Trade Mark Protection Abroad
Trade marks - national, European or international protection?
A national trade mark application at the DPMA provides protection in the Federal Republic of Germany. You can also obtain protection for a trade mark across Europe as a European Union Trade Mark or - – international protection on the basis of a basic mark. Each of these IP systems has advantages and disadvantages. The applicants have to decide themselves how these advantages and disadvantages should be assessed. As this is not always an easy decision, it is advisable to seek advice from an experienced lawyer or patent attorney.
There are good reasons for a national trade mark application. Our information factsheet Good reasons for filing a national trade mark application will tell you which.
This is how to protect trade marks in the European Union
The European Union (EU) trade mark provides uniform protection in all member states of the European Union. The European Union Intellectual Property Office (EUIPO) in Alicante (Spain) is responsible for the registration. The initial duration of protection of an EU trade mark is ten years. It can be renewed indefinitely for further ten-year periods. Information on EU trade marks is available on the website of EUIPO. The Regulation (EU) No. 2017/1001 of the European Parliament and of the Council of 14 June 2017 contains all the legal provisions concerning the European Union trade mark.
How to register international trade marks
Pursuant to the Protocol Relating to the Madrid Agreement, it is possible to enter a German trade mark applied for or registered into the international register and to designate the countries to which the trade mark is to be extended. The application for international registration must be filed via the DPMA with the World Intellectual Property Organization (WIPO). If you do not yet possess a German basic mark, you can go here to online filing with the DPMA.
After the DPMA has processed the application for international registration and transmitted it to WIPO, WIPO will examine the application, register the trade mark in the International Register, provided all requirements are met, and publish the registration in the " "Gazette des marques internationales"". Then, a request for protection of the trade mark is deposited in each of the designated countries. The contracting parties concerned can within one year (within 18 months in individual cases) refuse protection of the mark in accordance with their national laws. If the protection is granted, the proprietor of the international registration has the full rights of a national trade mark proprietor. If the trade mark is refused in one of the countries, trade mark protection remains in force in the other designated countries. The duration of protection of the international registration of a mark is ten years. It may be renewed as often as required.
You can also submit the application for international registration of your trade mark electronically and without signature to the DPMA:
International registration of a mark
You have already registered or applied for a German basic mark and would like to have this trade mark extended internationally for the first time (MM2).
Subsequent designation relating to your international registration
You have an international registration of a mark and would like to subsequently designate additional countries or add further goods and services from the list of your international registration for an already designated country (MM4).
Links to the homepages of EUIPO and WIPO
Picture : iStock.com/Ismagilov
Last updated: 28 October 2020