Phase 1: Before filing
- Identify the goods and/or services to be covered by your trademark.
- Check that your trademark is available.
- Obtain any official documents needed.
- Complete the registration form.
Phase 2: Filing to examining
- On the day of filing:
- Submit the registration application and pay the required fees.
- The Office provides you with a receipt.
- Within two months of filing:
- The Office examines your application.
Phase 3: Registration
- If your application is in order:
- The Office informs you that the trademark has been granted and invites you to collect the ownership title.
- The granting of your trademark is published in the Annex of the Official Journal of Monaco to inform third parties.
Step 1: Identify the goods and/or services
Before filing your application, you need to identify the goods and/or services to be covered by your trademark.
This step is crucial due to the effects it produces:
- The goods and/or services selected determine precisely the scope of your trademark’s protection.
- Once the application has been filed, it will not be possible to designate new ones. If you accidentally omit certain goods and/or services, the only solution will be to file a new application, which will entail a new set of fees and a new protection date.
To help you choose, goods and services are grouped together in classes. These are compiled into an international classification known as the “Nice Classification”, the full version of which can be found on the website of the World Intellectual Property Organization (www.wipo.int/mgs).
PLEASE NOTE: You may use other designations which do not appear in the Nice Classification. In this case, you must ensure that they are sufficiently precise and accurate, to prevent the risk that the registration of your trademark may be delayed or rejected. To avoid such problems, you are welcome to use EUIPO "TMclass" (electronic classification tool).
Step 2: Check that your trademark is available
Once you have selected your goods and/or services, you are strongly advised to ensure that your trademark is available in the sector in which you are interested.
IMPORTANT: This check does not form part of the Office’s legal obligations during the administrative examination of the application. If you skip this check, you run the risk of being prosecuted for infringing a trademark registered earlier by someone else, who may seek not only to have the registration of your trademark annulled, but may also claim damages.
A trademark is considered to be available if it does not reproduce or imitate a sign that is already covered by a prior right for goods and/or services identical or similar to yours.
The availability search, also known as a prior art search, can be carried out:
- through the Office (for a fee), to check that there are no identical or similar trademarks registered in identical or similar classes of goods and/or services - if your trademark is a figurative mark, you should also consult the National Design Register at the Office.
- In the Trade & Industry Register, to ensure there are no identical or similar company or brand names in an identical or similar sector as the goods and/or services selected.
Prior rights are not limited to trademarks, designs, company or brand names. They can also concern copyright (e.g. the title of a book), personality rights of a third party (e.g. pseudonyms, people’s surnames or their image), the name of an organisation, a domain name, etc.
The prior art search, analysis of the results and the resulting decision on whether or not to file an application to register the trademark are all the responsibility of the person requesting the searches. However, given the complex nature of the process, it is strongly advisable to enlist the services of an industrial property consultant.
IMPORTANT: the absence of any prior rights does not guarantee that the Office will register your trademark. This is because the Office, when examining your application, may take the view that the sign you are seeking to register cannot be protected as a trademark (see the section “What cannot benefit from trademark protection?” under the heading “What is a trademark? “).
Step 3: You obtain any official documents needed
- Priority:
If you have already registered your trademark in a Contracting State of the Paris Convention, you have six months (following the first filing date) in which to extend its protection to Monaco while continuing to benefit from the first filing date. Any applications filed by anyone else during that period will not be enforceable against you.
To raise a priority claim with the Office, you should send us an official copy of the first filing and indicate it expressly in section No. 9 of the registration application form. If this copy is not in French, a translation must be provided with it.
NOTE: If you are not the party claiming priority, you will need to submit written permission from the first applicant, authorising you to make the claim.
- Reciprocal arrangements:
If you are not based in Monaco and are not a national of a Contracting State of the Paris Convention, your application will need to be accompanied by (original) proof that your country of origin also grants protection to Monegasque nationals on a reciprocal basis.
If this proof is drafted in a foreign language, a translation into French must be provided with it.
- Power of attorney:
If you need to be represented by an agent in order to complete the formalities involved in filing directly at the Office, the arrangement must be formally set down in a power of attorney.
For trademarks, the Office accepts only two types of powers of attorney:
- A general power of attorney, authorising the agent to represent you in procedures of any kind involving the Office.
- A special power of attorney, authorising the agent to represent you for a specific purpose involving the Office.
NOTE: step-by-step instructions on how to complete these powers of attorney can be found in the standard templates.
If the application is being filed by more than one party jointly, they must appoint an agent to represent all of them, who may be one of them or a third party.
The Office will issue a receipt in exchange for a general power of attorney, and will then accept copies of the receipt in lieu of a general power of attorney.
- Permission:
If your trademark includes reproductions or imitations of symbols, coats of arms, mottoes or official insignia of the State or Princely Family, your application must include a document indicating that you have permission from the competent authorities (original is required).
- Regulations governing use of the mark:
This document is required if you are registering a “collective” trademark.
If you do not produce a set of regulations, the sign will be registered as an ordinary trademark.
Step 4 : You complete the registration form
Using the interactive form.
You must complete two copies of the registration application.
NOTE: Remember to include the official documents referred to in step 3 with your application, if necessary. Failure to provide these documents may cause your registration to be delayed, or in some cases may even result in your application being rejected.
Step 5: File your registration application with the Office and pay the required fees
Once you have collected all of the filing documents needed (two original copies of the registration application and any official documents needed), you will need to submit them all by hand at the Office itself, and pay the necessary fees.
The Office will hand one copy of the application back to you, along with a receipt indicating the filing number, date and time, and the amount of any fees paid. This receipt must be signed by the applicant, indicating their name and position or capacity.
Step 6: The Office examines your application
In the two months following your filing, the Office will examine your application. This step involves;
- An administrative examination to verify that your application meets formal requirements (has the application been completed correctly, are the classes named clearly and precisely, has permission been included, etc.).
- A legal examination to verify that your application meets legal requirements (is the sign eligible for trademark protection, is it distinctive or misleading, descriptive or contrary to public order and decency, etc.).
If there is a problem with the application, the applicant will be notified and will then have eight days (in the case of a formal issue) or fifteen days (in the case of a legal issue) to remedy the situation.
If no observations have been provided or the application not corrected within this period, the Office will inform the applicant that their application is inadmissible or has been rejected.
NOTE: the filing of an application for registration is not published. Consequently, there is no opposition procedure in Monaco and correspondence between the applicant and the Office during this period of examination will remain confidential. At this stage, either the applicant or third parties may withdraw* the application without penalty.
*“withdrawal” is distinct from “surrender”, which is only possible where a trademark has been registered (refer to the section “Surrendering your trademark” under the heading “The life of your trademark”).
Step 7: The Office grants your trademark
If your application is in order, the trademark is registered by the Office within three months following the filing date. This means that your trademark will be entered on the national Trademarks Register and will enjoy protection across the national territory for a period of ten years, starting on the filing date.
The Office will inform you that registration of the trademark has been granted and invite you to collect the ownership title, also known as a “certificate of registration”. This certificate reproduces all of the information filed when you made your application. At the same time, the Office will arrange for the registration of your trademark to be published in the Annex to the Official Journal of Monaco.
IMPORTANT: In the general interest, it is advisable to read the certificate of registration carefully and inform the Office of any errors as quickly as possible (see section entitled “Reporting an error” under the heading “The life of your trademark”).