INTERNATIONAL TRADEMARK PROTECTION
A trademark is registered for the territory in which the respective trademark office is based. Trademarks are territorial and must be filed in each country where protection is sought. Protection of a trademark can be granted on a national basis, but can also be subject to the territorial extension to the European Union. This grant of protection is handled by the EUIPO = European Union Intellectual Property Office. Where opposition is entered against a registration within the opposition period, and if the refusal leads to a decision to refuse protection of the mark in one of the member states, the application will be rejected entirely. The applicant would have the option to claim priority of previous applications of a union trademark by applying again for registration in every other country and pay the official fees. Apart from the possibility to apply for a union trademark in order to achieve protection for 28 territories, it is also possible to achieve protection of a union mark by multilateral agreements. The protection of Industrial Property is determined by the Paris Convention. Claiming priority of a trademark is laid down in The Paris Convention for the Protection of Industrial Property. It is stated that any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed. In addition to the Paris Convention there is the Madrid Agreement, concluded in 1891. The system makes it possible to protect a mark in a large number of countries by obtaining an international registration that has effect in each of the designated contracting parties. In addition to the Madrid Agreement there is the Protocol relating to that Agreement, concluded in 1989. The Protocol relating to the Madrid Agreement concerning the international registration of marks also regulates the time limit for ex officio examinations which has been extended to 18 months. This was because in some countries prior rights are checked by the national office if they are jeopardized by the younger mark. Based on the above Agreement and the Protocol to same it is now possible through the Office with which the basic application was filed to apply for a territorial extension of the international applications in up to 86 countries of the world.
Apart from the above trademark organizations there is the OAPI (African Intellectual Property Organization) and the ARIPO (African Regional Intellectual Property Organization). OAPI is the main organization that ensures protection of intellectual property rights in most African French speaking countries, whereas ARIPO is the main organization that ensures protection of intellectual property rights in most African English speaking countries. It is possible for an applicant to apply for a trademark in a large number of countries by filing a single international application. The system also simplifies the subsequent management of the mark. There is no need of appointing any national colleagues for assistance.
In all other states which are not part of the Madrid Agreement, Paris Convention, OAPI or ARIPO, the trademark application has to be made by a local representative. This applies to all Latin American countries, except for Colombia, Mexico and Canada which belongs to North America.
The Convention provides for the right of priority in the case of trademarks. This right means that, on the basis of a regular first application filed in one of the Contracting States, the applicant may, within a certain period of time (6 months for marks) apply for protection in any of the other Contracting States. One of the great practical advantages of this provision is that applicants seeking protection in several countries are not required to present all of their applications at the same time but have 6 months to decide in which countries they wish to seek protection. These subsequent applications will be regarded as if they had been filed on the same day as the first application. Due to this time limit set (6 months) the financial burden connected with a trademark application in different territories can be spread over time.