7.2.4 How to use International regulations to obtain protection?

PATENTS

Foreign Patent Applications

If you think that you should obtain patent protection outside of your own country, you should consider filing an application for a European Patent, which gives the possibility of obtaining protection in European countries. You could also consider filing an international Patent Co-operation Treaty (PCT) application, which allows you to defer the costs of obtaining patents overseas; while you decide which foreign markets should be protected.

Applying for an European Patent

European patent applications may be filed (notwithstanding the provisions on national security) at:

  • European Patent Office, at its Munich, The Hague or Berlin branches;
  • The National Patent Offices.

The grant procedure is based on a single application, drafted in one language (English, French or German). If the patent is granted, the applicant may initiate the national procedure in all the States designated or in only some of these States. If the language of the patent is not an official language of the designated State, the corresponding translation must be filed, failing which the patent will not be valid in that State.

Applying for an International Patent

Following the PCT procedure, a single international application makes it easier to obtain protection. Applications may be submitted to the national Patent Office and, if there are no national security constraints, to WIPO (World Intellectual Property Organisation) in Geneva or to European Patent Office in either The Hague or Munich.1

TRADEMARKS2

Applications for the registration of a trademark should be made on the appropriate form and filed at the National Trademark Office or at one of the Provincial delegate Offices. The following should be attached:

  • The protection declaration
  • A card containing the list of goods and services to be protected and an example of the trade mark
  • 8 copies of the trade mark
  • A receipt for payment of the State grant fees (for ten-years registration period).

If the application is for registration of a collective mark, a copy of the regulation concerning the use of this mark and the controls and sanctions relating thereto must also be attached. To renew a mark without any change, it is merely necessary to submit an application and pay the fees due.

Claiming Priority - It is possible to claim priority from an application made in the preceding six months in one of the States party to the Paris Convention.

Other Countries - Find out about trademark protection outside of your country in Europe and elsewhere. Costs and procedures involved in obtaining trade mark protection abroad are important factors in considering any potential export markets you may wish to target. Your national patent office can assist with information on the various procedures, which are in place to assist with the obtaining of trademark protection internationally.

EU Mark Applications

You can apply for a national trademark registration, which may be appropriate if your business is focused on the domestic market. However, if you do business in Europe then you should consider applying to the Office for Harmonisation in the Internal Market (OHIM), for the registration of a Community Trade Mark. Community trademarks are legally enforceable and enjoy uniform protection throughout the territory of the European Union.

Other Foreign Applications - If you are the proprietor of a trade mark and wish to consider obtaining trade mark protection internationally, the Madrid system of international registration of marks gives you the possibility to have your mark protected in several countries by simply filing one application with a single Office, in one language, with one set of fees in one currency (Swiss francs). An international registration produces the same effects as an application for registration of the mark made in each of the countries designated by the applicant.

How to register a Community Trade Mark

Applications should be made on the form drawn up by OHIM (Office for Harmonization in the Internal Market). The single filing may be made at the OHIM, located in Alicante, Spain; by post, courier or fax, and can also be filed at the National Trademark Office. OHIM is responsible for examining the applications.
Community trademarks are valid for ten years from their date of filing and may be renewed.

How to register an International Trade Mark

To apply for a registration of an international trademark is necessary to be the proprietor or to have filed a request for an identical national trademark.
Applications for international registration should be filed at one of the Provincial Delegate Offices and should include:

  • The form drawn up by WIPO, duly filled in
  • The deed of proxy or power of attorney (where appropriate)
  • A reproduction of the trade mark matching the national trademark of reference
  • A receipt for payment of the State grant fees
  • Payment of the international fees to WIPO
  • Registrations are valid for ten years and for renewal purposes, WIPO informs the proprietor, six months prior to expiry.

For tips and hints for filling out international application form please visit the following site: www.wipo.int/madrid/en/guide/guide_partb_2-01.html#P18_88"

The Madrid system is founded on the requirement of a basic national or regional registration or application for registration. Under the Agreement, an applicant for the international registration of a mark must have already obtained the registration of the mark in the country of origin (basic registration). Under the Protocol, an international application may be based on either a registration with the Office of origin (basic registration) or on an application for registration filed with that Office (basic application). The international application may relate only to goods and services covered by the basic application or registration.

Have you already registered any kind of national Intellectual Protection? Don’t forget that if you have already obtained registration in the country of origin you are only allowed to register under the Madrid System!

In most cases, the international application will be based on a single registration or application that covers the goods and services listed in the international application. It is, however, possible to base an international application on several registrations (under the Agreement) or on several applications and/or registrations (under the Protocol) which together cover the goods and services to which the international application relates. The basic applications and/or registrations must all be in the name of the person filing the international application and must have been made with the same Office.3 

It might be interesting for you to have a look at the international registration form of a trademark. The application form is very similar to other IP tools. You will find a sample of an international application form here.

COPYRIGHT

With regard to copyright, if you are a national or resident of a country party to the Berne Convention for the Protection of Literary and Artistic Works or member of the World Trade Organization (WTO) bound by the provisions of the TRIPS Agreement, or if you have published your work for the first time or at least simultaneously in one of the above countries, your copyright will be automatically protected in all other countries that are party to the Berne Convention or are members of the WTO.4 

DESIGNS

International protection of industrial designs is provided by the Hague Agreement. This system gives the owner of an industrial design the possibility to have his design protected in several countries by simply filing one application with the International Bureau of WIPO, in one language, with one set of fees in one currency.5


1 InnoSupport: Supporting Innovations in SME. 7.2 International Regulations. 2005
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3 www.wipo.int/madrid/en/guide/guide_partb_2-01.html#P18_881
4 InnoSupport: Supporting Innovations in SME. 7.2 International Regulations. 2005
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