Journey of an International Trademark Registration
The final checkpoint
We receive tens of thousands of applications for international trademark registrations – filed through the Madrid System – every year here at WIPO.
One of the benefits of the Madrid System is the flexibility it offers, enabling users to tailor their international trademark applications to best suit their business and market needs. Through a single application, they can:
- Seek protection in as few or as many of the countries – currently 131 – covered by the Madrid System as they wish.
- Select the goods and services that their international trademark registration will cover.
- Limit protection to specific goods and services within just some of the countries or regions where they seek protection.
- Claim priority of an earlier trademark filing.
- And much more.
It’s no surprise that each international trademark application goes through a rigorous approval process before protection can be granted.
“We start by doing a very basic, preliminary check of the international trademark registrations in which we (Chile) are designated. We then publish the information in our own Gazette. This opens a 30-day public opposition period, at the end of which we perform substantive examination."
Alejandra Zalazar, National Institute of Industrial Property, Chile
“We start by doing a very basic, preliminary check of the international trademark registrations in which we (Chile) are designated. We then publish the information in our own Gazette. This opens a 30-day public opposition period, at the end of which we perform substantive examination." – Alejandra Zalazar, National Institute of Industrial Property, Chile
The final checkpoint – Substantive examination
We help companies of all sizes protect their brands worldwide
The final checkpoint in your international trademark registration’s journey is substantive examination.
Each of the intellectual property (IP) Offices of the countries or regions where you seek protection of your trademark checks that your international trademark registration meets all of its own domestic legal requirements.
Did you know? Though you file your international trademark application according to the requirements and procedures set out by the Madrid Protocol (the governing treaty of the Madrid System), it is the domestic legal framework of each designated Madrid System Member that governs the scope of protection of your international trademark registration.
Each of the intellectual property (IP) Offices of the countries or regions where you seek protection of your trademark checks that your international trademark registration meets all of its own domestic legal requirements.
Did you know? Though you file your international trademark application according to the requirements and procedures set out by the Madrid Protocol (the governing treaty of the Madrid System), it is the domestic legal framework of each designated Madrid System Member that governs the scope of protection of your international trademark registration.
Grounds for refusal
IP Offices can refuse to protect your trademark in their territory on absolute and/or relative grounds, for example if the mark is not distinctive or descriptive (absolute), or if another identical or similar trademark is already registered for the same goods and services (relative).
The IP Office of a Madrid System Member can provisionally – maybe even definitively – refuse protection in its territory if your international trademark registration does not meet all its domestic requirements.
Good news! Refusal by one IP Office does not affect protection in the other countries or regions where you seek protection.
Good news! Refusal by one IP Office does not affect protection in the other countries or regions where you seek protection.
Not all IP Offices accept the broad terms and class headings in the Nice Classification – the international classification of goods and services used for the registration of marks.
Spotlight on substantive examination (IP Offices)
We spoke to trademark specialists in four IP Offices to understand more about their individual substantive examination practices and procedures, and to get insights into how you can prepare ahead – even before you file your international trademark application – to give your trademark the very best chance of quickly being protected in your target markets through the Madrid System.
A fundamental tip from all four trademark specialists:
“Check the legal requirements of your target markets before you apply for cross-border protection of your brand! The better prepared you are, the greater chance of success you have of securing that protection. A simple example: Don’t include the ® symbol in the representation of your international mark. We – and many other Offices – will refuse it!”
(Quotes do not intend to reflect the views of WIPO)
A fundamental tip from all four trademark specialists:
“Check the legal requirements of your target markets before you apply for cross-border protection of your brand! The better prepared you are, the greater chance of success you have of securing that protection. A simple example: Don’t include the ® symbol in the representation of your international mark. We – and many other Offices – will refuse it!”
(Quotes do not intend to reflect the views of WIPO)
Tip! Find out all about legal practices and procedures in your target markets in our Member Profiles available under eMadrid.
Meet Alejandra Zalazar (Chile)
(Phtoto: Alejandra Zalazar)
"The most common reasons for us to provisionally refuse protection relate to the translation or description of goods and services, and similarity with existing trademarks in Chile."
Alejandra Zalazar, National Institute of Industrial Property (INAPI), Chile
Quick fact: Chile joined the Madrid System in July 2022.
How does substantive examination of international trademark registrations work in Chile?
“We start by doing a very basic, preliminary check of the international trademark registrations in which we (Chile) are designated, just to make sure that all the information is correct. We then publish the information in our own Gazette. This opens a 30-day public opposition period, at the end of which we perform substantive examination.
Four of us here at INAPI process international trademark registrations. We look at any oppositions (based on either absolute or relative grounds), and check whether there is any reason why protection should be refused on this basis.
Four of us here at INAPI process international trademark registrations. We look at any oppositions (based on either absolute or relative grounds), and check whether there is any reason why protection should be refused on this basis.
- If yes, we examine the registration before assigning it to the Oppositions Team for follow up.
- If no, we proceed with substantive examination and either grant protection or – if we find either absolute or relative grounds to do so – issue a provisional refusal.”
“If you receive a provisional refusal from us, and you don’t have residency here, you will need to respond to us through a local representative in Chile – in Spanish.”
Alejandra Zalazar
Common reasons for provisional refusal in Chile
“The most common reasons for us to provisionally refuse protection relate to the translation or description of goods and services, and similarity with existing trademarks already registered in Chile,” says Alejandra.
“In terms of description of goods and services, let’s take the example of “virtual bakery” in Class 43. Services included in Class 43 include “provision or preparation of food and drinks for consumption”. This could very well refer to the services offered by a bakery. However, the use of the term “virtual” changes things (from INAPI’s point of view), assimilating these services to others contained in Class 41 that are perhaps related to entertainment through virtual reality.”
“In terms of description of goods and services, let’s take the example of “virtual bakery” in Class 43. Services included in Class 43 include “provision or preparation of food and drinks for consumption”. This could very well refer to the services offered by a bakery. However, the use of the term “virtual” changes things (from INAPI’s point of view), assimilating these services to others contained in Class 41 that are perhaps related to entertainment through virtual reality.”
Tip from WIPO! Make sure that the terms you use (in your international trademark application) to describe your key goods and services will be accepted by the local IP Offices where you seek protection. Otherwise, you may have to rephrase or even delete terms that are considered too vague by some jurisdictions.
Alejandra’s advice?
“Do your research early on! We’re not yet part of WIPO’s Goods and Services Manager under eMadrid, but you can use our own database of terms of goods and services to find out about terms that we maybe won’t accept here at INAPI, so that you can already find solutions and avoid a provisional refusal. Tip! The database also includes “localisms”.
“You can also use INAPI’s trademark database to search for similar marks in Chile. And of course you can find a large part of our trademark dataset in WIPO’s Global Brand Database!”
“You can also use INAPI’s trademark database to search for similar marks in Chile. And of course you can find a large part of our trademark dataset in WIPO’s Global Brand Database!”
Next stop… India – Roopa Bhasker
(Photo: Roopa Bhasker)
“One of the big challenges we face is with priority claims – keeping the date of a national trademark registered at an earlier date. As per our national law, we are unable to accept multiple dates of priority. We can only accept one priority date for all goods and services listed in an international trademark registration.”
Roopa Bhasker, Office of the Controller General of Patents, Designs and Trade Marks (CGPDTM), India
Quick fact: In 2023, India was the 10th most designated IP Office in international trademark registrations.
“We have a small team of 12 people dealing with all matters relating to international trademark registrations. Four of them carry out actual substantive examination, reviewing around 1’000 registrations every month. Other members of the team work on different stages of the process such as opposition and grant of protection.”
Common reasons for provisional refusal in India
In India, Roopa tells us, the classification of goods and services is not the biggest challenge, it’s rather priority claims, meaning keeping the date of the first national trademark registered. “As per our national law, we are unable to accept multiple dates of priority. If the holder is seeking protection of their international trademark registration for multiple priority dates, we can only accept one priority date for all goods and services.”
“On average, we are able to grant protection to 70% of the international trademark registrations in which we (India) are designated,” explains Roopa. “For the other 30%, objections are raised either on absolute or relative grounds, or in relation to priority claims.”
Roopa Bhasker
Another problem that Roopa shares with us relates to holders not always taking the appropriate action when they receive a provisional refusal. “A holder who receives a provisional refusal must appoint a local attorney in India,” says Roopa. “Sometimes they try to respond to us directly. This doesn’t work; we will simply remind them to appoint a local representative, to avoid further delaying processing of their registration.”
“Another issue is with 3D trademarks. Be warned! We need to have five views of any 3D mark. What happens if we don’t receive all five views? We will send you a notice of provisional refusal. You can forward the missing images to us along with your response to the notice.”
“Another issue is with 3D trademarks. Be warned! We need to have five views of any 3D mark. What happens if we don’t receive all five views? We will send you a notice of provisional refusal. You can forward the missing images to us along with your response to the notice.”
Roopa’s advice?
“Be proactive; find out about procedures in India and, if you need to, seek assistance either from us directly or from a local trademark representative who knows India’s trademark system. It will help you to avoid many of the common objections we raise and increase your chances of securing brand protection here.”
Now we’re off to Thailand to meet Nutcha Sookchayee
(Photo: Nutcha Sookchayee)
“Most of the provisional refusals we issue are directly in relation to the terms used to classify goods and services.”
Nutcha Sookchayee, Department of Intellectual Property (DIP), Ministry of Commerce, Thailand
Quick fact: Thailand joined the Madrid System in 2017.
“Seventeen of us perform substantive examination of international trademark registrations here. We examine on both absolute grounds (distinctiveness; prohibition of a mark, etc.) and relative grounds (similar marks).
Each of us processes at least three registrations per working day; around 55 per month.”
Each of us processes at least three registrations per working day; around 55 per month.”
Common issues...
“Most of the provisional refusals we issue are directly in relation to the terms used to classify goods and services.
The lists of goods and services included in international trademark registrations can be extremely broad; some international trademark registrations can include up to 5,000 terms.
This is an obstacle for us; sometimes there are terms that we don’t accept (here in Thailand, we do not accept all terms in the Nice Classification) or terms that are too vague. We also don’t accept Nice Classifcation class headings.
For many issues, there are work arounds, for example we can ask the holder to use more specific terms or to split one term into two separate terms,” says Nutcha.
“If you do get a provisional refusal from us, you have 90 days to respond. You must send that response to us through a local representative in Thailand, and in Thai language.”
The lists of goods and services included in international trademark registrations can be extremely broad; some international trademark registrations can include up to 5,000 terms.
This is an obstacle for us; sometimes there are terms that we don’t accept (here in Thailand, we do not accept all terms in the Nice Classification) or terms that are too vague. We also don’t accept Nice Classifcation class headings.
For many issues, there are work arounds, for example we can ask the holder to use more specific terms or to split one term into two separate terms,” says Nutcha.
“If you do get a provisional refusal from us, you have 90 days to respond. You must send that response to us through a local representative in Thailand, and in Thai language.”
Tips...
“You can use our own goods and services database (we don’t yet contribute to WIPO’s Goods and Services Manager under eMadrid) to find out about terms we will accept here in Thailand. You can for example search for a term in English and find all specific contexts in which you can use that term, shown alongside the Thai equivalent.”
“I would also strongly recommend that you search for similar marks in Thailand using WIPO’s Global Brands Database before you seek protection here. You can easily search by image and country name for example!”
“I would also strongly recommend that you search for similar marks in Thailand using WIPO’s Global Brands Database before you seek protection here. You can easily search by image and country name for example!”
Finally, moving on to Trinidad and Tobago – Meet Anelia Baijoo
(Photo: Anelia Baijoo)
“Use our online trademark search – or WIPO’s Global Brand Database – to find out about existing trademarks in Trinidad and Tobago. These tools are accessible to everyone; using them before you seek protection of your trademark in target markets can really help streamline the process.”
– Anelia Baijoo, Intellectual Property Office (TTIPO), Trinidad and Tobago
Quick fact: Trinidad and Tobago was the first country in the Caribbean to sign up to Madrid e-Filing, the online filing service for Madrid System users powered by WIPO.
“Trinidad and Tobago – as a hub for trade in the Caribbean and the wider Latin American Region - is increasingly designated in international trademark registrations. All of our examiners are trained to process both national and international trademark registrations from beginning to end, or as we like to call it from ‘cradle to grave’. We are very 'pro-registration', giving customers the best chance of securing protection of their brands here in Trinidad and Tobago.”
"Typical issues that we identify here at the TTIPO include:
"Typical issues that we identify here at the TTIPO include:
Classification of goods and services. Although we are compliant with the Nice Classification system here in Trinidad and Tobago, some classification terms used in international trademark registrations are too broad,” explains Anelia. “To overcome this, we strongly recommend applicants use WIPO’s Goods and Services Manager under eMadrid.
Existing prior rights for a trademark already registered in Trinidad and Tobago.
Use of specific symbols. We do not accept specific symbols – for instance the registered trademark symbol – in the representation of your international trademark.”
Use of specific symbols. We do not accept specific symbols – for instance the registered trademark symbol – in the representation of your international trademark.”
Tips from Anelia…
“Use our online trademark search to find out about existing trademarks in Trinidad and Tobago. You can also find our collection in WIPO’s Global Brand Database! These tools are accessible to everyone; using them before you seek protection of your trademark in target markets can really help streamline the process.”
Make research a priority
Clearly international trademark registration requirements vary from one IP Office to the next; all four trademark specialists have talked about the importance of familiarizing yourself with local requirements early on in the game.
But, finding out about different procedures and requirements in the IP Offices of all Madrid System Members presents a daunting challenge!
But, finding out about different procedures and requirements in the IP Offices of all Madrid System Members presents a daunting challenge!
Don’t worry; we’ve got this covered
Use our searchable Member Profiles available under eMadrid (your digital gateway to international trademark protection) to learn about the laws and procedures of all our Madrid System Members, and easily identify specific requirements that may exist in your target markets.
More WIPO tools to help you...
Goods and Services Manager
Select from thousands of terms to build and check the list of goods and services that your international trademark registration will cover.
Goods and Services Explorer
Can’t find a specific term in the Goods and Services Manager? Search for the term in the Goods and Services Explorer and find out how many times over the last ten years, we (WIPO) and major IP Offices might have accepted it – in different languages.
You can access both these tools, and more, under eMadrid.