International trademark registration
If you export goods / services to another’s territory or intend to do so, you cannot do without international trademark registration. Especially if the product is expected to be in demand. This will prevent unscrupulous competitors from using TM for their own purposes.
It is very convenient to receive a title of protection under the Madrid System, which currently includes 124 countries. It has standardized requirements for the procedure, making it easier to legalize the rights to a brand in several jurisdictions at once by filing a single international application. There are differences in formation in individual states, the process can be much more expensive.
SION patent Law firm’s specialists legalize an international trademark abroad. We get logos by national apply in the desired nation. We work without intermediaries, through representatives. And then, if necessary, we expand the protection certificate to the territory of other states (including Ukraine and others) under the Madrid Agreement and Protocol.
- We legalise in the EU, CIS, UK, USA, Canada, China, UAE, Qatar. The latter two states work only according to local procedures and are not part of the Madrid System.
- We have been successfully working since 2011.
- The attorneys have experience in international formation.
- We conduct specialized searches for similarity and identity.
- We have experience in overcoming hundreds of objections.
- We suggest the best protection strategy option for the brand.
International trademark registration search
The mark must be unique and not plagiarize the existing ones. To make sure that it is unique, it is worth checking against the global database. It contains about 46 million entries. There are also more accurate and complete registers of state offices. They should be used to avoid rejection or opposition from the local patent authority. We perform international trademark registration search before filing an international application.
What happens if similarities are found during the examination? Depends on local legislation. The EU can not refuse to issue, but will publish data on a similar TM in the official bulletin of potential objections. Or send a notification to the owner of a similar icon. If no objection is received, a similar symbol would be recorded. For the opposite case, there is an algorithm for resolving contradictions. However, we still recommend a preliminary search so as not to delay the process and avoid hassle.
Formation under the Madrid Agreement: features
It is sometimes faster and easier to legalize abroad than in Ukraine, although it is more expensive. This simplicity is ensured by the opportunity to take advantage of the international Madrid System thereto. Now in more than 100 countries you can legalize with the Madrid Trademark System. We recommend clients to use this opportunity.
Some features and benefits:
- You can submit 1 package of documents in English and fill international registration trademark apply for several jurisdictions at once.
- The international forms are sent to the Ukrainian intellectual property institute (Ukrpatent). From there it is transferred to the responsible body – the World Intellectual Property Organization (WIPO, WIPO).
- It is possible to use the procedure of the Madrid System for TMs that are obtained or are in the documentation process in the local patent organisation (“basic application” is sent).
- In Ukraine and abroad, the protection certificate obtained under this Agreement is equivalent to any national one.
- In the future, it is possible to expand the brand’s presence to additional jurisdictions.
- The exclusive right is granted for 10 years, it must be renewed every 10 years (by payment of a fee).
- In most offices, documents can be submitted in paper and electronic form.
People tend to legalize marks in the United Kingdom because of the reliability of the jurisdiction and the reputational advantages. There are conclusions between the UK and a number of nations to avoid double taxation. So, the tax on royalty payments for the use of trade marks is on average 5%.
- All parts of the kingdom (England, Scotland and others) have one title of protection.
- The UK trademark office (UKIPO) is working at record speed. You can get a certificate within 2-4 months (depending on whether there are any objections).
In order to avoid the risk of not receiving a certificate for a UK trademark, we recommend that you conduct the UK trademark search before applying.
Our company interacts directly with the UKIPO. We apply for a trade mark, supervise the formal examination process, defend opposition if necessary and obtain a UK certificate.
The cost to legalize a mark uk consists of an official fee of £ 170 for the filing and examination of an apply in one class, plus £ 50 for each subsequent class. Also, the cost of registering includes a patent attorney’s fee from £ 150.
The United Kingdom has left the EU, but is a party to the Madrid System. To expand the geography of the protection of the rights to the British TM abroad, you can file an international application for a logo.
The word “Swiss” sounds like “prestigious”. Being a brand registered in Switzerland is good for your business reputation. We recommend conducting the Swiss trademark search before starting the registration process. Important features for those who plan to legalize here:
- The applicant must have a real production or obtain a legal entity in Switzerland.
- Here they strictly refer to the mention of the region in the name. It is allowed if goods and services are associated with a place, originating from it.
- In case of refusal to record, they explain the reasons, they can be appealed in court.
- A formatted TM can be canceled if it has not been used for 5 years.
- The procedure is simple and quick, it takes 5-7 months.
Swiss mark law allows for types of marks that are not provided for by Ukraine. For example, positional and moving. They can be legalized under the local procedure, and then under the international system to extend protection to Ukraine. National legislation would be useful in many other cases. This is done by our employees who know all the features of the procedure in Switzerland. Examination of applications for trademarks is carried out in Swiss trademark office.
SION’s interact with the Swiss IP office directly, without intermediaries. For filing an apply, a fee of 550 CHF (Swiss francs) is paid, for an extension for 10 years – 700 CHF, plus our fee.
New brands in Spain are often formatted due to the loyal taxation system. Compared to other jurisdictions in Europe, taxes are low here. In Spain, Ukrainian vegetables, wheat and sunflower oil are valued. To successfully enter the Spanish market and declare the quality of goods, you need to register. However, before starting the registration procedure, it is necessary to check your designation and conduct the Spain trademark search.
- For obtain it, you must have an address in Spain (company or representative).
- Individuals and / or legal entities can apply.
- The use of a logo in Spain is not required until the moment of contacting the institution (as, for example, required in the USA).
- The brand is canceled if the owner has not used it for 5 years.
- Under standard conditions, the procedure will take 12 months. If there are objections from third parties, it can take up to 24 months.
Our patent law firm has many years of experience in cooperation with the Spain trademark office, we cooperate directly and in a short time we submit a local application. Then, if necessary, the certificate can be extended to other states. When submitting documents electronically, there is a 15% discount on official fees. We do not cooperate with intermediaries, we work directly.
The Emirates is one of the most advanced corners of the world, procedures in it are carried out quickly and accurately. You can get a legal logo in a maximum of 3 months. Before starting the registration procedure, we conduct the UAE trademark search. And then in the UAE they believe that it takes a long time.
Features of patent office in the Emirates:
- Documentation is submitted simultaneously in Arabic and English.
- If they find similarities, they will refuse: they are not as loyal to them here as in the EU. Therefore, they must be carefully searched for in local databases.
- Payment of duties cannot be delayed, otherwise they can be fined.
- The registration certificate is issued in electronic form, it is not printed on paper.
- Emirates is a Muslim state. It is prohibited to formation badges related to alcohol, drinking clubs, pork and nightlife here.
An important feature of the Trademark Law in the UAE is that you can obtain in it only by a national application.Emirates is not a party to the Madrid Agreement, so brands registered here can be formatted in other countries by filing separate applies.Our attorney representative in the UAE submit documents to the local patent authority directly, without intermediaries. Legalisation (taking into account official fees and remuneration for the SION’s services) cost from 3500 USD. Official fee for expertise of the one class is 2000 USD.
Qatar is a promising state for business development. It leads the world in terms of GDP per capita and has huge reserves of gas and oil. Over the past 16 years, Qatar has greatly simplified the laws for foreign companies to enter the market. Foreigners appreciate the stable political and financial situation, tax benefits of this jurisdiction.
- The applicant does not need a local legalisation. But confirmation is required that he is engaged in commercial activities.
- In the UAE, TMs associated with alcoholic and low-alcoholic beverages, pork are not subject to protection. And some other things, taking into account the fact that Qatar is a Muslim state.
- The legalization process takes 12-27 months, but protection begins from the day the documents are received.
The peculiarity of the logo formation process in Qatar is that it does not participate in the Madrid System. That is, obtaining according to the partrial procedure will not provide an opportunity to expand protection rights to other jurisdictions. In other countries, separate procedures can be required. But in Qatar, they still open a business for the sake of obtaining investment and access to the Middle East, Asia and Africa.
Only a local attorney can contact the responsible authority (Ministry of Economy and Trade). We have a representative in Qatar with whom SION interacts directly. We do not use the services of intermediary agencies.
Czech Republic trademark
If you are planning to do business in the Czech Republic, we help you legalise a brand under Czech law. Our direct representative submitted the national application to the specialized organization – the Industrial Property Organisation of the Czech Republic trademark office (IPO). Then, guided by the Madrid Agreement, it is possible to expand the protection rights to other jurisdictions.
- The icon does not have to be presented graphically or visually. Czech laws allow non-traditional TM: in the form of words, containers, forms, combinations of sounds.
- Individuals and legal entities can apply.
- If the mark is not used, the state will cancel the title of protection after 5 years.
- The process in the Czech Republic takes 8 months.
Due to the fact that we do not involve intermediaries, SION’s clients do not overpay. The Czech IPO has to pay for the search for similarities and identities (from 50 EUR), the filing fee (from 115 EUR) and, if desired, 40 EUR for prioritizing consideration. Remuneration for the work of an attorney – from 400 EUR.