INTERNATIONAL REGISTRATION OF TRADEMARKS
– MADRID SYSTEM FOR THE INTERNATIONAL REGISTRATION OF MARKS:
The system of international registration of marks is governed by two treaties: Madrid Agreement and Protocol Relating to the Madrid Agreement. This system provides the possibility to protect the trademark in more than 80 member states of the Madrid Union by filing one application at the national or regional trademark office of the basic trademark application or registration. Madrid Union is comprised of States party to the Madrid Agreement and the Protocol Relating to the Madrid Agreement and currently has 89 Member States, including Croatia.
Upon the application for international registration, a trademark can be protected in all or just in certain Member States of the Madrid Union. Therefore it is necessary to list in the application the Member States of the MU in which protection is requested. Afterwards, protection can be expanded to the Member States of the Mu not listed in the application.
Before the application for international registration, a trademark must be applied (under Protocol) or registered (under Agreement) for the same products and services in the country of origin (one of the Member States of the Madrid Union). After the international registration of a trademark, office of the state in which the mark is first applied/registered becomes the Office of origin. The international application must be filed through the Office of origin (in Croatia: State Intellectual Property Office).
For a period of five years from the date of the international registration, the protection resulting from the international registration remains dependent on the mark registered or whose registration has been applied for with the Office of origin (basic application, registration resulting therefrom, or basic registration). At the end of the five-year dependency period, the international registration becomes independent of the basic mark.
Upon the application for international registration of a trademark, the office of origin verifies the mark that is subject of an application for international registration and forwards an application for international registration to the International Bureau of OMPI / WIPO (World Intellectual Property Organization, Geneva, Switzerland).
– THE PERIOD OF PROTECTION
The period of protection of internationally registered trademark is 10 years from the date of registration, but can be extended an unlimited number of times for successive periods of 10 years. the request for an extension is then submitted to the international office and appropriate fee is paid.
Upon the application for international registration of trademarks certain fees are to be paid:
– basic fee in the amount of 653 CHF (for colorless mark) or 903 CHF (for a color mark), that covers up to three classes of products and services
– additional fees in the amount of 100 CHF for each additional class of products and services over three classes
– supplementary fees in the amount of 100 CHF for every country in which protection of a trademark is requested
– individual fees paid when protection is requested in certain members of the Union, Parties only to the Protocol.
For example, if one would want to internationally register a color trade mark (basic trademark registration in Croatia) for up to three classes of products and services in all Member states of the Madrid Union, the fee would amount cca 24.000,00 CHF (cca 150.000,00 kn).
– COMMUNITY TRADE MARK
Besides trademark protection in the national offices of the EU Member States, there is possibility to protect a Community Trade Mark. A Community Trade Mark (CTM) is valid in all Member States of the European Union. Registration procedure is carried out by the Office for Harmonization in the Internal Market (OHIM) with headquarters in Alicante, Spain. A CTM is valid in the European Union as a whole, and it is not possible to limit protection geographically only to certain Member States.
From the moment of accession of the Republic of Croatia to the full membership of the European Union, the legal effects of all registered CTM and CTM applications will be automatically extended to the territory of the Republic of Croatia.