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Registering a Trademark at the International Level

Home > Intellectual Property in France | Published 2015-07-07

A company may have to develop its products abroad. It is thus necessary for the company to protect itself at the international or (EU) Community level. Trademark protections must be expanded. Picovschi lawyers, who have plenty of experience with these situations, will provide you with valuable advice beforehand, help you develop a strategy for filing, conduct the necessary prior research, and defend you in case of infringement.

Filing an international trademark

Filing a trademark internationally assumes that the trademark has already been registered somewhere. The mark that seeks registration at the international level has to have already been submitted in the applicant’s country of origin, meaning the country of his or her nationality, residency, or establishment.

The March 20, 1883 Convention of Paris provides, for filing in France, a right of priority for a period of six months during which it is possible to make corresponding, concurrent registrations in other countries. The submission, if it is made within this period, will be in effect from the date of initial deposit and will take precedence over third parties who submit the same mark in the time period. This Convention has been ratified by 168 countries.

The April 14, 1891 Madrid Agreement and the June 27, 1989 Madrid Protocol provide one procedure: a single deposit to obtain protection in several countries. The submission is filed with WIPO in Geneva or at national offices, such as the INPI in France.

WIPO examines the application, registers the trademark, and notifies the registration administrations in the countries the applicant specifies. Registration is published in the international trademark register.

In each of the designated states, the administration that receives the notice of the international registration reviews the file in accordance with domestic laws and decides either to accept or reject it. This decision must be communicated to the WIPO with supporting reasons.

A registered file is effective for twenty years and can be renewed.

The (EU) Community trademark application

The Community trademark system has been in place since January 1, 1996. It is administered by the OHIM in Alicante. National brands can remain and coexist with a Community trademark (CTM)

However, be careful because a CTM is only possible for nationals or residents of an EU member state or a country that is part of the 1994 Marrakesh Agreement, which established the WTO. For those who do not meet those qualifications, it is still possible to designate the EU when registering international trademarks.

The application for registering a CTM may be filed either with the OHIM or the country’s national authority—the INPI in France—which will then forward it to the OHIM.

Once the submission is granted protections, the trademark confers exclusive rights on the CTM in EU territory for a period of up to 10 years, renewable.

The lawyer’s role in registering a trademark

Whether you are registering a trademark at the national, Community, or international level, it is important to seek legal counsel. A lawyer will help you develop a strategy according to your needs and interests. They will also conduct extensive prior research for your own peace of mind. All formalities related to filing will be taken care of. Should any difficulties arrive, our intellectual property lawyers will be there to defend your interests.  

This article is available online for public information purposes. It is updated regularly, as needed. Due to the constant evolution of the laws and the legal system, we cannot guarantee that the information in this article is still applicable. We invite you to contact us with any legal questions or concerns you have regarding this topic at +33 1 56 79 11 00. In no way can this firm be held liable for articles that contain inaccuracies or are now out of date.

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