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Territorial sphere: See list of countries

An international trademark has effects in the countries belonging to the Madrid Agreement which have been designated in the application. Territorial extensions can be made to other countries not designated in the application.

Some countries are members of the Stockholm Act of the Madrid Agreement and others are members of the Madrid Protocol, and still others of both, for example Spain.

An application for an international trademark can be made on condition that there are one or more trademarks identical to this registered in the country or community of origin to distinguish all the products or services of this international trademark, according to the Stockholm Act, or one or more applications for an identical trademark made in the country or community of origin to distinguish all the products or services of this international trademark, according to the Madrid Protocol.

The international trademark has territorial effects, that is, separately in each of the territories designated, and the validity or effectiveness in one of these is independent of the validity or effectiveness in another.

Any national trademark can be covered by an international registration, but is subject to rejection if it does not meet the validity and registrability requisites set by each territory.

The duration of an International Trademark is ten years from the date of international registration. The effectiveness can be extended for similar periods by means of payment of the relevant renewal dues, for all or part of the countries in which this is registered.

An International Trademark is applied for to distinguish products or services of one or more classes of the Nice Classification.

PROCEDURE

After making the prior search, which we recommend, an International Trademark application undergoes the following international registration process:
  • Filing the application
  • Formal examination
  • Decision of the registration and publication in the International Trademarks Bulletin
The national effects are as follows:
  • In a period of 12-18 months any of the countries designated can file a provisional rejection due to the trademark not complying with the national registration requisites, through similarity with prior trademarks, oppositions received or any other formal cause
  • Filing of a rejoinder
  • EDefinitive decision, confirming or rejecting the registration
Any adverse decision may generally be appealed against.

REQUISITES

The requisites for applying for the registration of an International trademark are as follows:
  • Details of the Applicant (s) (name, address, nationality)
  • Identification of the registers in the country of origin on which the application is supported
  • Products and/or services , for which protection is applied for
  • Power of attorney form , signed by the applicant
  • Name and post of the person signing the power of attorney
  • Designated states