International trademark registration for software

If you are developing software and plan, in other words, not to limit yourself to the Ukrainian market, but to conquer the world, you should definitely think about international trade mark registration.

Why is it important? The fact is that TM registration in Ukraine (obtaining a certificate from UKRNOIVI) gives you legal protection only on the territory of Ukraine. If you want to protect your brand in other countries, the Ukrainian certificate is not enough.

This article, conditionally speaking, is your guide to the world of international TM registration. We will understand why it is necessary, what there are ways of registration, how the procedure takes place and how much it costs. We will pay special attention to the Madrid system as the most convenient and cost-effective way of protecting your trademark abroad.

I. Why do I need an international registration?

Before we delve into procedural issues, let us, in other words, understand why a developer of software needs international trade mark registration in the first place? What advantages does it provide and what problems does it protect against? The answer to these questions will help you make an informed decision.

Subsection 1.1: Territoriality of the TM

A key concept to understand before considering international trade mark registrationis the territorial principle of the operation of a TM. What it means.

A trade markgrants legal protection onlyon the territory where it is officially registered. In other words, if you have registered your TM in Ukraine (received a certificate from UKRNOIVI), your trademarkis protected only in Ukraine.

For example:

You have developed the programme “SuperApp” and registered its name as a trademarkin Ukraine. This means that you have the exclusive right to use the name “SuperApp” for your programme in Ukraine, and no one else can use the same or similar name for similar software in Ukraine.

But! If someone in another country (e.g. Poland, USA, Japan) decides to release their software under the name “SuperApp” (or a very similar name), you can do nothingabout it, referring to your Ukrainian trademark. Ukrainian registration has no legal effect outside of Ukraine.

That is why, if you plan to enter the international market, or, conditionally speaking, just want to protect your TM from copying in other countries, you need international registration.

Subsection 1.2: Brand protection in the global marketplace

As we have already found out, registering a trademarkin Ukraine does not give you protection abroad. If you plan to enter the international marketwith your software,  international TM registration becomes a necessity.

Advantages of international registration:

• Preventing unfair competition: International registration allows you to protect your brand from being copied and imitated in other countries. You will be able to prevent competitors from using a similar name, logo or slogan for their software, and maintain your uniqueness in the global marketplace.
• Licensing capability:If you plan to licence your  software in other countries, having a registered TM is a great advantage. It simplifies the licence agreement process and increases the confidence of potential licensees.
• Increasing the value of the company: A registered trademarkis a valuable asset that increases the value of your company. When attracting investment or selling a business, having an international TM registration will be a strong argument in your favour.
• Increased consumer confidence: A registered TM shows that you are serious and increases consumer confidence in your software.
• Easier access to international markets.

Risks without international registration:

• Loss of potential customers: If someone else registers a similar TM in your target country, you will not be able to use your name or logo, and may lose customers as a result.
• Lawsuits: You could be accused of infringing someone else’s TM rights, even if you have used your name or logo before (but have not registered it in that country).
• Brand reputation harm: An unregistered TM makes your brand vulnerable to copying and counterfeiting.

International TM registration is a strategic investment to protect your brand softwarein the global marketplace and avoid many problems.

II. Methods of international registration of TM

So, we have found out why you need international registration of a trade mark. Now let’s consider how exactly you can register your TM abroad. There are several ways, each with its own advantages and disadvantages.

Subsection 2.1: National procedure

One way to get trademark protectionabroad is, conventionally speaking, to go through a national registration procedurein each country where you need protection.

What does that mean? It means that you will need to file a separate application for TM registration with the patent office of each country where you want to protect your brand of software.

The procedure for national registration is generally similar to the procedure for TM registration in Ukraine. You will need to:

1. Prepare an application (fill in the form, provide a TM image, make a list of goods and services).
2. Pay the application fee.
3. Submit the application to the patent office of the relevant country.
4. Wait for the decision of the office (examination of the application).
5. In case of a favourable decision, pay the registration fee and receive the certificate.

Disadvantages of the national procedure:

• Complexity and costs:Submitting applications to several countries, conventionally speaking, turns into a real headache. You will have to understand the laws of eachcountry, prepare documents according to theirrequirements, and pay fees in differentcurrencies.
• Language barrier: Documents filed with the patent office usually have to be drafted in the official language of that country. Therefore, you will need the services of an interpreter.
• The need for local patent attorneys: In many countries, foreign applicants are required to act through local patent attorneys. This is, of course, an additional expense.

When is it worth using a national procedure?

A national proceduremay be justified if you only need TM protection in oneor twocountries. But if you plan to register your TM in many countries, this method will undoubtedly be too complicated, time-consuming and expensive. In such a case, it is better to use the Madrid System, which we will discuss next.

Subsection 2.2: The Madrid System

If you need trademark protectionin several countries, the Madrid Systemis, conventionally speaking, your lifeline. It makes the process of international registrationmuch easier and cheaper.

What is the Madrid System?

The Madrid System for the International Registration of Marksis a special system that allows TMs to be protected in many countries by filing one international application. This system is administered by the World Intellectual Property Organisation (WIPO).

How does the Madrid system work?

1. In order to use the Madrid System, you need a “base” – a registered TM in Ukraine (or a submitted application for registration with UKRNOIVI). This Ukrainian application or registration will be called your base applicationor base registration.
2. You file oneinternational application with WIPO throughUKRNOIVI. In this application you specify:
   • Which countries you are interested in (where you want to obtain TM protection).
   • What goods and services are covered by your TM (classes of ICTU).
3. WIPO conducts a formal examination of your application. If everything is in order, your TM is registered in the International Register and you receive an international certificate.
4. Your application is then sent to the patent offices of each of your chosen countries. There, national examinations are carried out and each country decides on registration (or refusal) separately.

Advantages of the Madrid system:

• You file one application, pay one fee (in UAH), correspond with one office (UKRNOIVI). You do not need to understand the legislation of each country and hire local patent attorneys (at the initial stage).
• In many cases, the Madrid systemcan save you a lot of money on fees, especially if you are registering TMs in many countries.
• You can add new countries to your international registration later if your business plans change.

The Madrid System is undoubtedly the most convenient and cost-effective way to obtain trademark protectionin several countries.

Subsection 2.3: Regional systems (e.g. EUIPO)

In addition to the Madrid system, which has a global character, there are also regional systems of registration of trade marks. These, in other words, allow to obtain TM protection in several countries belonging to a certain regional association.

The most famous example is EUIPO:

EUIPO (European Union Intellectual Property Office) is the intellectual property office of the European Union. It registers European Union Trade Marks (EUTM – European Union Trade Mark).

EUTM registration gives protection to your trademark immediatelyin the territory of all European Union member states. This is very convenient if you plan to do business in several EU countries. You do not need to submit separate applications to each country – one application to the EUIPO is enough, there no less.

The EUTM registration procedure is generally similar to the national procedure. You submit an application to EUIPO, pay a fee, the Office carries out an examination and, in case of a favourable decision, your TM is registered.

Besides EUIPO, there are other regional TM registration systems, such as:

• OAPI (African Intellectual Property Organisation): Covers many countries in Africa.
• ARIPO (African Regional Industrial Property Organisation):
• BENELUX (Benelux): Combines Belgium, the Netherlands and Luxembourg.

Regional TM registration systems, in other words, can be a convenient option if you plan to do business in countries that are part of a particular regional grouping. They allow you to obtain TM protection in several countries at once by submitting a single application.

III. Procedure for international registration under the Madrid system

We have found out that the Madrid System is, in other words, a convenient and economical way to internationally register a trade mark. Now let’s look in detail at how the registration procedure itself takes place: from preparing the documents to obtaining the international certificate, there no less.

Subsection 3.1: Preparing to file an application

Before filing an international application under the Madrid System, you need to take two important steps:

1. Obtain a basic TM registration in Ukraine or file a basic application:

• Basic registration: This is a  trade mark already registered in Ukraine (i.e. you have a UKRNOIVI certificate).
• Basic application: This is an application for TM registration that you have filedwith the UKRNOIVI, but which is not yet registered.

In other words, you cannot file an international application from scratch. First you need to have a “foundation” – a Ukrainian TM or at least an application for its registration.

The Madrid system does not create a “worldwide” TM. It only simplifies, conventionally speaking, the procedure for obtaining protection in different countries. Your international registration will be dependenton your basic registration (or application) for the first 5 years. If your basic registration (or application) is cancelled or refused, your international registration will, however, also be cancelled in those countries where it has not yet undergone national examination.

1. Determine the list of countries where protection is required:

You need to be clear on which countries you want to protect your trademarkin. This will determine the fees you will have to pay.

Recommendations:

• Don’t try to cover every country in the world: Choose only countries where you realistically plan to do business or where there is a risk of your brand being copied.
• Consider your business plans: If you plan to expand your business in the future, you can include a list of countries and potential markets.

Preparing for filing an international application, in other words, is, conventionally speaking, a strategic stage. The efficiency of the whole international registration procedurewill depend on the correctness of your decisions at this stage.

Subsection 3.2: Drawing up and filing an international application

So, you have a basic registration (or application) in Ukraine and you have decided on the list of countries. Now, in other words, it’s time to draft and file an international applicationunder the Madrid system.

An international application is not filed directlywith WIPO (World Intellectual Property Organisation), but throughUKRNOIVI. That is, you file an application with the Ukrainian Office, and it already sends it to WIPO.

To file an international application, a special form is used – MMMM2. It can be found on the WIPO website (in English, French or Spanish).

What information should be included in the application?

• Applicant data: Your full name (or company name), address.
• Data on the base registration (or application): Certificate number (or application number), date of filing.
• Image of TM: The same as in your basic registration (application).
• The list of goods and services: Must be  no wider than the list in your basic registration (application). That is, you cannot add new goods/services to the international application that were not in the Ukrainian application.
• List of countries where you want to obtain protection:
• Language of application: English, French or Spanish.

You can submit an international application to UKRNOIVI:

• By mail.
• In person.
• Online (if technically realised).

When submitting an international application, you need to pay fees. These consist of:

• Basic fee (payable to WIPO).
• Individual fees (payable for each designated country).
• Additional fees (for each class of ICTU over three).
• Forwarding fees (payable to UKRNOIS)

Fees, however, can be calculated using the calculator on the WIPO website. Fees are payable in Swiss francs.

Drawing up and submitting the international applicationin other words, is a key step in the procedure. The correct completion of the application and payment of fees will determine whether your application will be accepted for consideration.

Subsection 3.3: Examination of the WIPO application

Once you have submitted your international application to UKRNOVI and it has forwarded it to WIPO (World Intellectual Property Organisation), the first stage of examination begins, in other words, the formal examination at WIPO.

What is formal examination?

Formal Examination is a check of your application against the formal requirements of the Madrid System. That is, WIPO checks:

• Whether the application form is correctly filled in: All fields are filled in, there are no errors in the applicant’s data, countries are correctly indicated, etc.
• Does the TM image meet the requirements: Does it have the proper format, size, quality.
• Is the list of goods and services correct: Is it not broader than the list in your basic registration (application), are the ICTU classes correct.
• Whether fees have been paid: Have all required payments been received in WIPO’s account.

If during the formal examination WIPO finds any deficiencies, an irregularity notice will be sent to you stating the deficiencies and the time limit for remedying them. Normally, the rectification of irregularities will be done through UKERNOIVI.

If you do not remedy the deficiencies identified during formal examination within the prescribed time limit, your international applicationconditionally speaking, may be rejected.

If formal examination is successful (that is, WIPO finds no defects), your trademarkis registered in the International Register and you receive a certificate of international registration.

Registration on the International Register is not the end of the procedure. This, in other words, only means that your application has passed formal examination at WIPO. It will then be forwarded to the national patent offices of the countries where you want protection, there no less.

Subsection 3.4: Examination of the application at national offices

After successfully passing formal examination at WIPO (World Intellectual Property Organisation), your international applicationin other words, goes to the national patent offices of the countries you have indicated in your application.

Each national office conducts examination on the meritsof your application in accordance with its national law. That is, each country decides for itself whether your trademarkcan be registered in its territory or not.

The national authorities check whether your designation is identical or confusingly similar:

• Identical or confusingly similar to previously registered TMs or applications in that country.
• Descriptive of the goods/services for which you wish to register it.
• Commonly used.
• Misleading.
• Contrary to public policy or morality.
• Deprived of distinctiveness.

That is, the examination, conditionally speaking, is the same as when registering a TM in Ukraine.

Possible results of the examination:

• Registration:If the national office finds no grounds for refusal, your TM is registered in that country.
• Preliminary Refusal:If the Office finds grounds for refusal, it sends you (via WIPO) a preliminary refusal. You have the opportunity to submit your arguments and objections.
• Final Refusal: If your arguments are not persuasive, the office will issue a final decision to deny registration.

Important:

• Each country conducts the examination independentlyof the others. That is, your TM may be registered in some countries and be refused in others.
• Examination times may vary from country to country, there no less.
• In some countries it may be necessary to engage a local patent attorney (if you get a preliminary refusal).

Examination of the application before national officesin other words, is the most important and the most time-consuming stage of international TM registration. It is the decisions of the national offices that determine whether your TM will be protected in the countries where you want to do business.

Sub-section 3.5: Obtaining an international registration

Once your international applicationhas undergone formal examination at WIPO (World Intellectual Property Organisation) and, roughly speaking, has been given the green light by national offices (i.e. no refusals), the final stage is to obtain an international registration.

An international registrationis an entry of your trademarkin the International Register maintained by WIPO. This entry, in other words, confirms that your TM has been formally examined by WIPO and can potentially be protected in the countries you have indicated in your application (subject to successful national examinations).

IV. Cost of the international registration

One of the most important questions that undoubtedly concerns every applicant is the cost of international registration of a trade mark. So how much does it cost to protect your software brandabroad?

The cost of an international registration under the Madrid systemis made up of several parts:

1. WIPO’s basic fee: This is a fixed fee that is payable for filing an international application. Its amount depends on whether your TM is word, image or combination, and whether the image is in colour.
2. Individual fees for each designated country:Each country you designate in your international application has its own individual application fee. This fee can vary significantly from country to country. Some countries (referred to as “individual fee countries”) set their own fees, while others use the standard fee set by WIPO.
3. Additional fees:
   • For each ICCT class over three: If your TM covers more than three classes of the International Classification of Goods and Services (ICCT), you will need to pay an additional fee for each additional class.
   • Document Forwarding Fee.

How to calculate the fee?

The official WIPO website has a special fee calculator that allows you to calculate the approximate cost of an international registrationfor a specific case.

Examples of calculation (indicative, as of 2024, in Swiss francs):

• Registration of a word TM in one ICTU class in the US, EU and China:  Base fee (CHF 653) + individual fees (US – about CHF 400, EU – about CHF 900, China – about CHF 200) =  approximately CHF 2153.
• Registration of a combined TM (word + coloured logo) in two ICTS classes in the UK, Japan and Australia: Base fee (903 CHF) + individual fees + additional fee for the second class = the exact amount depends on the specific fees set by these countries.

Important:

• The examples given are indicative only. The actual costmay vary.
• Fees are payable in Swiss francs.
• In addition to the fees, there may be additional costs (e.g. for the services of a patent attorney, translation of documents).

The cost of international registration, in other words, can be quite high, especially if you are registering TMs in many countries and for many classes of ICTU. But, conventionally speaking, it is an investment in protecting your brand in the global marketplace.

V. Maintenance and renewal of the international registration

Obtaining an international trade mark registrationis, in other words, not the finish line, but rather the beginning of a long-term commitment. In order for your TM to remain protected, the international registration must be maintained and amended as necessary.

An international registrationis valid for 10 years from the date of international registration(not from the date of filing!). To renew, you need to:

1. Apply for renewal: This can be done during the last year of validity of the international registration (or within 6 months of expiry, but with an additional fee). The application must be made directly to WIPO.
2. Pay the renewal fee:The amount of the fee depends on the number of countries in which you wish to renew the TM and other factors.

The validity of international registration, however, can be renewed an unlimited number of times (every 10 years).

During the term of your international registration, you may need to make changes to it. For example:

• Change of TM owner: If you sold your business or transferred the rights to TM to another person.
• Change of owner’s address:
• Changing the name of the owner:
• Restriction of the list of goods and services:If you decide not to use the TM for certain goods/services.
• Expansion of the list of countries (territorial extension):If you want to obtain TM protection in new countries.

To amend your international registrationyou must apply to WIPO and pay a fee.

Important:

• Watch the deadlines! Do not miss the renewal date of your international registrationor you may lose your rights.
• Make any necessary changes on time.

Maintaining and renewing your international registrationin other words, are uncomplicated but mandatory procedures that will allow you to keep your trademarkprotected internationally for a long time.

Conclusions

So, we have covered in detail all aspects of international trade mark registration for software. Now you know why it is needed, what are the methods of registration, how the procedure is carried out under the Madrid system, how much it costs and how to maintain the effect of the registration.

The main points worth emphasising again are:

• International registrationis necessary if you plan to use your softwareoutside Ukraine. A Ukrainian TM protects your brand only in Ukraine.
• The most convenient and economical way to international registrationis the Madrid system. It allows you to file one application and receive protection in many countries.
• International registrationis not a “worldwide TM”. It is a bundle of national registrations, and each country decides on registration separately.
• The cost of an international registrationdepends on the number of countries, ICTU classes, and other factors.
• It is necessary to maintain the validity of international registrationand renew it in time.

International trade mark registrationfor software, in other words, is an important step to protect your brand in the global marketplace. It’s an investment that can pay off a hundredfold if you plan to seriously grow your business overseas.

And, of course, if you still have questions or need help with international registration of your TM, contact the professionals. The lawyers of Polikarpov Law Firmare always ready to provide you with qualified support. We also recommend you the basic material on the topic: “Trademark for software: protecting your code and brand“.