What's the best way to register an international trademark?

What's the best way to register an international trademark?

Here are the basic steps you need to register a trademark:

Step 1: Pick a trade mark

Let's say your company makes metronomes and is called "Metro". It's likely that the trademark (or word mark) you want to register will be "Metro".

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Step 2: Decide if you want a lawyer or not

You do not need to hire a lawyer, however if you do they will be able to streamline the process and you will not have to deal with the trademark office.

Further, they will be able to answer a lot of the questions related to the steps below.

Step 3: Decide which classes you want to use to register your trademark

Trademarks are an interesting beast.

Some have complained about the fact that "ordinary" words such as Apple can be registered as trademarks. But, does that mean that only the tech company Apple can ever refer to the fruit? Of course not! That would cause a lot of problems and to overcome this barrier, the (WIPO) decided to institute a system called the “ International( NICE)classification of goods and services".

Under this Classification system you must select the goods and/or services you want to use that trademark for. Then, your trademark is protected against only those goods and/or services.

For example, if another tech company started calling themselves Apple, then the real Apple, Inc. could sue them for trademark infringement. However if a shoe company called themselves "Apple" then it's unlikely (but not impossible) that Apple, Inc. would have a claim against them.

So, if your company was selling metronomes, you would probably classify your trademark under Class 9 for metronomes (NICE classification - 9).

Step 4: Select the countries where you want to register the trademark

There is no such thing as an "international registration". You'll have to register the trademark in each individual jurisdiction (e.g. USA, EU, Brazil, India, China, etc.). So, this would be a good time to decide which countries you want to register in.

Step 5: Registering your trademark

Now you need to decide if you want to use the Madrid Protocol to register the trademark or register in each individual country...more below:

Step 5a: Madrid Protocol route

TheMadrid system for registering international trademarks allows you to designate which countries you want to register your trademark in. There are currently 91 countries who are part of the Madrid system, so there's a good chance the country you want to be register in will be among those.

Let's say you want to register your trademark in the five countries mentioned above. Here's what you need to do:

Apply for registration of the mark in one of the countries. Before you can designate the other countries for registration you need to file the trademark in a country that is part of the Madrid system. Let's say you have your office in the US. You can use the United states patent and trademark office (USPTO) to apply for a trademark for the word "Metro" in the US. The requirements to file a registration here can be found on the USPTO website.

International filing. Once you have applied for or obtained a registration in the US, you can then go to the WIPO and find the rules and documents needed to file the application in the other countries you want.

Calculate fees. This is a good time to use the Madrid system fee calculator to find out how much you will have to pay for the registrations. The more countries you register in, the more it will cost you.

Register and wait. Next wait for your registration in the US and in the designated Madrid protocol countries. You might need to deal with "office actions" which will require you to explain why you are registering the trademark and how it will be used.

Step 5b: Non-Madrid Protocol route

Some countries are not a party to the Madrid Protocol and you will have to manually register in these countries. For example, Cambodia is not a party and the only way to register here is to go to its trademark website and fill out the appropriate application forms. This can be very difficult as you may need to be physically present to submit your application.

Source: Quora