PROCEDURE FOR REGISTRATION OF INTERNATIONAL TRADEMARK
- Initial (basic) application or trademark registration
In order the applicants to be able to initiate an international registration procedure, first of all they need to have an earlier national or European trademark filed or already registered at the relevant national or European office. For the Bulgarian applicants, such are the Bulgarian Patent Office or the European Trademark and Design Office - EUIPO. This initial application or registration is known as the basic mark.
- Filing an application for international trademark registration
Once the applicants have a filed or registered national or European trademark, they can apply for international registration for other countries of their choice. This procedure is also initiated through the National Patent Office, which is the mandatory intermediary for international trade mark applications. It conducts ex officio a formal examination and forwards the application to the office of the World Intellectual Property Organization (WIPO).
It is necessary the application for international trade mark to contain all the mandatory attributes, including a representation (image) of the mark, which is identical to that in the initial registration or application, a list of goods and/or services for which international protection is claimed in accordance with the Nice Classification, as well as the Member States (members of the Madrid Agreement) have to be assigned . The due fees are formed on the basis of the type of trademark, the number of desired classes of goods and/or services, and the designated countries where trademark protection is sought. The National Patent Office also charges an intermediary fee for the provided service.
- Formal expertise in WIPO of the filed international mark
The WIPO International Bureau checks the application for an international trade mark, whether it meets all the mandatory requirements set out in the Madrid Systen for Registration, as well as those related to the admissibility of the terminology used for the listed goods and/or services according to the Nice Classification. In case of found irregularities, the applicant is notified of the period in which he has to eliminate them, and as well as about the payment of the due fees. In case of non-fulfillment of these requirements within the specified term, the Office issues a notice for termination of the proceedings on the application for international registration of the trademark and the application is considered withdrawn.
- Registration and publication of an international trademark
Once approved for compliance with the requirements, the application for an international trademark is entered in the International Trademark Register at WIPO and published in the Bulletin of the World Intellectual Property Organization (WIPO). After that, the International Bureau of WIPO issues an international registration number and an official certificate for an international registration. WIPO officially sends the application to the patent offices of the designated countries in which the applicant seeks protection of his mark. The date of the international registration coincides with the date of the receipt of the application at the Bulgarian Patent Office. Despite this initial registration and issuance of an international trademark protection document, the application is yet subject to examination and approval by each of the patent offices of those countries designated in the application for international registration under the Madrid Agreement.
- Substantial expertise from National Offices or Industrial Property Officess
For each submitted application for international trademark registration, the WIPO office does not carry out substantive expertise or examination for the existence of possible conflicts with rights over earlier (local, international or European) trademarks. Each national authority, in the designated country in which the protection of the mark is claimed, is obliged to rule within the specified period (12 or 18 months), in accordance with the applicable local law legislation whether the mark is registrable (admitted for registration) in accordance with the national regulations. The registration of an international trademark may then be partially or completely refused in a particular country. However, this does not affect the other countries designated in the registration.
In the absence of any objections or subsequently overcome by the applicant, the trade mark is deemed to have been approved in the said country. It is important to keep in mind that at this stage of consideration and approval of the mark, additional attorney's fees may incurre, as any opposition to a national patent office should be dealt in accordance with the relevant national law, for which it is necessary to authorize a local patent attorney and, if necessary, pay additional state fees for appeals and translations.
- Renewal of the term of registration of an international trademark (IR)
The International trademark registration is valid for 10 years. It can be renewed indefinitely for subsequent periods of 10 years, with timely payment of due fees. The list of countries and classes of goods and/or services initially indicated in the registration may be reduced if necessary.
All these deadlines are calculated from the date of filing of the application for international registration of the trademark and are approximate.