The registration of international trademark in the International Register produces the same legal effect as if that same trademark had been registered separately in each Contracting State* designated by the applicant. This means that an international registration is equivalent to a bundle of national registrations. Moreover, the trademark holder may designate subsequently more Contracting Parties and extend the protection of trademark to those States.
Consequently, there is only one registration to renew, and changes such as a change in ownership or in the name or address of the holder, or a limitation of the list of goods and services, can be recorded in the International Register through a single simple procedural step.
Advantages and Weakness of the International Trademark
The major advantage is obvious—mechanism for obtaining trademark protection in many countries around the world which is more effective than seeking protection separately in each individual country or jurisdiction of interest.
Moreover, if a designated Contracting State finds grounds to refuse the international registration of the trademark, the cancellation of the registration does not affect the other designated Contracting States. Thus, if a trademark has been rejected registration for whatever reason in, say, Spain, this will in no way affect the international registration of the mark in the other designated States. This is not the case with the European trademark where a single refusal for registration or an effective opposition in one EU State impedes the application and/or registration of the mark in all other EU States.
On the other hand, for a period of five years from the date of its registration, an international registration remains dependent on the mark registered or applied for in the Office of origin.
If the basic registration (or the basic application) ceases to have effect, whether through cancellation following a decision of the Office of origin or a court, through voluntary cancellation or through non-renewal, within this five-year period, the international registrations will no longer be protected.
*There are over 100 Contracting Parties to both the Madrid Agreement Concerning International Registration of Marks and the Protocol Relating to the Madrid Agreement. The Agreement and the Protocol comprise the so called “Madrid System”, which is administered by the International Bureau of the World Intellectual Property Organisation (WIPO) in Geneva, Switzerland. The WIPO maintains International Register and publishes the WIPO Gazette of International Marks.
Any State which is a party to the Paris Convention for the Protection of Industrial Property may become a party to the Agreement or the Protocol or both. Currently, 56 States are parties to the Agreement and 88 States have joined the Protocol.