Since the service industry is constantly changing and developing, the need to offer and market the goods and services of the leading companies in the international area is increasing. In light of these developments, the recognition and protection of intellectual and industrial property rights in the international area become even more important with the disappearance of the national borders.
Trademark registration, which is a major factor for the important and leading companies operate abroad and in Turkey to provide their goods and services in international markets, is of great significance for marketing and protecting this services. For this reason, companies that desire to protect their trademarks abroad shall also register these trademarks in the respective countries. As it is known, the rights arising from trademark registration only provide protection in the country where the registration is made. If the trademark is to be protected abroad, it shall also be registered in the countries where protection is requested. It is possible to obtain protection by making separate applications to the offices of the countries where registration is requested, as well as in several countries with a single application by using certain registration systems.
Today, there are two fundamental application systems in terms of international trademark registration. The first of these is the “Community Trademark (CTM) System” which is one of the regional systems, and the other is the “Madrid System”, which is among the international systems and frequently preferred. In addition to these, regional protection for trademark registration can be provided through the Benelux Trademark Registration System and the African Regional Intellectual Property Organization system as well.
In this article, explanations and information are given within the scope of international trademark registration. The subject is discussed in detail under the following headings below and kindly presented to your information.
II. TRADEMARK REGISTRATION WITHIN THE SCOPE OF COMMUNITY TRADEMARK (CTM) SYSTEM
Through the Community Trademark System, which is one of the regional systems, trademark owners can request protection within the framework of a single law (EU Law) in the European Union with a single application and document1. This system, which is called CTM shortly, provides protection within the member states of the European Union.
Registration procedures in the Community Trademark System, which provide protection with a single application within the member states of the European Union, are conducted in European Union Intellectual Property Office (EUIPO) in Alicante, Spain.
The main advantages of the Community Trademark are stated as follows:
- Registration of the trademark within the all member states of the European Union with a single application,
- More economic costs compared to the separate registration applications in each country.
Compared to the Madrid Protocol described under the section “III” below, at least one application requirement in the country of origin is not required. Thus, the dependence on the trademark in the office of origin has been disappeared. All countries shall be selected at one time. There is no option for the trademark to be registered only in the requested countries. The transactions of all countries are interdependent. Therefore, in the case of rejection of the trademark, the application in the other countries would be regarded as rejected and this is a disadvantage of the system.
III. TRADEMARK REGISTRATION WITHIN THE SCOPE OF MADRID SYSTEM
Madrid System, which constitutes the international trademark registration, is essentially formed by two treaties complementing each other. The first is the Madrid Agreement Concerning the International Registration of Marks (“Madrid Agreement“) dated 1891, and the other one is the Protocol Relating to the Madrid Agreement (“Madrid Protocol“), which was adopted in 1989, came into force on 1 December 1995 and began to apply on 1 April 1996. Turkey became a party to the Protocol on 1 January 1999.
States, which are parties to the Madrid Protocol, are considered as “Contracting Parties” as a whole. The Madrid System cannot be used by natural or legal persons who do not have the necessary connection with the members of the Protocol in terms of establishment, residence or nationality. Furthermore, it is not possible to provide trademark protection through this system in a country which is not a party to the Madrid Protocol.
Madrid Agreement Concerning the International Registration of Marks and the Regulation on the Implementation of the Protocol Relating to Madrid Agreement (“Regulation“) published in the Official Gazette No. 23637 and dated 12 March 1999, which are currently in force in Turkish Law, set out the procedures and principles to be followed in the place, time and application documents regarding the application for the international trademark registration and other related procedures.
Within the scope of the Madrid Protocol, Turkish citizens, the ones residing in Turkey or carrying out commercial or industrial activities in Turkey can apply for international trademark in countries party to the Madrid Protocol through the Turkish Patent and Trademark Office (“TURKISHPATENT“). An international application can be made by natural or legal persons who have a real and effective industrial or commercial establishment in a State party to the Madrid Protocol or who are domiciled in or nationals of in that State.
The scope of the Madrid System is quite extensive and allows applicants to make a quick and effective international application with a more appropriate budget. By preparing a single form, applicants can select from 100 (one hundred) countries2 that are party to the Madrid Protocol, and they are able to obtain international trademark registration in selected countries with the application in a single language without being subject to different legislations. Besides this, any changes (e.g. address, type, title, change of ownership and other act of disposals such as assignment/withdrawal of a proxy) to be made to the trademark are registered in the international register with a single transaction. In accordance with the Madrid Protocol, international applications may be filed in English or French. Applications filed in a language other than these languages are returned to the sender without further examination. However, the Office of Origin may require the applications to be filed in one of these languages. TURKISHPATENT has limited the application language by requiring the international application to be made only in English.
In order to obtain the international trademark registration, it is compulsory to have a registered trademark or a pending application for registration in the relevant office of origin. Application for the international trademark is made to the World Intellectual Property Organization (“WIPO“) established in Geneva, Switzerland, through the office of origin based on the registered trademark or trademark application. It should be stated that, an international application can be made by natural or legal persons who have a real and effective industrial or commercial establishment in a State party to the Madrid Protocol or who are domiciled in or nationals of in that State. Direct application to the WIPO made by the applicant is considered as irregular and returned to the applicant.
It is mandatory to notify WIPO through the office of origin of the international trademark applications made on the basis of Madrid Protocol. International applications through TURKISHPATENT in accordance with the Madrid Protocol can be made via the online documentation system at https://online.turkpatent.gov.tr/CES/or by submitting the following documents to TURKISHPATENT:
- √ Request form
- √ Official form provided by WIPO duly completed in English in accordance with the relevant request
- √ Information on the payment of the fee for notifying the requests of the office of origin to WIPO
The application carried out in the manner stated above, shall be signed by the office of origin and sent to WIPO within 2 (two) months at the latest, if it is found appropriate. The date on which the office of origin receives the application is accepted as the international application date. WIPO, once again by checking whether the Madrid Protocol requirements such as the specification of the goods and services of the application, the proper and correct classification according to the NIS system, payment of the fees correctly, have been complied with, and when it finds out that there is no non-compliance,, it registers the trademark in the international register and publishes in the WIPO Gazette. WIPO shall then notify the contracting parties to which the trademark protection is requested. In this manner, the registration of an internationally registered trademark is protected for 10 (ten) years. The renewal of international registration is possible for a period of 10 (ten) years upon request and payment of the renewal fee.
It should be emphasized that the internationally registered trademark remains dependent on the application in the office of origin or the original registration, for a period of 5 (five) years from the date of its registration. In other words, if the original registration is withdrawn, refused, or if the registration made with reference to this application or the original registration is abandoned by the office of origin for reasons such as waive, cancellation or nullity, international registration and its protection will lose their effect. Madrid Protocol hereby introduces a very important regulation and rules that the person whose trademark right terminates in the office of origin may change international registration to national registration within 3 (three) months from the date on which international registration loses its effect by applying for trademark registration to the country where the trademark is protected in accordance with the international registration without any loss of rights and thus ensure the protection of the trademark in the country.
As explained briefly above, the Madrid Protocol and the Madrid System are currently the most commonly used international trademark registration system in the world with its benefits and the high number of advantages. Another important advantage of the Madrid System is the possibility of expanding the registration to other contracting parties when desired. In addition, in case of the rejection of the trademark application in one of the applied countries, this rejction does not affect the outcome of the applications in other contracting parties.
Today, within the scope of the development of the technology at a very rapid pace, the globalization of commercial activities with the effects of internet sales and online shopping, and of the companies exhibiting their activities in the international market, trademark registration in international area and multiple countries has become quite important. The “Community Trademark (CTM) System” and “Madrid System” are the most preferred in the international trademark registration. Through these systems, trademark owners who want to protect their trademarks in more than one country have been freed the obligation to register separately in each country in order to obtain this protection. Trademark registration in each country separately comes with many problems such as more than one application fee payment, document preparation, using the local language, waiting for registration and announcement duration and processes in each country.
The reason why these two systems are more preferred than others is that the trademarks are internationally registered in more than one country using a single application and a single language. While both systems have their own advantages and disadvantages, they both play a very effective role in facilitating international trademark registration. In this regard, the Madrid System created by WIPO and the CTM-Community Trademark System established under the European Union are the most considerable steps taken for the international trademark registration.
1. KARAHAN, Sami; SULUK, Cahit; SARAÇ, Tahir; NAL, Temel: Fikri Mülkiyet Hukuku’nun Esasları, 3.Basım, Ankara 2013, s.182-183.
2. The number of the member states is mentioned as of March 2018.
This article was published in Mondaq