International Trademark Registration: A Complete Guide
Is your brand successfully developing in Ukraine, and are you ready to enter international markets? This is an ambitious step that requires a solid legal foundation, because without global protection, your trademark remains vulnerable. Many entrepreneurs are stopped by uncertainty: how does the procedure work and what will be the final international trademark registration cost? This guide is a logical continuation of our article on the cost of trademark registration in Ukraine and provides comprehensive answers for protecting your business on the world stage.
We will thoroughly examine the Madrid System as a key tool for global expansion, go through all stages of application submission through the Ukrainian National Office for Intellectual Property and Innovations (UKRNOIVI), reveal the structure of official fees, and explain how to manage your rights after registration. You will receive a clear action plan and be able to accurately calculate the budget for protecting your brand globally. So, let’s start with the main thing: what exactly is international registration and what advantages does it open up for your business.
What is international trademark registration?
If you have already familiarized yourself with the basics of brand protection in Ukraine, relying on our guide «Trademark Registration Cost in Ukraine: A Complete Guide», the next logical step for business scaling is entering international markets. However, global expansion also requires global protection. International trademark registration is not just a formality, but a strategic investment in the security and capitalization of your brand abroad.
Without proper protection, your brand becomes vulnerable to copying and unfair competition in other countries. This can lead not only to financial losses but also to reputational damage. Many entrepreneurs are interested in the cost of international trademark registration, and we will provide a comprehensive answer to this. In this article, we will thoroughly examine how the Madrid System works — a key mechanism that allows obtaining legal protection in 130 countries worldwide through a single application and a unified set of fees, which significantly affects the final price of trademark registration.
To help you make an informed decision, we will break down the process into its components. First, we will explain why international protection is needed and what risks it neutralizes. Next, we will thoroughly examine the basic principles of the Madrid System so that you understand its advantages and mechanics. Our team provides full support at all stages, as professional trademark registration at the international level requires deep expertise and attention to the details of each jurisdiction. This will help you not only register a clothing brand in Ukraine but also successfully bring it to the world stage.
Why is international protection needed?
Your business entering the international market is not only about new opportunities but also about new risks. Your Ukrainian trademark, which reliably protects the brand at the national level, has no legal force outside of Ukraine. This means that any company in the EU, USA, or China can legally register your brand to themselves, blocking your access to the market or, worse, demanding a ransom for the right to use your own name. Imagine that you invested in marketing, and your products are being sold by a local competitor under your own logo — this is a direct path to financial and reputational losses.
International protection transforms your brand into a valuable asset that works globally. This is not just an expense, but a strategic investment in the company’s capitalization. A trademark registered abroad gives you the exclusive right to use the name and logo, protects against unfair competition and “patent trolls.” For example, a Ukrainian manufacturer of craft furniture, having registered its brand in EU countries in advance, was able to stop an attempt by a Polish company to release similar products under an analogous name, preserving its market share and avoiding many years of litigation. Thus, international trademark registration, the cost of which is incomparably less than potential losses, becomes the foundation for safe scaling, simplifies the conclusion of franchising agreements, and increases the attractiveness of the business for investors.
Therefore, the territorial principle of intellectual property protection forces us to act proactively. Ignoring international registration can cost you your business in the chosen country. Fortunately, there is a special tool for effective and centralized brand protection in dozens of countries simultaneously. Next, we will consider how this mechanism works — the Madrid System.
Madrid System: basic principles
When the need for international protection becomes obvious, the question arises: how to implement it effectively and without unnecessary costs? The answer is the Madrid System, administered by the World Intellectual Property Organization (WIPO). This is a centralized mechanism that allows you to file one international application in one language (English, French or Spanish) and obtain legal protection in 130 member countries of the Madrid Agreement and its Protocol.
The system is based on the principle of “one-stop shop”. Instead of separately filing applications with the patent offices of the USA, China, EU countries and other jurisdictions, you file a single application through your national office – in Ukraine it is UKRNOIVI (Ukrainian National Office of Intellectual Property and Innovations). This international application must be based on an already filed or registered national application. This approach fundamentally changes the approach to what the final international trademark registration cost will be, as it eliminates the need for the services of local lawyers in each individual country at the filing stage.
The key advantages of the Madrid System make it an optimal choice for businesses entering the global market:
- Significant cost savings. You pay one set of fees (basic, individual fees for selected countries and additional for classes of goods/services) in one currency (Swiss francs). This is significantly more profitable than paying the full cost of brand registration in Ukraine and separately in each other country, where patent attorney Kyiv prices for whose services can be high, multiplied by the number of jurisdictions.
- Simplified procedure and time saving. Instead of managing dozens of cases in different languages, you manage one application through a single WIPO portal. This also applies to subsequent actions: renewal, changes to the register or expansion of geographical protection are carried out centrally.
- Transparent management. All actions with your international registration are recorded in a single register. You can easily track the status of the application in each country, manage deadlines and plan the cost of trademark maintenance per year.
Thus, the Madrid System acts not just as an alternative, but as a strategic tool for global brand protection. Understanding its principles allows you to move on to step-by-step planning of the application procedure itself.
Stages of international registration under the Madrid System
Understanding the importance of international protection, let’s now move on to the practical steps required to register your trademark under the Madrid System. This process is a logical continuation of the national procedure, described in detail in our guide “Trademark Registration Cost in Ukraine: A Complete Guide”, but it has its key features and requires strategic planning.
The procedure for filing an international application only seems simple at first glance. In fact, it consists of several critically important stages, each of which affects the success of registration and the final international trademark registration cost. An error at any stage can lead to refusal of protection in one or more countries, which will negate all your efforts and investments. To avoid such risks, our lawyers provide full support, ensuring the smooth passage of all formalities.
The entire path can be conditionally divided into three key stages, which we will consider next:
- Preparation for filing an application: A fundamental stage that includes checking the mark and choosing countries for protection.
- Filing an international application: The procedure for interacting with the national office (Ukrpatent) and the World Intellectual Property Organization (WIPO).
- Examination and registration: Consideration of your application in each selected country and obtaining a final decision.
Understanding these stages will allow you not only to control the process but also to clearly understand what the trademark registration price consists of at the global level. Next, we will analyze in detail where this path begins.
Preparation for Filing an Application
Before starting the procedure, it is important to understand that thorough preparation is 90% of success. Every step at this stage directly affects not only the chances of obtaining legal protection, but also the final cost of international trademark registration. Errors here can lead to rejections, delays, and significant financial losses.
The foundation for an international application under the Madrid System is your national application or an already registered trademark in Ukraine. This is the so-called “basic mark”. You cannot file an international application directly with the World Intellectual Property Organization (WIPO), bypassing the national office. For Ukrainian businesses, this means that you must first file an application with the Ukrainian National Office of Intellectual Property and Innovation (UKRNOIVI). Key requirement: the data in the international application (image of the mark, information about the owner, list of goods and services) must 100% match the data in the basic Ukrainian application.
Once you have confirmed the existence of a basic mark, you need to make several strategic decisions:
- Choosing countries for protection. You must specify the particular member countries of the Madrid System in whose territory you plan to obtain protection. Each additional country increases the amount of official fees. Therefore, it is important to choose only those markets where you are already operating or plan to enter in the near future.
- Checking the mark for similarity and identity. This is a critically important stage. A mark unique in Ukraine may be confusingly similar to an already registered mark, for example, in Poland or the USA. A preliminary search in the databases of selected countries will help assess the risks of refusal and avoid unnecessary payment of fees. Professional analysis conducted by a patent attorney significantly increases your chances.
- Defining the list of goods and services. Your international protection will extend only to those goods and services under the International Classification of Goods and Services (Nice Classification) that are specified in the application. For example, if you plan to expand your business, you should immediately consider how much it costs to register a clothing brand in Ukraine and abroad, and include the appropriate classes. The list should be broad enough to cover future plans, but not excessive, as this may be a reason for refusal and increases the calculation of the state fee for trademark registration.
Once these preparatory steps are completed, you are ready to form a package of documents for filing an international application.
Filing an International Application
Once the preparatory work is completed, you proceed to the key stage – filing an international application. This process does not happen directly with the World Intellectual Property Organization (WIPO), but through a national office – the Ukrainian National Office for Intellectual Property and Innovation (UKRNOIVI). UKRNOIVI acts as the “office of origin,” certifying that the data in your international application (owner, image of the mark, list of goods and services) fully corresponds to your basic Ukrainian application or certificate. After this verification, the package of documents is sent to WIPO.
The official WIPO MM2 form is used for filing the application. In it, you specify all key information: applicant details, mark image, list of goods and services according to the Nice Classification, and most importantly, a list of countries in which you wish to obtain legal protection. It is at this stage that the final international trademark registration cost begins to form, as individual fees for each country you choose are added to the basic WIPO fee. Errors in completing this document can lead to significant delays and additional costs.
To visualize the path of your application, let’s consider the key steps in this process:
- Filing the application with UKRNOIVI. You submit the completed MM2 form and supporting documents to the Ukrainian office.
- Certification and forwarding to WIPO. UKRNOIVI verifies the data’s compliance with the basic registration and sends your application to the WIPO International Bureau.
- Formal examination at WIPO. WIPO specialists check the application for compliance with formal requirements: correctness of completion, classification of goods, payment of fees.
- Publication and distribution. If successfully verified, WIPO registers your mark in the International Register, publishes the data in the WIPO Gazette of International Marks, and sends the application to the intellectual property offices of each of the countries you specified.
After WIPO has completed its part of the work, your application is sent to the national offices for consideration. They conduct a substantive examination and make the final decision on granting protection in their territory.
Examination and Registration
After your international application has been reviewed by the national office (in Ukraine, this is UKRNOIVI — the Ukrainian National Office of Intellectual Property and Innovation) and forwarded to the World Intellectual Property Organization (WIPO), the formal examination stage begins. WIPO checks the application for compliance with formal requirements: correct classification of goods and services according to the Nice Classification, completeness of the provided data, and payment of the relevant fees. This is not a substantive examination. If all formalities are met, WIPO enters your mark into the International Register, publishes the information in the WIPO Gazette of International Marks, and issues you a certificate of international registration.
It is important to understand: a certificate from WIPO does not mean automatic grant of legal protection in all designated countries. It only confirms that your application meets the formal requirements of the Madrid System. The real examination begins when WIPO sends your application to the offices of each of the countries you have specified. They conduct the substantive examination in accordance with their national legislation.
National offices check whether your trademark conflicts with their internal requirements. For example, whether it is descriptive for the declared goods, or whether it is similar to the point of confusion with marks already registered in their territory. This process can take from 12 to 18 months, and in some jurisdictions (such as the USA or China) even longer. If the office finds grounds for refusal, it sends a provisional refusal to WIPO. This is not a final decision, but an invitation to dialogue. You are given time to provide a reasoned response and refute the examination objections.
Responding to provisional refusals is the most complex stage, directly affecting the final international trademark registration and its cost. To respond to objections, it is usually necessary to involve a local patent attorney in the country from which the refusal was received. Their services are paid separately. Successful overcoming of objections ensures the grant of legal protection. If the office does not send a provisional refusal within the established period, your trademark automatically receives protection in that country, equivalent to national registration.
Thus, the examination stage determines not only the geography of your brand’s protection but can also significantly affect the overall budget. Understanding these potential costs is key to planning, so next, we will detail the components that make up the cost of international registration.
How much does international trademark registration cost?
Once you have understood the stages of international registration, the main question arises: what is the cost of international trademark registration? Unlike the national procedure, global protection has a more complex cost structure. The total amount depends on the number of selected countries, classes of goods and services, as well as the individual fees of each national jurisdiction.
To help you clearly plan your budget, we will break down all financial aspects into components. In this section, you will learn:
- What official fees consist of and how they are calculated.
- What value legal services create and why it is a profitable investment.
- Estimated budgets for registration in key regions of the world.
Understanding these elements will allow you to avoid unforeseen expenses and make the process as transparent as possible. To get an accurate calculation, taking into account the specifics of your brand and market geography, contact our specialists. Our trademark registration service includes a detailed calculation of all fees. After analyzing the registration costs, it is important not to forget about future obligations, which we discuss in detail in the article “The cost of trademark maintenance per year: what you need to know“. Now let’s move on to the first component of the price.
Official Fees and Their Components
When planning to enter international markets, a key question is the cost of international trademark registration. Unlike the national procedure, where the cost of brand registration in Ukraine is more predictable, global protection consists of several official payments to the World Intellectual Property Organization (WIPO). Understanding their structure will allow you to accurately plan your budget.
The total amount of official fees is dynamic and depends on three main factors: the color of your trademark, the number of classes of goods/services, and the list of selected countries. All calculations are made in Swiss francs (CHF). Here are the main components:
- Basic Fee. This is a mandatory payment for filing and processing an international application. Its amount is 653 CHF for a black and white mark and 903 CHF for a color mark.
- Complementary Fee. Paid for each country or jurisdiction specified in the application. The standard amount is 100 CHF per country.
- Individual Fee. An important nuance: many countries, including the USA, China, Japan, and the European Union, set their own “individual fee,” which replaces the standard complementary fee. Its amount is significantly higher and reflects the cost of examination by the national office. This fee has the greatest impact on the final price of trademark registration.
- Fee for additional Nice Classification classes. The basic fee covers registration in three classes of goods and services. For each subsequent class beyond three, an additional 100 CHF must be paid.
To clearly demonstrate how to calculate the cost, let’s consider an example. Suppose you want to register a color logo for a clothing brand (1 Nice Classification class) in the EU and the USA. Both jurisdictions have individual fees.
| Fee Component | Amount (CHF) | Comment |
|---|---|---|
| Basic Fee | 903 | For registration of a color trademark. |
| Individual Fee (EU) | 897 | For examination of the application by the European Union Intellectual Property Office (EUIPO). |
| Individual Fee (USA) | 1111 | For examination of the application by the United States Patent and Trademark Office (USPTO) for one class. |
| Total amount of official fees | 2911 | Estimated cost payable to WIPO. |
For an accurate calculation, you can use the official calculator on the WIPO website, which allows you to calculate the cost of trademark registration online. However, these figures are only official payments. They do not include the cost of preparing the application, communication with offices, and possible responses to objections, which forms the cost of legal services.
Cost of legal services
In addition to official fees, the budget for international brand protection should include legal support costs. Attempting to save on the services of a patent attorney may seem appealing, but in practice, it often leads to significantly higher expenses: refusal of registration, loss of priority, or even the inability to protect the brand in a key country. The cost of an error here significantly exceeds the prices for the services of a qualified lawyer, especially when it comes to competitive markets.
What exactly is included in the cost of legal services? It’s not just “filing papers,” but comprehensive strategic support. Engaging a specialist ensures that the international trademark registration, the cost of which you are calculating, will proceed without unforeseen problems. Typically, the service package includes:
- Preliminary analysis: Checking your TM for similarity and identity in the registers of selected countries to assess the chances of success.
- Classification of goods and services: Correct selection of classes according to the International Classification of Goods and Services (Nice Classification) to ensure complete protection and avoid conflicts.
- Preparation and filing of the application: Formalization of all documents in accordance with the requirements of WIPO and the national office (UKRNOIVI).
- Communication management: Correspondence with WIPO experts and foreign offices, deadline control.
- Responses to objections: If a national office of any country issues a provisional refusal, the lawyer prepares a reasoned response to overcome it.
Thus, you invest not in a service, but in a result — reliable legal protection of your brand in the global market. An experienced attorney knows the specifics of legislation in different countries, which helps to avoid common pitfalls and significantly speed up the process. A comprehensive approach to trademark registration minimizes the risks of refusals and additional costs. To help you get a complete picture of the budget, in the next section we will provide a table with approximate calculations.
Estimated Costs (Table)
To put the cost discussion into practical terms, it’s important to understand how general fees and legal fees combine into specific amounts for different markets. The overall international trademark registration cost directly depends on the geography of your business – the more countries you choose, the higher the total costs will be. However, the Madrid System still makes this process significantly more cost-effective than filing separate national applications.
For clarity, we have prepared a table with estimated calculations for the most popular jurisdictions. Please note that official fees are paid in Swiss Francs (CHF), and the cost of legal services may vary. These figures will help you create a preliminary budget for entering the global market.
| Country / Region | Official WIPO and National Office Fees (CHF)* | Cost of Legal Services (EUR)** | Total Estimated Cost (EUR) |
|---|---|---|---|
| European Union (EUTM) | ~ 1,488 (basic + individual EU fee for one class) | 600 – 1200 | ~ 2,100 – 2,700 |
| USA | ~ 1,018 (basic + individual US fee for one class) | 800 – 1500 | ~ 1,800 – 2,500 |
| China | ~ 883 (basic + individual China fee for one class) | 700 – 1300 | ~ 1,600 – 2,200 |
| United Kingdom | ~ 836 (basic + individual UK fee for one class) | 500 – 1000 | ~ 1,350 – 1,850 |
*Includes basic WIPO fee (653 CHF for a black and white mark) and individual country fee for one class of Nice Classification as of 2024. The amount may vary depending on exchange rates, number of classes, and color of the mark.
**The range of patent attorney service costs depends on the complexity of the case and the scope of work (preliminary search, responses to office actions, etc.).
This table demonstrates that the cost of brand registration at the international level is a significant, but entirely predictable, investment. Although there are tools that allow you to preliminarily calculate the cost of trademark registration online, an accurate budget can only be prepared by a specialist after analyzing your goals. Successful registration is only the first stage; it is equally important to ensure proper support and protection of your trademark after receiving the certificate.
International Trademark Maintenance
Obtaining an international registration certificate is not the end, but only the beginning of your brand’s journey on the global stage. Successful registration opens doors to new markets, but at the same time places responsibility on you for its active maintenance. Without proper attention, even the strongest legal protection can weaken over time, and investments made in expansion will prove futile. It is important to understand that the cost of international trademark registration, which you have already calculated, also involves further planned expenses.
After successfully completing all stages, from application submission to examination, the key task becomes the preservation and effective use of the acquired rights. This section is dedicated to the long-term maintenance of your international trademark. We will consider how to ensure its continuity and how to protect your brand from unfair competition. Our specialists are ready to provide you with full support, because professional trademark registration is only the first step to global success. Next, we will analyze in detail two critically important aspects: the renewal procedure and the monitoring strategy. You can find more detailed information about annual expenses in our guide ‘Annual Trademark Maintenance Cost: What You Need to Know’.
Extension of registration
International trademark registration is not a one-time action, but a long-term asset that requires your attention. Your international registration is valid for 10 years from the date of its registration. To maintain exclusive rights to the brand in the specified countries, the registration must be renewed every subsequent 10 years.
The renewal procedure is centralized and takes place directly through the World Intellectual Property Organization (WIPO). Six months before the expiration date, WIPO sends an unofficial reminder to the owner and their representative. It is important to understand that not receiving this letter is not an excuse for missing deadlines. The total international trademark registration cost of renewal consists of a basic fee (653 Swiss francs) and individual fees for each country where you wish to maintain protection. These costs are a key component of the annual trademark maintenance cost and require advance budget planning.
If you have not paid the fees by the expiration date, WIPO provides a grace period of six months for payment with an additional penalty of 50% of the basic fee. Ignoring this last chance will result in the termination of the international registration. This means a complete loss of protection in all declared countries, which opens the door for unfair competitors and can cause irreparable damage to your business. Timely renewal of registration maintains your formal protection, but for it to be effective, you must also actively monitor whether other market players are infringing your rights.
Monitoring and Rights Protection
Timely renewal of registration preserves your rights on paper, but only active market monitoring transforms them into a real business asset. Registration is the foundation, and protection is daily work that safeguards your investments. Inaction can lead to your brand being “diluted” by competitors or even lost in key markets.
It is important to understand that while the initial international trademark registration cost may seem significant, the costs of combating infringements without proper monitoring can be many times higher. Continuous tracking is a preventive measure that allows threats to be detected at an early stage. Critically important situations requiring immediate action include:
- Filing of similar applications. A competitor in Germany files an application for a mark phonetically similar to yours. Monitoring allows you to file an objection at the examination stage, which is significantly cheaper than litigating with an already registered mark.
- Appearance of counterfeit goods. Your products start being sold on Asian marketplaces without your permission. Regular monitoring of online platforms allows you to promptly demand the blocking of such goods.
- Unfair competition. A former distributor in the USA registers your mark in their name. Detecting this at the application publication stage allows you to prove your prior rights and block the registration.
Proven legal instruments are used for effective rights protection. Engaging specialists, where patent attorney Kyiv prices for monitoring services are transparent, allows for timely response to threats through the submission of cease and desist letters or recourse to court. Thus, monitoring and active protection transform your international registration from a formal document into a powerful tool for conquering global markets, preparing the groundwork for your confident international success.
Protect Your Brand Globally: Your Path to International Success
International trademark registration is not just a legal formality, but a strategic investment in the global future of your brand. We have thoroughly examined how the Madrid System simplifies this process, allowing you to file a single application for protection in many countries. You now understand what constitutes the cost of international trademark registration: basic fees of the World Intellectual Property Organization (WIPO), individual fees of selected countries, and the cost of professional support provided by a patent attorney.
Successful registration is just the beginning of the journey. For your brand to remain protected, it is necessary to timely renew the certificate and actively monitor the market for infringements. This ensures the long-term capitalization of your intellectual property investments. You can learn more about annual expenses in our article dedicated to the cost of trademark maintenance per year.
Do not let competitors use your brand in foreign markets. Now that you are armed with knowledge about the procedure and cost, it’s time to act. Contact the lawyers of Polikarpov Law Firm to get an accurate cost calculation and develop an effective strategy for international protection of your trademark.
Frequently Asked Questions
What to do if registration is needed in a country that is not a member of the Madrid System?
The Madrid System is an extremely effective tool for international trademark registration, covering most key global markets. However, if you need protection in a country that has not acceded to the Madrid Agreement or its Protocol, you will not be able to use the centralized WIPO procedure.
In such a case, the only way is direct national registration. This means that you will have to file a separate application directly with the national patent office of that country. This process usually includes:
- Engaging a local patent attorney or law firm authorized to represent applicants in that jurisdiction.
- Preparation of documents in accordance with the requirements of the country’s national legislation (which may differ from WIPO requirements).
- Payment of national official fees established by the local office.
- Undergoing examination according to national rules, which may include both formal and substantive review.
Direct national registration is more costly and time-consuming, as it requires an individual approach to each country. However, for strategically important markets that are not part of the Madrid System, this is the only way to ensure legal protection for your brand.
What alternatives exist to the Madrid System for international trademark registration?
Although the Madrid System is the most popular and effective way to obtain international trademark protection, it is not the only one. The main alternative is direct national registration in each individual country where you wish to obtain protection. This method involves filing a separate application with the patent office of each selected country in accordance with its national legislation.
Advantages of direct national registration:
- Flexibility: You can file an application in any country in the world, regardless of its participation in the Madrid System.
- Control: You have direct contact with a local patent attorney, which can be useful in complex cases or when quick action is needed in response to objections.
- Independence: Each national registration is independent, so problems in one country do not affect the status of your mark in others.
Disadvantages of direct national registration:
- Higher costs: Usually more expensive than the Madrid System, especially when registering in many countries, as you pay separate fees and legal fees in each jurisdiction.
- Management complexity: Requires managing many separate applications, deadlines, and communications in different languages.
- Time-consuming: The process can be longer due to the need for coordination with many offices and attorneys.
The choice between the Madrid System and direct national registration depends on your expansion geography, budget, and strategic goals.
Can new countries be added to an international registration after it has been filed?
Yes, the Madrid System allows you to expand the geographical scope of protection for your trademark after the initial international registration. This process is called “subsequent designation”.
You can submit a request for subsequent designation at any time during the validity period of your international registration. This allows you to add new Madrid System member countries to your existing international certificate. The procedure is similar to the initial filing but is simpler:
- You submit a request for subsequent designation to WIPO (through your national office or directly, depending on the rules).
- You specify the new countries where you wish to obtain protection.
- You pay the corresponding official fees (WIPO basic fee and individual/supplementary fees for each new country).
After this, WIPO conducts a formal examination and sends the request to the patent offices of the new countries, which, in turn, conduct an examination according to their national legislation. It is important to remember that the protection date in these new countries will be calculated from the date of filing the request for subsequent designation, and not from the date of the initial international registration.
This flexibility allows companies to adapt their intellectual property protection strategy in accordance with business development and entry into new markets.
What types of trademarks can be registered under the Madrid System?
The Madrid System allows for the registration of a wide range of trademarks that can be protected at the national level. In general, this includes any sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. The most common types are:
- Word marks: Words, phrases, names, slogans.
- Figurative marks: Logos, drawings, graphic images.
- Combined marks: Combination of words and images.
- Three-dimensional marks: The shape of a product or its packaging (e.g., a unique bottle shape).
- Sound marks: Unique sounds or melodies (e.g., jingles).
- Color marks: A specific color or combination of colors associated with a particular product/service.
It is important to note that the possibility of registering less traditional types of marks (such as sound, scent, or holographic marks) may vary depending on the national legislation of each country you designate in the international application. Although WIPO may accept an application for such a mark, national offices may refuse protection if their legislation does not provide for the registration of such types of signs or if they do not meet the distinctiveness criteria in that jurisdiction.
Therefore, when registering non-traditional marks, it is recommended to conduct a preliminary analysis of the legislation and examination practices in the selected countries.
What are the main reasons for refusal in international trademark registration?
During the examination, the national offices of the selected countries may issue a provisional refusal to grant legal protection to your trademark. This does not mean a final refusal, but requires a reasoned response. The main reasons for refusal are usually divided into absolute and relative:
Absolute grounds for refusal:
- Lack of distinctiveness: The mark is not capable of distinguishing the goods/services of one enterprise from those of others (for example, it is too simple, generic, or consists only of letters or numbers without stylization).
- Descriptiveness: The mark directly indicates the type, quality, properties, quantity, purpose, value, origin of the goods/services or the time of their production/provision. For example, “Sweet” for candies.
- Deception: The mark may mislead the consumer regarding the goods/services or its manufacturer.
- Contradiction to public order or principles of morality: The mark contains indecent, offensive, or illegal elements.
- Generic terms: The mark consists of terms that have become generic for designating a certain type of goods/services.
Relative grounds for refusal:
- Likelihood of confusion: The mark is identical or similar to the degree of confusion with a trademark already registered or previously filed for registration by another person for identical or similar goods/services. This is the most common reason for refusal.
- Infringement of rights to other intellectual property objects: The mark infringes copyrights, rights to trade names, geographical indications, etc.
To minimize the risks of refusal, it is critically important to conduct a thorough preliminary search for identity and similarity in all selected countries before filing an international application, and to correctly define the list of goods and services.
How does trademark protection in the European Union through the Madrid System differ from national registration in one of the EU countries?
Trademark protection in the European Union can be obtained in two main ways, which have significant differences:
1. Protection through the Madrid System (EU designation)
- Single application: You designate the European Union (EUIPO) as one of the territories in your international WIPO application.
- Unified protection: In case of successful registration, you obtain a single European Union Trademark (EUTM), which provides protection automatically throughout the territory of the 27 EU member states.
- Centralized management: All actions (filing, renewal, changes) are carried out centrally through WIPO and EUIPO.
- Efficiency: This is cost-effective and simplifies management if you need protection in most or all EU countries.
- All-or-nothing principle: If an EUTM application is refused in one EU country (e.g., due to a conflict with an existing national mark), this may affect protection throughout the EU. However, there is a possibility to convert the EUTM into national applications.
2. National registration in a single EU country
- Separate application: You file an application directly with the national patent office of a specific EU member state (e.g., the German Patent and Trademark Office).
- Local protection: Protection is granted only within the territory of that specific country.
- Decentralized management: Each national registration is managed separately according to local law.
- Flexibility: May be appropriate if your business is focused only on one or a few EU countries, or if your mark has problems with registration as an EUTM.
- Independence: Registration problems in one country do not affect the status of your mark in other EU countries.
The choice depends on your business strategy. If you plan a broad presence in Europe, EUTM through the Madrid System is more efficient. If your interest is limited to one or two countries, or if there are risks of refusal for an EUTM, national registration may be a better option.





