When you establish a business, your brand becomes one of your most valuable assets. Your business name, logo, slogan, or even the unique way your product looks can help customers identify and be confident in your business. To provide legal protection to these parts of your brand, it is very important to register a trademark.
National and international trademark registration mostly focus on different aspects of brand identity protection. National registration gives exclusive rights only in the country of the registration, while international registration, such as by means of the Madrid Protocol, allows protection in a number of countries by a single application at a central point. An important decision lies before you when choosing between the two options: what is the scope of your business, your budget and whether or not you plan on expansion. That is, a national registration of the trademark will be perfect for a business that looks to operate mainly locally, whereas international registration will be a good avenue for companies with global ambitions.
The blog looks into both sides of the story in order to help you pick your winning option.
What is National Trademark Registration?
National trademark registration involves submitting an application directly to a country’s intellectual property office to hold territorial exclusivity. This is the act of granting the trademark owner legal protection of their mark for those products or services that are listed without their consent being authenticated within the country’s borders. Each national office functions autonomously, having its own independent policies, pricing models, and accreditation standards.
Typically, a country’s registration system gives the registrant the right to bar other parties from using resembling or confusingly similar marks for related goods or services. The time it takes to process a case varies substantially in different countries and can extend from a few months to over a year, depending on the availability of the office and its examination methods. Through their detailed inspections, national trademark offices look to confirm that the proposed marks meet the distinctiveness requirements and that the marks do not conflict with currently registered ones.
Operation of International Trademark Registration through the Madrid System
Under the Madrid System managed by the World Intellectual Property Organisation (WIPO), trademark proprietors can apply for their marks in various nations with one international application only. The system works on the premise of a national or regional registration, called the basic mark; thus, one can extend the protection to any of the 130+ member countries through a single process. The effectiveness of this feature significantly reduces administrative load and initial filing expenses.
The centralised filing process is initiated by submitting an international application through the home country’s trademark office, which later sends it to WIPO for a formal check. WIPO carries out a formal review and then passes the application to the national office in each designated country for a full scrutiny based on the local laws. This smooth approach retains the sovereignty of national offices while presenting applicants with a combined management system.
International registrations link to national offices by means of a designation system, in which each designated country inspects the mark according to its own criteria. Countries get 12-18 months to record any denials, following which the mark is deemed protected in that territory. The Madrid System also streamlines subsequent supervision through centralised renewal processes and the ability to include new countries to available registrations through future designations.
Differences Between National and International Registration
There are several significant distinctions between national and international trademark registration.
- National registration provides trademark security within a single country.
- It necessitates filing directly with the local trademark office of that country.
- International registration, usually through the Madrid System, provides protection in several countries with a single application.
- The international application is filed with the World Intellectual Property Organisation (WIPO) after completing an initial national registration.
Registration Timeline
- Differs by country for national filings.
- Frequently faster for multiple countries through international registration.
Cost
- National registration is usually less expensive for businesses operating in a single country.
- Getting international registration can be pricier at first, but it works better for long-term protection across multiple countries.
Management and Renewal
- You need to manage national registrations separately for each country.
- With international registration, you can handle updates and renewals all in one place through WIPO.
Application Procedure and Examination
First of all, you need to apply at your local Intellectual Property Office (IPO) before acquiring a national trademark. The application is primarily a brief of the trademark, the applicant, and the goods or services that the trademark will represent. An IPO examiner is the first to review the application for formal errors, and then he/she make a decision about whether it is a viable one or not after the application is submitted for registration. The strategic priorities assessed are the uniqueness of the proposed mark, its ability to be confused with existing trademarks, and its adherence to statutory limitations. After satisfying these requirements, the application is published in the trademark journal, thus allowing for a period of third-party opposition. If no opposition arises or if any opposition is effectively countered, the mark is registered.
On the contrary, the international registration process through the Madrid System launches with a basic application or registration at the IPO of the applicant’s home country, also termed the Office of Origin. After certifying that the application satisfies all formal requirements, the Office of Origin moves it to the World Intellectual Property Organisation (WIPO). Later, the International Bureau (IB) of the World Intellectual Property Organisation (WIPO) conducts a formal inspection for any administrative issues, notes the mark in the International Register, issues a certificate, and publishes the registration in the WIPO Gazette of International Marks.
Subsequently, WIPO alerts the designated contracting parties, and each nation’s IPO conducts its comprehensive examination, adhering to its national law within the suggested time limits (12 or 18 months). This scrutiny might cause a refusal if the application is not in line with the respective country’s specific requirements. However, in the event no rejection is issued during the indicative time period, the application will be automatically registered in that country.
It’s critical to note that each designated country in the international registration applies its regional laws and practices, as they would in a direct national application. Thus, the Madrid System provides a centralised and simplified process, but the success of the application still depends on compliance with each country’s specific laws and requirements.
Cost Comparison
Tariff frameworks for trademark filings vary widely between national and international filing pathways. A domestic application will be subject to personal government charges in each country, which can differ from quite low to quite high depending on the jurisdiction. Other costs like local lawyers’ fees, renewal fees and translation costs should be taken care of separately for each registration.
International filing through the Madrid System is a viable way of filing internationally; it roughly goes to three or more countries where protection is sought. The system relies on a consolidated pricing framework where the applicant pays a basic fee to WIPO and separate fees to each designated country. More often than not, it will be cheaper to file a single international application compared to the costs of filing separate national applications from the outset, especially if one takes into consideration the greatly reduced need for multiple local attorneys and the efficiency of the administration.
| Cost Factor | National Filing | International Filing |
| Initial fees | Separate fee per country | Elementary fee + designation fees |
| Translation needs | Multiple translations required | Frequently, a single translation suffices |
| Attorney costs | Local counsel in each country | Home country counsel mainly |
| Renewal management | Individual country deadlines | Centralized renewal mechanism |
Long-term service costs for the upkeep of each approach will further differ. National filings entail the need for monitoring of several renewal periods and the payment of charges directly to each respective country’s office. International registrations simplify this by means of centralised renewal every ten years; nevertheless, individual country fees still apply. It is the number of countries engaged that will determine the cost of each alternative at the end of the day, and the specific territories picked.
Both national and international registrations usually stay in force for ten years and can be renewed indefinitely. However, international filings necessitate retention of the underlying registration, i.e., the initial national application or registration, for 5 years. If the base registration is terminated within those five years, the international registration is also invalidated, a scenario often called as the ‘central offence.’
In a nutshell, you should closely look at the intricate details of price and time of the national and international trademark registration and correlate these aspects with your geographical requirements and business strategy.
Conclusion
The fundamental distinction between national and international trademark registration rests in their management and reach. A national registration gives a very first-hand protection only within the boundaries of a single country, with the power of local control over the whole procedure, but an international registration is a kind of simplified single-package-protection in several different countries at the same time, which can be done through a single centralised office. None of these ways is always the most advantageous one; it simply depends on your business’s particular needs and objectives.
Strategic planning proves vital when creating trademark protection strategies. When evaluating the options, take into account your current market position, available resources and expansion period. The ease of centralised systems should also be considered by businesses against the long-term administrative costs of using multiple registrations.
To make a wise decision during trademark registration, you need to be aware of both short-term and long-term implications of the strategy you would prefer. Regardless of whether you have registered your trademark nationally to protect it in a narrower scope or whether you have registered internationally to give your trademark a much broader scope, the point is to align your trademark strategy with your business goals. To companies that require professional help with constructing and developing effective trademark protection programmes, we would recommend that you get in touch with us to propose a tailored system to suit your particular requirements.
