What is it?
It is a bundle of national applications which are filed centrally through the World Intellectual Property Organisation (WIPO) in Geneva. The International Registration (IR) must be based on an existing UK or EUTM application or registration. This is the ‘base’ mark for the IR application.
How does it work?
There are over 100 member countries. At the outset, you identify the countries in which you require protection.
The ‘base’ application or registration must contain all the goods and services which are applied for in any country which is part of your IR application. However, you do not need to apply for all of the goods and services in every country.
The IR application is filed through the UK IPO or EUIPO (depending on whether the ‘base’ mark is a UK or EU trade mark). The office certifies the application and sends it to WIPO. When WIPO receives the application, it carries out checks on the formalities and reviews the list of goods and services. It will raise an ‘irregularity notice’ if there are issues which WIPO considers need to be addressed.
When WIPO is satisfied that the IR application is in order, it issues a ‘Certificate of Registration’. This is the equivalent of a filing receipt: it does not mean that your trade mark is registered. The countries which have been selected are then notified of the application and they each examine the application as they would a national application.
Renewal of an International Registration is by a single application filed centrally through WIPO.
How long does it take?
The UK IPO and EUIPO certify the IR application and send it to WIPO within a few weeks.
If WIPO issues an ‘irregularity notice’ the response must be filed through the UK IPO or EUIPO – whichever is the home office. This can take several months. When the national trade mark offices are notified of the IR application, they have either 12 or 18 months to accept or provisionally refuse the application. If provisional refusal is issued it is notified through WIPO, but any response is filed directly to the national office. If the national office has an opposition procedure, refusal can be issued after 18 months.
Accordingly, it can take around 2 years for an IR to be completed in all of the countries, even if the application does not encounter a provisional refusal or any other issues.
How much does it cost?
Many member countries charge individual fees and costs depend on the number of classes for which protection is sought. The individual fees are different for each country. WIPO charges an administrative fee for IR applications. If you are considering an International Registration, please let us know. We will let you have a list of member countries and you can let us know the countries of interest to you and the goods and services for which you wish to seek protection. We will let you have an indication of the filing costs of an IR trade mark application.