Скидки 30% на всё

International trademark registration.

Legal entities and individual entrepreneurs of the Russian Federation have the right to register a trademark directly in foreign countries or to proceed with international registration.

In most of the countries the legal protection of trademarks is available on the basis of their registration.

Today there are the following ways of legal protection of trademarks for Russian applicants in foreign countries:

• filing the international application with indication of the countries where registration is necessary;

• filing national applications directly in any country through the national patent attorney.

Speaking from the perspective of costs and time the most effective is to file an application for registration of trademarks under the procedure established by the Madrid Agreement Concerning
the International Registration of Marks and the Protocol Relating to the Madrid Agreement.

Procedure:

An application for international registration of a trademark may be filed in one or more countries - members of the Madrid Agreement Concerning the International Registration of Marks (hereinafter - the Madrid Agreement) and / or the Protocol Relating to the Madrid Agreement (hereinafter - the Protocol). It facilitates the process of obtaining protection in many countries at once and also relieves from the necessity to register the trademark in each individual country.

An application for international registration should be filed through the Patent Office of the country of origin and should be prepared by the uniform rules (hereinafter: the country of origin is the Russian Federation).

Application for countries - members of the Madrid Agreement only may be filed on the basis of a valid trademark registration in the Russian Federation.

Application for countries that have signed the Protocol only, may be filed on the basis of the application for trademark registration filed with the RUPTO.

In both cases it is not allowed to introduce significantchanges in the trademark comparably to the basic registration of the trademark in the Russian Federation or the trademark application filed for registration in the Russian Federation.

The list of goods and / or services in the international application should be the same as the list of goods and / or services specified in the basic registration or basic application for trademark registration, but it can be reduced.

The application is not examining by the International Bureau of the World Intellectual Property Organization (hereinafter - WIPO). The trademarks are only registered there in a period of about 6 months. The WIPO informs the interested Patent Offices and publishes the information in the WIPO Gazette of International Marks (the official publication of the Madrid System).

Within the period prescribed by the national legislation of any country-member of the Madrid System (but not later than eighteen months from the date of the international registration) the Patent Office of this country has the right to refuse the protection of a trademark in its territory.

International Bureau of the WIPO sends a copy of the notification of the refusal of protection to the Patent Office of the country of origin and to the trademark owner. The interested party has the same opportunities to object, as if the trademark had been filed directly in the country where the protection is refused.

In those countries where there was no refusal of the protection, the international registration of a trademark is valid for 10 years and no matter what time frame is established by national law. It is necessary to pay the prescribed fee every 10 years for the maintenance of the registration in force. Registration can be extended every 10 years starting from the date of expiry of the previous period of validity.  It is necessary to pay the appropriate fee for renewal of the international registration.

The list of the countries covered by the international registration may be extended on the basis of filing a special application form of subsequent designation and payment of the appropriate fee. The trademark owner, who decides to receive legal protection of trademarks in foreign countries according to the Madrid System, should pay attention to the following:

§  If the basic trademark registration in the Russian Federation is terminated before the expiring of the 5-year period from the date of the international registration, the international registration also expires in all of the countries mentioned in the international registration.

 

§  If the international application is filed on the basis of the national application filed with the RUPTO, the validation of international registration is terminated in case that there is a refusal of protection for the national application, or registration will be preliminary finished by the decision of the RUPTO, Chamber of Patent Disputes of the Federal Service for Intellectual Property, Patents and Trademark Office, and final judgement entered into legal force.

 

Required information:

1. The national registration number and national application number in the Russian Federation.

2. List of countries where registration is requested.

3. The list of goods and / or Services (Nice Classification), in accordance with the registration of the Russian Federation.

4. Power of Attorney in Russia to commit legal acts.