The protection of a trademark filed with the Office applies only in the Principality of Monaco. It is possible, however, to extend this protection to other countries. It is important to choose these countries carefully, as this will determine the scope of your trademark’s protection, shape your development strategy and will also indicate the most suitable international protection procedure for your circumstances.
Choosing a market and procedure
To choose the most straightforward protection procedure that is best suited to your requirements, it is essential to identify the countries in which you are operating or plan to operate in the future.
If your commercial development policy covers most European states, or to other countries such as the United States, Japan, China or Switzerland, it is advisable to opt for an international trademark which, via the international trademark registration system commonly known as the “Madrid System”, has the advantage of simplicity
- A single form (MM2)
- A single point of contact: the Office
- A single working language: French
- A single fee, instead of different fees in each country selected
- A wide selection of countries (over a hundred, accounting for more than 80% of global trade)
- A single process for updating your trademark which takes effect in all of the countries designated
- A single renewal date for all of the countries designated
IMPORTANT: the international trademark is not a unitary mark. It is merely a single procedure used to produce a series of national trademarks, which will not necessarily have the same effects in different countries. Consequently, it is possible that your trademark may be refused protection in certain countries and accepted in others.
However, if you are interested in countries which are not part of the Madrid System, it would be advisable to register your trademark separately with the industrial property office in each country concerned. This option may prove less costly, given the limited number of countries involved. Nonetheless, you should bear in mind that in this case, depending on the countries concerned, you may need to enlist the services of an industrial property consultant.
Whatever procedure you choose, it is strongly recommended to check that there are no existing prior rights to your trademark. The holder of a prior right may seek to have it cancelled.
You can carry out a free search using the ROMARIN search engine on the website of the World Intellectual Property Organization (WIPO), to gain an initial overview of the availability of your trademark on the International Register. In all cases, it is vital to search the national registers of the countries you are targeting, to avoid any risk of litigation in the future (administrative opposition or legal action to have your trademark annulled). To do this, you can use the services of an industrial property consultant. They will be able to interpret the search results and determine the most appropriate strategy for your needs and budget.