Trade Mark Protection Abroad
Trade Mark Law Modernisation Act (Markenrechtsmodernisierungsgesetz), 14 January 2019:
This page is currently being revised and adapted to the changes of the Trade Mark Law Modernisation Act. The German trade mark pages have already been revised.
Trade marks - national, European or international protection?
A national trade mark application at the DPMA provides protection in the Federal Republic of Germany. You can also obtain protection for a trade mark across Europe as a European Union Trade Mark or - international protection on the basis of a basic mark. Each of these IP systems has advantages and disadvantages. The applicants have to decide themselves how these advantages and disadvantages should be assessed. As this is not always an easy decision, it is advisable to seek advice from an experienced lawyer or patent attorney.
Eight good reasons
There are good reasons for a national trade mark application. Our information factsheet Eight good reasons for filing a national trade mark application will tell you which.
This is how to protect trade marks in the European Union
The European Union (EU) trade mark provides uniform protection in all member states of the European Union. The European Union Intellectual Property Office (EUIPO) in Alicante (Spain) is responsible for the registration. The initial duration of protection of an EU trade mark is ten years. It can be renewed indefinitely for further ten-year periods. Information on EU trade marks is available on the website of EUIPO.
To register international trade marks
Pursuant to the Madrid Agreement and the Protocol Relating to the Madrid Agreement, it is possible to enter a trade mark into an international register. The application for international registration must be filed via the DPMA with the World Intellectual Property Organization (WIPO). If you do not yet possess a German basic mark, you can go here to online filing with the DPMA.
After processing and transmitting the application for international registration to WIPO, WIPO will examine the application, register the trade mark in the international register, provided all requirements are met, and publish the registration in the ""Gazette des marques internationales"". Then, a request for protection of the trade mark is deposited in each of the designated countries. The contracting parties concerned can within one year (within 18 months in individual cases, pursuant to the Protocol) refuse protection of the mark in accordance with their national laws. If the protection is granted, the proprietor of the international registration has the full rights of a national trade mark proprietor. If the trade mark is refused in one of the countries, the trade mark remains in force in the other designated countries.
The term of protection of the international registration of a mark is twenty years pursuant to the Madrid Agreement, ten years pursuant to the Protocol. It may be renewed as often as required.
The forms issued by WIPO must be used for an application for international registration. This also applies to all further requests to WIPO relating to international registrations of marks. An information leaflet on the international registration under the Madrid Agreement and the Protocol Relating to the Madrid Agreement, instructions on how to fill in the WIPO forms as well as the accompanying letter to be sent to the DPMA are available (in German) here. You can also order the request forms from the customer care and services of the DPMA.
Links to the homepages of EUIPO and WIPO
- European Union Intellectuell Property Office (EUIPO)
- World Intellectual Property Organization (WIPO)
Picture : iStock.com/Ismagilov
Last updated: 18/02/19