— services

International trademark registration

It is known that the trademark is protected only in the territory of the country where it is registered. So if your business activity goes beyond the Russian market, there is a need for a trademark registration abroad.

There are two ways of acquiring the trademark legal protection in various countries.

1. Trademark registration according to national procedure.
Along with the rendering services in trademarks registration and protection in the Russian Federation territory, our Agency has broad experience in trademark registration in the former Soviet republics, that is CIS, Baltic countries and Georgia, with the help of our partners – Patent Attorneys in these countries’ territories.

2. International trademark registration according to the Madrid Agreement and Protocol.

The main advantages of this system:

- Filing of one application for trademark registration in respect of all interested countries;

- Significant reduction of applicant’s costs associated with the exclusion of the patent attorneys’ fees out of the applicant’s costs and payment of an international duty;

- Opportunity of future “expansion” of the international registration by additional specifying countries. At this international fee for this “expansion” is about half the original fee;

- Simplified system of further registration “maintenance” by submitting a single application for amendment, renewal, transfer of rights for all countries listed in the registration;

- Application registration, publishing, submitting registration certificate to applicant, sending to national offices of the said countries to conduct an examination

- The period for the international registration consideration in each designated by the applicant country does not exceed 1 year under the Madrid Agreement and is about 18 months under the Madrid Protocol.

Procedure of international trademark registration under the Madrid Agreement and Protocol.

- Application shall be submitted to the International Bureau of World Intellectual Property Organization (IB WIPO) through the Russian Patent Office;

- Depending on the chosen countries an international application may be filed either on a basis of national (core) application for trademark registration in the Russian Federation, or on the basis of the basic trademark registration in the Russian Federation.

- After receiving an application IB WIPO examines the correctness of the execution of application for international trademark registration and conformity of goods and services list of the International (Nice) Classification; register the trademark and send to the owner a certificate containing information entered in the International Register in the trademark registration.

- After a formal application examination IB WIPO conveys an application to the national authorities of countries in which registration of the trademark is obtained.

- National Offices of the countries conduct a substantive examination of the application for trademark registration in accordance with the applicable in those countries legislation in the field of trademark protection.

- After the examination the national office of each country reported IB WIPO its decision on the possibility of providing trademark protection in its territory.

- IB WIPO sends to the trademark owner a notification of the made in the International Register records of preliminary and final refusals to grant protection, final decisions following a refusal, and notification of the made in the International Registry records of registration nullification recognition, as well as a copy of the made in the International Register records of changes.

- In the absence of the Country’s Office response within the specified period, the international registration is valid in the said country’s territory.

International trademark registration in the International Bureau is made for ten years, with possibility of extension.

Parties to the Madrid Agreement and Madrid Protocol (as of July 01, 2011)

Parties to the Madrid Agreement and Madrid Protocol		Parties to the Madrid Agreement only	Parties to the Madrid Protocol only
1		2	3
Austria Azerbaijan Albania Armenia Belarus Belgium Bulgaria Bosnia and Herzegovina Butane Hungary Vietnam Germany Egypt Italy Iran Spain Kazakhstan Kenya China Kyrgyzstan Cyprus North Korea Cuba Latvia Lesotho Liberia Liechtenstein Luxemburg	Macedonia Morocco Mozambique Moldova Monaco Mongolia Netherlands Namibia Poland Portugal Russia Romania San Marino Swaziland Slovakia Slovenia Serbia Syria Sudan Sierra Leone Tajikistan Ukraine France Croatia Montenegro Czech Republic Switzerland	Algeria	Australia Antigua and Barbuda Bahrain Botswana United Kingdom Ghana Greece Georgia Denmark EC Zambia Ireland Iceland Israel Lithuania Madagascar Norway Oman Republic of Korea Sao Tome and Principe Singapore Sudan USA Turkmenistan Turkey Uzbekistan Finland Sweden Estonia Japan

The Office for Harmonization in the Internal Market (trademarks and designs) – OHIM.

OHIM – The Office for Harmonization in the Internal Market of the EU, designed to ensure the legal protection of trademarks and industrial designs within the EU territory. The Office was established in 1994 and has headquarters in Alicante (Spain).
The main task of the Office for Harmonization in the Internal Market is a registration of unified EU trademarks and industrial designs, as well as consideration of objections relating to the registration and legal protection of mentioned intellectual property in the administrative proceedings.
Legal protection of EU trademarks and industrial designs applies to the 27 EU member countries’ territories.

EU trademark.
EU trademark registration begins with the filing an application in electronic form (online application) to the OHIM through the European patent attorneys with relevant powers and then a formal application examination and its publication are conducted. Interested parties may file an objection within three months from the date of application publication. In the absence of objections from the interested parties, the trademark shall be registered. The process of trademark registration takes on the average 6 months. Duration of the EU trademark registration is 10 years, with the subsequent extension every 10 years.

An industrial design.
Along with the EU trademark application for an industrial design shall be filed to the OHIM in electronic form. An unlimited number of samples may be specified in one application. Then, the Office conducts a substantive examination and on the basis of its results the decision on the industrial design registration is taken. Duration of the industrial design is 5 years, with a subsequent extension, but no more than 25 years.

Advantages of the trademarks and industrial designs registration system in the Office for Harmonization in the Internal Market

Provision of the trademark or industrial design legal protection in the 27 EU countries’ territories by filing one application.

Simplified procedure of application filing.

Shortened term of office work.

Low cost of registration.

Disadvantages of the trademarks and industrial designs registration system in the Office for Harmonization in the Internal Market

The absence of substantive examination.

The need for certified European Patent Attorney.

Dependence of the application for EU trademark registration / unified EU trademark registration on the EU priority national trademark applications / national registrations of EU member countries.

Our Agency has broad experience in the European applications registration, the advantages of which are appreciated by many Russian applicants.