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Registration of trademarks abroad

The territory of legal protection of trademark

The principle of registration and legal protection of trademarks is national, i.e. registration of designation by legal entity or individual in one country does not grant them the rights to such designation in another country. To do this you need to register in a particular country or countries.

We register trademarks in Russia, directly on the territory of other countries, using the Madrid System and trademarks of the European Union (European Union Trademark - EUTM). Below you can find out more information about advantages and disadvantages of different registration procedures.

We successfully cooperate with experienced specialists in the field of intellectual property in different countries such as Russia, Belarus, Moldova, Belgium and China.

Ways of trademark registration abroad:

  1. Application for trademark registration directly to the Patent Office of the country you are interested in. ccordingly, if you are interested in legal protection in several countries, applications are filed to the Patent Office of each of the selected countries.
  2. International trademark registration which is implemented through a single application for legal protection in several countries. International registration is conducted using the Madrid System and by registering the trademark in all countries of the European Union (European Union Trademark - EUTM).

Each of these ways has its advantages and disadvantages which we are going to describe below.

REGISTRATION OF TRADEMARK IN RUSSIA

Typically, our clients are interested in as national registration so the registration of a trademark in Russia. We know and take into account your desires; that’s why we paid special attention to this issue. It should be noted that the registration procedure in Russia is very similar to the registration procedure in Ukraine. An important feature of trademark registration in Russia lies in the fact that an applicant can be either a legal entity (both resident and non-resident) or an individual, but necessarily registered as an entrepreneur (both resident and non-resident).

The cost of registering the trademark in Russia consists of:

  1. A preliminary search for identity and similarity: from USD 225,00.
  2. Filing an application to the Patent Office in Russia (Rospatent): from USD 230,00 (the state duty) and from USD 250,00 (services of the Agency).
  3. Receiving the Certificate (in Russia the last stage is called “trademark registration”): USD 270,00 (the state duty) and USD 100,00 (services of the Agency).

To start the registration of the trademark in Russia you need:

  • to contact us in convenient way and give us information about the mark you are planning to register in Russia (mark type, the number of classes), in the presence of a designed logo you need to send it to us by e-mail;
  • we will prepare a commercial offer for you immediately after receiving your order, come to agreement with you about it and be ready to begin. It's simple.

Advantages and disadvantages of applying directly to the Patent Office of the country you are interested in.

Advantages:

  • the possibility of a full-text preliminary search prior to filing the application, which can identify the trademarks filed and registered as with the national registration procedure so the international registration procedure;
  • communicating directly with the patent attorney, it is easier to follow the registration procedure, to get concrete answers to your questions, to control the terms etc.;
  • after registration you will receive the official protection document (Certificate) from each of the countries where the application was filed.

Disadvantages:

  • non-residents can apply only through the patent attorney of one or another country they are interested in. Foreign patent attorneys' fees are considerable. Therefore, if the application is made not in one, but in some countries, the registration procedure can be very expensive.

INTERNATIONAL REGISTRATION THE TRADEMARK USING THE MADRID SYSTEM

Established in 1891, the Madrid System for the International Registration of Marks (the Madrid System) is functioning in accordance with Madrid Agreement on the International Registration of Marks (Madrid Agreement) d.d. 1891 and Protocol to the Madrid Agreement on the International Registration of Marks (Madrid Protocol) d.d. 1989.

Management control of this system is exercised by the International Bureau of World Intellectual Property Organization (WIPO), located in Geneva, Switzerland.

The Madrid System offers the owners of trademark the possibility of their legal protection in several countries of the Madrid Union by simply filing one application directly to the national or regional Office for trademarks. Thus registered international mark is the equivalent of an application or registration of the mark made directly in each country selected by the applicant. If within a certain period of time the Trademark Department of a selected country does not refuse protection, the protection of the mark is the same as if it is registered in this Department.

The Madrid System also simplifies greatly the subsequent management of the trademark, because there is a possibility of making a record about the subsequent changes or the extension the registration by a single procedural step. In consequence, there may also be specified additional countries.

Currently about 97 countries of the world have joined to the Madrid System.

The cost of registration using the Madrid System are:

1. The state charge for filing an application for international registration – UAH 600,00.
2. The international fee is paid by WIPO in Swiss Francs (CHF) and consists of:
2.1. Basic fee - CHF 653,00 when applying for the registration of black-and-white mark or CHF 903,00 when applying for the registration of colourful mark;
2.2. Complementary fee. The amount of complementary fee depends on the amount of countries mentioned in the application which the applicant wishes to seek legal protection in - CHF 100,00 for each of the countries. Some countries have their individual fees, which differ substantially from the complementary fee and are not CHF 100,00, for example, CHF 295,00 (Great Britain), CHF 337,00 (USA), CHF 430,00 (Norway) or even CHF 1254,00 (!) (Uzbekistan).
2.3. Supplementary fee, which is CHF 100,00 and is paid for each class of goods and services if there are more than three classes.
3. Agency services for the preparing of all necessary documents, filing them to Ukrpatent, paying fees and maintenance procedures are USD 400.

To start the registration using the Madrid System you will need:

  • to contact us in convenient way and tell us the Certificate number of Ukraine for your trademark you want to register using the Madrid System;
  • to formulate clearly a list of countries which you want to receive legal protection for your trademark in.

The procedure is:

  • After receipt of original data from you, we prepare a detailed commercial offer for you with detailed description of the cost of registration and payment procedure;
  • coordinate it with you, if necessary, we make some corrections (if you decide to change the list of countries, for example);
  • after coming to agreement with you about the cost of the international registration, we sign the agreement in accordance of which you make all the necessary payments;
  • within ten working days from the moment of payment receipt, we arrange for all necessary payments independently and prepare the package of documents for registration;
  • we submit the prepared package of documents for registration to Ukrpatent and Ukrpatent forwards it to the International Bureau of WIPO;
  • after four or five months the International Bureau of WIPO sends us a Certificate of international registration, which indicates the number of the international registration, assigned to your mark, and date of receipt of the application;
  • at the same time the International Bureau of WIPO sends notifications to the Patent Offices of countries mentioned in the application, after the trademark is being registered in these countries in accordance with their national legislation;
  • the registration period lasts about 12-18 months. During this time the International Bureau of WIPO sends to our address the letters from the Patent Offices of those countries, where there is the international registration. We carefully monitor the correspondence and promptly inform you about it.

Advantages and disadvantages of the registration using the Madrid System.

Advantages:

  • the procedure of applying for a trademark is simplified greatly. Only one application is filled to the International Bureau of WIPO and only in one language (English, French or Spanish), and only one duty is paid;
  • there is a possibility of additional indications of countries in which the owner of an international registration may seek the protection in the future;
  • the application is filed to the International Bureau of WIPO through the national office, which sends notifications to the Patent Offices of the selected countries, i.e. there is no need for the services of patent agents in each country;
  • the cost of the international registration is significantly reduced comparing with the cost of national registrations and it is made by excluding the expenses of the applicant's patent attorneys' fees and reducing the application duties;
  • the number of members of the Madrid Union has increased to 88 (excluding Ukraine). Expansion of membership and the greater geographic coverage have made the system more attractive for companies operating in international markets;
  • the important legal aspect for users was the cancellation of “protective clause” in 2008. This means that in relation to states, connected by clauses of Madrid Agreement and Madrid Protocol (two agreements the Madrid System is governed by), there will be applied only the clauses of Madrid Protocol, which is the most modern and flexible among these two agreements. In particular, this also concerns the possibility of filing an application on the basis of not an already registered mark, but just only filed for registration.

Our agency’s advice: despite this, we still recommend an international registration procedure on the basis of an already registered mark. In the implementation of the international registration on the basis of an already filed application, in case of refusal of registration in Ukraine there is a risk not to receive legal protection in all countries you are interested in. In addition, all duties paid are non-refundable.

Disadvantages:

  • not all countries are the members of the Madrid System. For example, Canada doesn't support such system;
  • your trademark will always register not using some common rules of all these countries, but using rules and regulations of the concrete country;
  • as a rule, in addition to the Certificate of international registration the applicant does not receive any other protection documents (Certificates from the Offices of selected countries). But there is always the possibility of addressing to Ukrpatent and getting an official statement about the validity of the international registration.

Trademark of EC

REGISTRATION OF TRADEMARK IN THE EUROPEAN UNION
In December 20, 1993 there was created a new system of security and protection of trademarks – the trademark of the European Union (European Union Trademark - EUTM). It is possible to register a trademark in the European Union on the territory of all countries that are participants of the European Union by submitting one application.

Currently, the European Union consists of 27 European countries: Austria, Belgium, Hungary, Great Britain (United Kingdom of Great Britain and Northern Ireland), Germany, Greece, Malta, Netherlands, Poland, Portugal, Slovakia, Slovenia, Finland, Denmark, Ireland, Spain, Italy, Cyprus, Latvia, Lithuania, Luxembourg, France, Czech Republic, Sweden, Estonia, Poland and Romania.

The unified administrative centre for the trademark registration of the European Union is European Union Intellectual Property Office - EUIPO.

Advantages and disadvantages of trademark registration of the European Union.

Advantages:

  • you need to submit only one application for trademark registration of the European Union (EU);
  • there is no connection with the national registration, i.e. never previously registered trademark can be registered as a trademark of EU;
  • a common language of registration;
  • a single registration procedure provides the reliable protection across the European Union.

Disadvantages:

  • there is one very significant disadvantage: the denial of registration at least in one of the EU countries means the denial of registration in all other EU countries.

Our Agency’s advice: in this case it is better to implement an international registration using the Madrid System, indicating a clear list of countries you are interested in.