A trademark application can be filed nationally, union-wide or even as an international trademark. The costs and the scope of protection of the respective trademark then vary accordingly.
But when does it make sense to apply for an international trademark?
In order to apply for an international trademark, you first need a so-called “basic trademark”. This can be a German or European trademark application, for example. The application for registration of an international trademark can then be filed at the trademark office where the basic trademark is filed or registered, the so-called origin authority. The individual countries in which the international trademark is to be protected must be named. The more countries are named, the higher the fees.
The originating authority then forwards this application to the World Intellectual Property Organization (WIPO). WIPO, in turn, forwards the requests for extension of protection to the respective national trademark offices of the designated countries. The trademark offices of the designated countries then have 12 or 18 months to deny the extension of protection. If this period has elapsed without the respective trademark offices having refused protection, it is assumed that protection has been extended.
But does it now make sense to apply for an international trademark or should it be better to file several national applications?
This can only be answered on the basis of the specific individual case, however, some advantages and disadvantages of the international trademark can be summarized as follows:
The biggest advantage of the international trademark application is probably the bundling of the application into only one single application. There is no need to file several applications with different national trademark offices.
Another important aspect is the cost of the trademark application. If trademark protection is planned in more than three countries, the costs for an international trademark application are usually cheaper than for several national trademark applications.
On the other hand, it should not be neglected that the existence of the international trademark is dependent on the existence of the basic trademark for the first five years. This means that the international trademark as a whole can no longer endure if the underlying basic trademark has been successfully challenged.
Therefore, when choosing a basic trademark, it should be noted that a national trademark is usually preferable to a european trademark, since the national application is less expensive and offers less attack surface compared to the European trademark. This is because in the case of an EU trademark, relative and absolute grounds for refusal can be asserted by 27 member states/trademark offices and render the EU trademark ineffective. This in turn affects the validity of the international trademark application during the first five years, so that it cannot continue to exist.