International trademarks

Are you an exporter looking to extend the protection of your trademark overseas? International registration of a trademark may be a simple, fast and economic solution.

If you already have a trademark registered in Monaco or have filed an application for national registration with the Office, you can also apply for protection in one or more states which are Contracting Parties to the Madrid System.

 

Basic conditions

You need to satisfy three conditions.

 

1 - You must have a connection with the national Office

The national Office is your office of origin if:

  • You are a professional operating in Monaco, or
  • You are resident in Monaco, or
  • You are a Monegasque national.

 

2 – A basic application or registration is required

You must previously have filed an application to register a national trademark (also referred to as a basic application) with the Office or be in possession of a certificate of registration of a Monegasque trademark (also referred to as basic registration or basic mark).

NOTE: if you meet these conditions, you may file an application to register an international trademark with the Office at any time. However, for a period of six months after the date on which you filed your application to register the trademark in Monaco, you may also extend its protection to include other countries, while continuing to benefit from the national filing date. This is known as a right of priority. Any applications filed by anyone else during that period, in countries you have selected, will not be enforceable against you.

 

3 – Your international registration application must go through the Office.

If the first two conditions are met, whether you are an individual or representing a legal entity, you may file your international registration application with the Office yourself, or arrange for it to be filed by a professional (such as an industrial property consultant).

 

How much does it cost to apply for international registration?

The cost varies depending on the number of classes and countries designated.

Fees are paid in two stages. The first payment is made to the World Intellectual Property Organization, (WIPO), and the second to the Monegasque Office.

 

For WIPO

The payment includes, for a ten year period:

  • A basic fee
  • A supplementary fee (depending on the number of classes of good and services) and a complementary fee (depending on the number of countries designated).
  • An individual fee depending on the countries designated.

NOTE: WIPO’s official website offers a free fee calculator which you can use to calculate the cost of your international application.

Payment can be made:

  • By direct debit from a client account open with WIPO
  • By bank transfer to WIPO’s account
  • By postal transfer to WIPO’s postal account
  • By e-payment

Your payment should be accompanied by certain information: your name, address, form reference (MM2), the basic mark identification (number of the filing or registration receipt, and the trademark name where applicable), and the reason for the payment, i.e. “international trademark application filing”.

Postal details:

World Intellectual Property Organization (WIPO)

34 Chemin des Colombettes,

Case Postale 18

CH 1211 GENEVA SWITZERLAND

Bank details:

BANK: Crédit Suisse – CH-1211 Geneva 70

Account name: WIPO/OMPI

CHF ACCOUNT NUMBER (IBAN): CH51 0483 5048 7080 8100 0

Swift Code: CRESCHZZ80A

Clearing number: 4835

NOTE: where the payment is for more than one application, users are asked to write to income.mark-dm@wipo.int indicating all of the applications concerned and the amount paid for each one. A payment order template for making a payment to WIPO’s bank account can be found (here).

 

For the Monegasque Office

The national fee is 60 euros and must be paid, by the latest, when the international registration application is filed with the Monegasque Office (see the section entitled “International trademarks - The registration process”).

You can choose to pay:

  • By cheque made out to “Trésorerie Générale des Finances” or “T.G.F. “
  • In cash, but only at the Office in person
  • By bank transfer (Bank details) .

In this case, the transfer must be marked with your name, address, the identification of the basic mark and the reason for the payment, i.e. “international trademark application filing”.

 

The filing process in 3 phases

 

Phase 1: Filing a registration application via the Monegasque Office.

Before filing your application with the Office, you need to:

  • Be in possession of a receipt number for filing a national trademark registration application, or a certificate of registration for a Monegasque trademark.
  • Choose the countries where you want to export or market your goods and/or services.
  • Check that your trademark is available and acceptable in each of the countries selected.
  • Complete the “MM2” international trade mark registration form.
  • Pay any fees due to WIPO, which will send you a receipt for payment.

Filing your application with the Office.

  • Submit your application documents to the Office.
  • Pay the fixed fee.
  • If your application is in order, the Office will send the filing to WIPO.

 

Phase 2: Examination of formal requirements by WIPO

  • If your application is in order with no irregularities, WIPO will register the international trademark.
  • WIPO will  send your international trademark to the national offices of the countries designated.

 

Phase 3: Examination of substantive requirements by the National or Regional Offices

  • The National or Regional Offices (e.g. EUIPO) will examine your international trademark to check that it meets substantive requirements, as if it had been filed directly with them.

 

 

Step 1 - You have filed an application to register a national trademark with the Office or are in possession of the certificate of registration for your Monegasque trademark.

 

Step 2 - Choose the countries where you want to export or market your goods and/or services.

Whether you have already had your Monegasque trademark registered or have only filed the application for registration with the Office, you can choose the Madrid System countries of interest to you.

 

Step 3 - Check that your trademark is available and acceptable in each of the countries selected.

It is strongly advisable to carry out a search of existing trademarks in each of the countries to which you want to extend your protection.

 

Step 4 - Complete the “MM2” international trademark registration form

The forum must contain the following information:

  • Your full name and address.
  • The dates and numbers of the receipt or registration of the Monegasque trademark.
  • The list of goods and/or services that you want to protect. This list must be the same as that applied to your Monegasque trademark. You can reduce it if you wish, but under no circumstances can you add to it.
  • The list of countries you have selected (Monaco cannot be designated again).
  • A very clear reproduction of your trademark. This reproduction must be identical to the basic mark.

NOTE: for more details, refer to the explanatory notes here

 

Step 5 – Before filing with the Office, pay the WIPO fees.

The payment includes, for a ten year period:

  • A basic fee
  • A supplementary fee (depending on the number of classes of good and services) and a complementary fee (depending on the number of countries designated).
  • An individual fee depending on the countries designated.

NOTE: WIPO’s official website offers a free fee calculator which you can use to calculate the cost of your international application.

Payment can be made:

  • By direct debit from a client account open with WIPO
  • By bank transfer to WIPO’s account
  • By postal transfer to WIPO’s postal account
  • By e-payment

Your payment should be accompanied by certain information: your name, address, form reference (MM2), the basic mark identification (number of the filing or registration receipt, and the trademark name where applicable), and the reason for the payment, i.e. “international trademark application filing”.

Postal details:

World Intellectual Property Organization (WIPO)

34 Chemin des Colombettes,

Case Postale 18

CH 1211 GENEVA SWITZERLAND

Bank details:

BANK: Crédit Suisse – CH-1211 Geneva 70

Account name: WIPO/OMPI

CHF ACCOUNT NUMBER (IBAN): CH51 0483 5048 7080 8100 0

Swift Code: CRESCHZZ80A

Clearing number: 4835

NOTE: where the payment is for more than one application, users are asked to write to income.mark-dm@wipo.int indicating all of the applications concerned and the amount paid for each one. A payment order template for making a payment to WIPO’s bank account can be found (here).

 

Step 6 - WIPO sends you a payment receipt

 

Step 7 - On receiving the receipt from WIPO, file your application at the Office and pay the fixed fee.

Your application should contain the following:

  • Two copies of the typed filing form, one of which bears your signature.
  • A copy of the certificate of registration for your Monegasque trademark or the filing receipt issued by the Office.
  • Payment to the Office of the fixed fee of 60 euros.
  • The receipt for payment of all fees due to WIPO or, as a minimum, some form of proof of payment such as a copy of the transfer order.

Your application may contain:

  • A power of attorney, if an agent is representing you.
  • A declaration of intention to use your international trademark, if you have designated the United States (WIPO form MM18).

The application can be handed directly to the Office or submitted by post. It must be accompanied by a letter listing the documents submitted.

 

Step 8 – The Office examines your application to ensure it meets formal requirements and raises any objections

The Office will check:

  • The status of the basic mark (has the trademark been registered or filed in Monaco?) -
  • That the trademark for which you are seeking international registration is identical to your Monegasque trademark.
  • That all of the indications, such as the description of your trademark or its colours, are identical to those on file for your Monegasque trademark.
  • That the goods and/or services designated in your international registration application are identical to those covered by your Monegasque trademark.
  • The date on which the Office received your international trademark registration application, to assert your right of priority if applicable.

IMPORTANT: The Office does not check the availability of your trademark. It is therefore vital to complete step 3 above, to avoid any risk of future litigation (administrative opposition or legal action to have your trademark annulled).

 

Step 9 - Respond to any objections raised by the Office

If any irregularities are found with your application, the Office will notify you by post. You must remedy any errors as quickly as possible.

IMPORTANT: you should correct your application as soon as possible, as two months after the Office receives your international registration application, the filing date of your international trademark will not be the date on which your application reaches the Office, but rather the date recorded by the International Bureau.

 

 

Step 10 - The Office passes your international registration application on to WIPO

If your international registration application is in order, the Office will certify it and pass it on to WIPO, which will acknowledge receipt. The Office will then send you confirmation that WIPO has your application and send you a receipt for payment of the Monegasque fee.

 

Step 11 - WIPO examines your application to ensure it meets formal requirements and raises any objections

WIPO will check:

  • Your full name and address.
  • That the basic conditions are met.
  • That the list of goods and/or services is classed in accordance with the Nice Classification.
  • The quality of the reproduction of your trademark.
  • The countries designated.
  • That all fees have been paid.

WIPO will notify you by letter if there is an irregularity with your application, sending a copy of the letter to the Office.

 

Step 12 - Respond to any objections raised by WIPO

You must respond to any objections raised by WIPO within three months of receiving their letter.

NOTE: To correct any errors, you must go through the Office, which will pass on the corrections to WIPO.

 

Step 13 - WIPO registers your trademark and sends you a certificate of registration

If your application is admissible, WIPO will register your trademark, assign it an international registration number, enter it on the International Register and publish it in WIPO’s Gazette of International Marks.

IMPORTANT: it is important to understand that, unlike the Monegasque trademark, the registration of an international mark does not necessarily mean that the protection is formally recognised in the countries designated.  Your trademark will only be officially protected in those countries after their respective Offices have carried out a substantive examination and approved the mark (see step 15).

 

Step 14 - WIPO informs the national or regional Offices in the countries you have designated that your international trademark has been registered

 

Step 15 - Each national Office carries out a substantive examination of your trademark application

Between 12 and 18 months after the registration is sent, the process continues as if you had filed your application directly with the Offices in each of the countries designated in your filing. They will examine your international trademark in accordance with their respective legislation.

If your trademark is accepted, your protection will take effect in those countries.

However, if your trademark is opposed, in countries with opposition procedures, or if it is rejected, you will be informed by WIPO who will give you the reasons and publish them on the International Register.  From that point, the process will continue directly between you and the national Office concerned, with no further involvement by the International Bureau of WIPO. It will be up to you to appeal the decision locally, and appoint a professional agent to help you defend your rights or put forward your arguments, as applicable.

The definitive decision will be entered on the International Register and published in the WIPO Gazette.

 

The life of your international trademark

  • Protection period

Your international trademark is protected for a period of ten years in states where it has been examined substantively.

The International Bureau will send you (the holder) an official reminder six months before the renewal date.

WARNING: BE AWARE OF BOGUS REMINDERS - WIPO Notice No.6/2010

Renewal may apply to all of the countries designated, or just to certain countries. However, renewal must apply for all of the goods and services entered on the International Register. You may choose only to renew some of them, but to do so you will likely need to revoke the unwanted goods and/or services (see the section entitled “International trademarks - The life of your international trademark - Changes affecting your trademark”).

 

  • Dependence of international trademarks

For a period of five years, your international mark will remain dependent on your Monegasque mark. If the Monegasque mark ceases to produce its effects in Monaco for whatever reason (refusal, cancellation, non-renewal), the whole international trademark will also cease to produce its effects and will be revoked.

However, the Madrid Protocol allows for you to transform your international trademark into a national application for each of the countries you have designated. You then have a period of three months, following the revocation of your international trademark, to file an application to transform your international mark into a national mark, with the national Offices of the countries selected. The national application will be treated as if it had been filed on the date of the international registration or, as the case may be, on the date of priority or the date of the subsequent designation.

 

  • Use of the trademark

You should select a reasonable number of countries. Bear in mind that in many of them, legislation requires the trademark to be used commercially. If you do not use it, its protection may lapse and this could endanger your investments.  

Also, remember that the holder is responsible for monitoring the use of their trademark. To do this, you can enlist the services of professionals such as industrial property consultants.

 

  • Changes affecting your trademark

Subsequent changes to the registration may be made in the International Register.  These changes will take effect in all of the states designates, by means of a single formality.

Change of holder’s name and address

Use form MM9, which can be presented directly to WIPO or through the Office.

Change of holder

Use form MM5, which can be presented directly to WIPO or through the Office or through the national Office of the new holder.

  • Limiting the scope of protection

To limit the list of goods and/or services in one or more of the countries designated, use form MM6, which can be presented directly to WIPO or through the Office.

NOTE: even after a limitation, the goods and/or services remain on the International Register.  You can therefore reactivate them via a “subsequent designation”.

  • Surrendering a trademark

To end the effects of international registration for all of the goods and/or services in certain designated countries (but not all), use form MM7, which can be presented directly to WIPO or through the Office.

  • Revocation

To delete all or part of the goods and/or services for all of the countries designated, use form MM8, which can be presented directly to WIPO or through the Office.

IMPORTANT: unlike “limiting the scope of protection”, revocation definitively removes the goods and services from the International Register. To restore protection for these goods and/or services, you will need to file a new international registration application.

  • To register a license

Use form MM13, which can be presented directly to WIPO or through the Office.

For more details on this point, click here

 

Renewal

WIPO will send you a written reminder six months before the ten-year period is due to expire, inviting you to pay the renewal fees.

The simplest way to renew your international registration is to use WIPO’s online renewal service. You can also complete a paper copy of form MM11 and present it directly to WIPO.

 

Subsequent designation

You can expand the geographical scope of protection of your international registration to additional Madrid System countries and designate states that were not named in the original application, without having to file a new international trademark application. This can be done directly through WIPO or via the Monegasque Office. This is known as a “subsequent designation”. Using form MM4, it allows you to:

  • Designate states that were not yet Contracting Parties to the Madrid System when you filed your application to register an international trademark.
  • Extend your protection to other countries, depending on which markets you intend to enter in the near future.

WIPO’s free fee calculator can be used to evaluate the amount of any subsequent designation fees.

 

Foreign trademarks