International trademark registrations (WIPO)

Check availability before you invest in an international trademark. Because the international trademark is dependent on the validity of the basis trademark for the first 5 years, it is important to have a solid basis trademark. If the basis trademark becomes invalid, your international trademark is also automatically cancelled during those first 5 years (so-called central attack). We therefore recommend carrying out thorough research at least for the basis trademark.

If the research in the basis country is positive and you want to proceed with the trademark, it is advisable to conduct research in the most important target countries as well.

Due to the dependence of the international trademark on the basis trademark, we prefer to use the Benelux trademark as the basis where possible. The choice of basis country therefore influences:

• Risk to the validity of the international trademark
• The applicable WIPO fees and the costs for the international trademark

• Drafting the description of goods and services in accordance with the Nice classification (we draft this based on your information)
• Determining the applicant name for the trademark
• Filing the basis trademark application

The priority rule applies worldwide and gives a 6-month priority right on trademark rights abroad. This means your trademark in the new countries receives protection retroactively from the date of the basis trademark application. We usually use this period to determine which countries are ultimately relevant and ensure a well-considered application within budget.

Use the 6-month period to determine in which countries you want to register. This is more complex than it seems. For example, you may want to register in expensive countries only for the most important classes, and in other countries for a broader range of classes. If you miss the 6-month deadline, you can still file an international trademark, but you will no longer benefit from the priority date.

After acceptance of the basis trademark and approval of the proposed countries and classes, we can proceed with filing the international trademark application.

The trademark application now goes through various checks and stages:

• Check by the office of the basis country (BOIP or EUIPO)
• If all is in order, the application is forwarded to WIPO
• Check by WIPO on e.g. the goods and services description
• Assignment of a registration number and certificate once the application has been approved by WIPO
• WIPO forwards the international trademark application to the trademark offices of the designated countries
• The further procedure differs per country
• The national trademark offices assess the international trademark application based on their own regulations
• The assessment of the application must take place within 12 months, but this period can be extended to 18 months in some countries
• Any regularisation notices and other updates must be sent by the national offices to WIPO
• WIPO forwards these to us and communicates the deadline within which a response can be given: we inform you and agree on the action to be taken

Answering questions from BOIP, EUIPO and WIPO is free of charge. Forwarding refusals, the initial advice and cost estimate, and monitoring deadlines are also included free of charge. Costs for local agents only arise when substantive handling in a specific country is required, and always after consultation (your approval?)

We will send you the registration certificate once the procedure at WIPO has been completed. It can sometimes take a while before it is clear per country:

• Registration per country — Has the trademark been accepted and if so, for which goods and services?
• Use requirement — In most countries the use requirement applies after 5 years, but there are also countries where this period is 3 years (e.g. the US).
• Renewal — An international trademark registration is valid for 10 years from the application date and can always be renewed with a new period of 10 years.
• Proving use in the meantime — In some countries, such as the US and Mexico, trademark rights are linked to use. This must be demonstrated at set intervals.
• Changes to the trademark — It is NOT possible to make changes to a trademark once filed. In case of changes, a new trademark application is often necessary.
• Changes to trademark owner details — During the lifetime of a trademark, things may change on the trademark owner’s side, e.g. name or address. These must be registered.
• Enforcement of trademark rights — Trademark owners must actively ensure that action is taken against infringements. That is a task for the trademark owner themselves, supported by us.

From the first advice about your trademark to the definitive trademark registration: Rise guides and handles the entire process. Let us know which countries are relevant to you.