The step towards expansion

“Together with a girlfriend of mine I developed naturally produced cosmetics that are safe for people, animals and the environment. We started a small business and our products have become enormously popular. Our company now has outlets in a number of countries and the trademark has become a household name."

How do I register my trademark outside the Benelux territory?

International trademark

It is possible to gain protection, via a single application, in countries that have are a member of the Madrid Agreement or the Madrid Protocol. These two international agreements allow you to obtain protection in a large number of countries reasonably cheaply and easily. An International trademark should in reality be viewed as a package of national trademarks, obtained all at once and at a considerably lower price than if you were to file applications at each office individually. Over 80 countries within and outside Europe (including large economies such as the US, China and Japan) have now joined the agreements. You can opt for protection in all participating countries or for a selection of them, and also for the entire EU, in a single application (see Community trademark via an International application). If within six months of filing one application you file an International application, you can claim the priority of your initial application for the International one.

An International trademark is registered by the World Intellectual Property Organization (WIPO) in Geneva, Switzerland. More information is available at www.wipo.int. However, an International application must always be based on a basic application (e.g. a Benelux trademark or a Community trademark), and is therefore always handled by the office of origin. If a Benelux trademark is used as the basic application, the office of origin will then be the BOIP. We will verify whether your International application is in order, and whether it is identical to your Benelux basic registration. We will then forward your International application on to the WIPO. Once you have completed the necessary forms, you can send them to us. More information on filing an International application is available here. The fees payable, partly determined by the number of countries for which you would like to obtain protection, can be calculated here.

A disadvantage of International registration is that it is dependent on the basic registration for the first five years. However, if the basic registration is declared void, in most cases the International registration can be converted into national applications for the relevant countries.

On the other hand, there is a significant advantage. If your trademark meets with objections (such as refusal or opposition) in a certain country, only the protection in that country will be affected. This is a major advantage of an International registration compared with a Community trademark, which is subject to the 'all or nothing' principle and which therefore carries a significant risk. This risk can, however, be reduced by having a Community trademark ‘built into’ an International registration. For more information on this option, see Community trademark via an International application.

Another advantage of an International registration is the flexibility it offers. Should you start operating in new markets at a later stage, you can extend your protection to the relevant countries via a territorial extension, which will continue to include the entirety of your international protection in a single registration. This makes the administration of your trademark protection not only simpler, but also cheaper in the long term since you only need to renew one registration.

Conclusion

The biggest advantage of an International registration is that you can obtain protection in a large number of EU and non-EU countries relatively cheaply and easily. You will also be dealing with the organisation that you already know, the BOIP. Our Information Centre will be happy to provide you with further information!