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IR or national filing?

I am wondering which one is the preferred way to register a trademark overseas?

I see both, but what are the advantages and disadvantages?


one thing that is attractive to me about IR is that the applicant will be assured to know the results of his trademark application within 12-18months.

In practice, how often and in what countries does the applicant benefit from this policy? (Need some insights from trademark colleges maybe)


In very short words the most important cases of IR trademarks (under the Madrid System):

An IR trademark application makes a lot of sense if the respective mark is already registered in some form in all those countries where the IR is intended to be filed. This may sound weird but it is true. IR trademarks work well for filing a unified modernized version of an existing mark in a multitude of countries.

IR trademarks never work properly and they are more expensive than regular national or regional trademarks whenever the trademark is close to being non-distinctive.

IR trademarks never work properly for first filings in the following countries: USA, China, Japan, and Spain. In the case of USA, China, and Japan, go for a national filing. In the case of Spain, go for a national filing or for a EU trademark application.

Please note that some of the economically more important countries of the world are not members of the Madrid System: Taiwan, Malaysia, Brazil, and Chile (as of 04/2019).


I have today received the following question:

"My client has a base trademark application in Singapore (a single trademark filed in 2 classes), and would like to file trademark applications in the following countries/regions, claiming priority to the Singapore trademark application:

  1. Australia
  2. Brazil
  3. Canada
  4. China
  5. European Union
  6. Japan
  7. Norway
  8. OAPI
  9. South Africa
  10. South Korea
  11. Switzerland
  12. Taiwan
  13. United Kingdom (UK)
  14. United States of America (US)

How should my client go about doing this?"

This was my answer:

For such cases, there are 2 ways to obtain trademark protection:

  • File national applications in each country/region; or
  • File an international application designating countries of interest that are Madrid Protocol members (Note: Taiwan and South Africa are not members of the Madrid Protocol. National applications must be filed for these countries.)

Option 2 is more cost-effective and is usually the preferred option for most clients that intend to file the trademark in a large number of countries.

We set out ballpark estimates of costs under both options for comparison:

Option 1 – National/Regional Application Route

National Applications in Each Country/Region (1 Trademark in 2 Classes)

Australia: SGD5,162 + GST

Brazil: SGD4,760 + GST

Canada: SGD4,000 + GST (rough estimate)

China: SGD3,476 + GST

EU: SGD3,088 + GST

Japan: SGD5,700 + GST

Norway: SGD3,355 + GST

OAPI: SGD4,700 + GST

South Africa: SGD5,482 + GST

South Korea: SGD4,640 + GST

Switzerland: SGD3,240 + GST

Taiwan: SGD4,521 + GST

United Kingdom: SGD4,152 + GST

US: SGD3,740 + GST

Grand total: ~SGD60,016 + GST & Disbursements

 

Option 2 – International Application Route

International Application under Madrid System (Designating 11 countries/regions, including Australia, Brazil, Canada, China, EU, Japan, Norway, OAPI, South Korea, UK, US (1 Trademark in 2 Classes)

Professional Fee: SGD3,975

Official Fee (IPOS): SGD250

Official Fee (WIPO): CHF5,726 + CHF270 (Brazil second part fee) + CHF538 (Japan second part fee) = CHF6,534 = ~SGD9736

Disbursements: SGD80

Total: SGD14,041 + GST

National Applications (1 Trademark in 2 Classes) - For Non-Madrid Countries (South Africa and Taiwan)

South Africa: SGD5,482 + GST

Taiwan: SGD4,521 + GST

Grand total: ~SGD24,044 + GST & Disbursements

As you can see, option 1 is more than twice the price of option 2.

Attached here is a concise write-up of the Madrid Protocol system for your better understanding of international trademark applications, and their associated advantages and disadvantages.

One important risk we highlight, is the risk of “central attack” for international applications. That is, if your base Singapore application for whatever reason is denied or cancelled within 5 years from the international registration date, this will also affect your international registration and rights in all designated countries. The safer route would therefore be to file national applications instead in each country of interest. But this comes with a higher price tag as mentioned.

If your client would like to proceed with the IR route, then searches are recommended to minimize the risk of “central attack” problems and examination costs.

Searches: There are various types of pre-filing searches available, such as searches for: (1) Identical marks in identical class; (2) Identical/similar marks in identical class; (3) Identical/similar marks in identical/similar classes. These searches are usually done in each country of interest to gauge the chances of successful registration of a trademark. They are however very costly.

What we usually do for such cases is to simply perform screening searches on the WIPO Global Brand Database and the TMView database for identical marks, and this works 95% of the time. There will never be a situation where you have the full 100% freedom to operate – the result of every similar search is a certain danger that we infringe earlier marks. If the screening searches reflect any earlier marks that may potentially cause issues for us, then we consider doing deeper searches in those countries the earlier marks are registered in. This would result in a more cost-efficient way of conducting searches.

Alternatively, your client may opt for the safer route of national/regional filings (note: >2x the price compared to IR route, and we let every associate in each country do the search before filing. They often do this for free, as well as checking of the list of goods and services, and other potential sources of problems.

One more thing, and that is important: I have never seen any single one IR trademark application that did not get objected in various countries, such as US, CN, etc. This is because there is no unified basis for the list of goods and services.  In the case of an objection, we will have to engage a  local representative that country and the costs for doing so are higher than getting this local representative to file a national trademark.

In other words: an IR trademark is good for example when there are already established trademark rights in a number countries and one wants to file a modernized form of the trademark. When filing an IR trademark, one should do extra-diligent searches for earlier marks, especially in the country where the base trademark is located. A central attack must be avoided to be successful at all costs.

As compared with national trademark applications, an IR application saves money at the initial stage but often creates costly problems along the way. If one can afford the extra costs, national trademark applications are the preferred way, over IR applications.

 


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