How To Protect Trademarks Internationally
A trademark is a sign or design capable of distinguishing the goods or services of one enterprise from those of other enterprises. It can comprise words, or images, or a combination of both. Trademarks are protected by intellectual property rights. These operate at a national level, but also internationally through a complex system of treaties.
As business moves increasingly online, protecting trademarks internationally is ever more important. If your company has a website, its trademarks are visible to the entire world. Unless they are properly registered, there may be little to stop competitors using or adapting your valuable intellectual property.
Registering a trademark will give notice to the public of the registrant’s ownership of the mark. Registration gives the registrant the exclusive right to use the mark in connection with the relevant categories goods and services, within the jurisdiction where it’s registered.
In principle, a trademark registration will confer an exclusive right to the use of the registered trademark. This implies that the trademark can be exclusively used by its owner. The owner also has a right to license the use of his trademark to another party, usually in return for payment. In this case, the owner can specify the duration of the licence, whether the licencee can transfer it to another party, and also the geographical area where the licensee will operate. This means that a trademark owner can licence one company to use its trademark in France, and another in the UK, for example.
Registration provides legal certainty and reinforces the position of the trademark holder, for example, in case of litigation or a dispute over first use. When registering a trademark, it’s important to ensure that the correct classes of goods and services are applied for. Goods and services have been divided by the International (Nice) Classification of Goods and Services system into 45 trademark classes.
In order to protect a trademark internationally, there are two options: The first is to file a trademark application with the trademark office of each country where protection is required. This may be complex, costly and time-consuming. A preferable option is to use the Madrid System, which is operated by the World Intellectual Property Office (WIPO).
Although international registration is not a requirement, it may become practical necessity as a business expands. For instance, if a company begins to sell online or wants to open branches or franchises in different countries.
In our era of easy online sales, companies selling their products wholesale might not even be sure where their products end up being re-sold and so a precautionary approach may be advisable. Any trademarked products or services for sale online are available – or at least visible – internationally.
The Madrid System of International Registration
The Madrid System means that you can file an international application from the UK and designate any of 119 countries which are signatories to the Madrid Protocol.
Obtaining international trademark registration through the Madrid Protocol is a three-stage process. Firstly, it is necessary to register a trademark application in your home IP office. This is known as the “basic mark”. You can then make an international application to WIPO through your home office, choosing which countries you wish to designate. Your home IP office then certifies this application and forwards it to WIPO.
The second stage is where WIPO formally examines your trademark. Where the international application complies with all relevant requirements, the mark is recorded in the International Register and published in the WIPO Gazette of International Marks. WIPO will then send you a certificate of international registration and will inform the IP Offices in each territory which you have designated.
Only then does stage three begin. At this stage, each of the IP Offices in the designated territories will go ahead and make a decision as to whether it can register your trademark, in accordance with its own legislation. WIPO will then notify you of the outcome in each case, and will record these decisions in the international register.
It is important to keep on using your trademarks in each country where they are registered in order to maintain them.
Applying for trademarks in Turkey
As I mentioned, the first step in registering your trademark is to make an application to your home IP office. To illustrate what’s involved in such an application, I’ll use the example of the process in Turkey, where I practise law. The procedure to file a trademark in Turkey is similar to that in most European countries. Turkish intellectual property law is generally aligned with EU law and therefore the fundamental principles, and the processes involved, are broadly similar.
In Turkey, trademark protection can be obtained through registration with the Turkish Patent and Trademark Office (“TPTO”). This involves filing an application for registration with and paying the required fees. The application form is in the Turkish language and, if the applicant is based overseas, they must use an authorised Turkish trademark attorney.
The registration of a trademark in Turkey is valid for 10 years from the date of application. A trademark can be then renewed indefinitely, for additional ten-year periods each time.
An applicant may apply to have their trademark registered in multiple classes. The TPTO conducts an initial review to determine whether the initial procedural requirements are met. If so, the application then proceeds to an ex officio examination. This results in a decision as to whether the trademark is sufficiently distinctive and whether the application meets the absolute requirements. If all is in order, the application is published for opposition.
A third party may oppose an application on absolute grounds. Someone may argue for example that the trademark is indistinguishable from an earlier trademark for similar goods. A third party might also oppose an application on relative grounds, such as that the application is made in bad faith.
If no opposition is received by the TPTO within two months, the application is granted and the trademark will automatically proceeds to registration. Where an application is unopposed, the entire process from application to the actual granting of a trademark might typically take in the region of 9 to 12 months. However, if a trademark application is opposed, the process would typically need to be extended by a further 6 or 8 months, due to the time it takes for opposition proceedings to be heard.
If an application is not granted, or if an adverse ruling is made in the course of opposition proceedings, it is possible to appeal the decision. An appeal must be filed within two months of when a party is notified of a refusal, or an adverse decision. If a trademark application is ultimately granted, the decision is published in the Official Trademark Bulletin.
Trademarks can be cancelled if they have not been used for 5 years or more. A third party claiming a prior right to the trademark can also make an application to the courts to cancel a trademark. However, if they have not done so within 5 years of the granting of the trademark, any rights they have could be deemed forfeited. Because Turkey is a country party to the Madrid Protocol, it is possible to make an application through TPTO for international trademark registration with WIPO.
The main advantage of using the Madrid System is in the simplicity of its international registration system. The Madrid System makes it far easier and cheaper to obtain and maintain trademark protection across multiple countries.
Gülenay Çapkınoğlu, Senior Associate
This article was published in Lawyer Monthly