademarks vary from country to country. For example, the things used in words and graphics are also different from foreign customs. The local registration authority may have to ask some questions, and the applicant must complete them within the prescribed time limit. reply. If you cannot respond within the stipulated time limit, you can apply for an extension, otherwise it will be considered as giving up the application.
During the trademark review process, the foreign trademark agent's handling of issues raised by the local trademark registration authority plays an important role in whether the trademark can be registered as early as possible. Since they are familiar with local review standards and cases, they can explain the issues raised by the local registration authority according to local laws and relevant regulations. Sometimes it is possible to get our trademark approved without having to answer from us again.
The applicant files a defense. If the local registration authority still refuses to grant registration, in some countries it can request a re-examination. If the re-examination is rejected, the applicant can appeal to the court. Some countries do not provide for re-examination and the applicant may appeal directly to the court.
Therefore, it is very necessary to understand foreign trademark registration management systems and corresponding norms, as well as the procedures and requirements for international trademark registration, and apply for trademark registration in a timely manner for export goods. This is of great significance for protecting the exclusive rights of trademarks, opening up sales channels for exported goods, and enabling them to enter and occupy the international market.