What is the role of WIPO in International Trademark Registration?

Introduction

The World Intellectual Property Organization (WIPO) is an international organization that is responsible for protecting intellectual property rights (IPR) and building the IP system. One of the key functions of WIPO is to administer the Madrid System, which is a convenient and cost-effective solution for registering and managing trademarks worldwide. In this article, we will discuss the role of WIPO in international trademark registration.

What is WIPO?

WIPO stands for World Intellectual Property Organization (WIPO) and is a specialized agency of the United Nations responsible for promoting and protecting intellectual property (IP) rights globally. Established in 1967, WIPO administers a range of international treaties that aim to harmonize IP laws and facilitate cooperation between member states. WIPO provides a platform for member countries to negotiate and establish international legal frameworks, ensuring a fair and balanced system of IP protection.

Filing an International TM Registration Process  

There are five basic steps in the process of filing an international trademark application through WIPO’s Madrid System:

1. Complete your international trademark application.
2. Submit the application to your Office of origin. (Warning: Do not send it to WIPO!)
3. The Office of Origin checks that it corresponds to the particulars of your basic mark. The Office certifies the international application and sends it to WIPO.
4. WIPO registers your mark in the International Register, publishes it in the WIPO Gazette of International Marks, sends you a Certificate of Registration – an acknowledgment of compliance with WIPO’s formal requirements – and notifies the designated members.
5. Understand substantive requirements, how to deal with ‘irregularities’, the effects of an international registration, responding to refusals issued by trademark offices, and more.

Role of WIPO in International TM Registration

WIPO plays a crucial role in the international trademark registration process by administering the Madrid System and providing guidance and support to businesses seeking to protect their trademarks internationally. Here are the roles of WIPO in international TM registration:

1. Administering the Madrid System: WIPO administers the Madrid System, which is a centralized system that allows businesses to search and register trademarks and service marks in over 120 countries. By filing a single international trademark application and paying one set of fees, businesses can apply for protection in up to 130 countries.

2. Providing guidance and support: WIPO provides guidance and support to businesses seeking to protect their trademarks internationally. This includes information on the Madrid System, how to file an international trademark application, and how to manage international trademark registrations.

3. Registering Trademarks: WIPO registers trademarks in the International Register and publishes them in the WIPO Gazette of International Marks. WIPO also sends a Certificate of Registration to the trademark owner as an acknowledgment of compliance with WIPO’s formal requirements.

4. Notifying designated members: WIPO notifies the designated members of the international trademark application and registration.

5. Substantive Examination: The Office of each designated member performs the substantive examination. Each Office must grant or refuse protection within a given time limit – 12, or in some cases 18 months from the date on which WIPO notified the Office of its designation.

6. Managing Trademark Registrations: The Madrid Protocol also provides for the management of trademark registrations, such as recording changes in ownership or in the names or addresses of owners and renewing international registrations, which are valid for 10 years and renewed for 10-year periods. The international registration owner may file a single request with WIPO and make a single payment to renew the registration in all designated countries.

Conclusion

In conclusion, the Madrid System administered by WIPO is a convenient and cost-effective solution for registering and managing trademarks worldwide. By filing a single international trademark application and paying one set of fees, businesses can apply for protection in up to 130 countries. WIPO plays a crucial role in the international trademark registration process by administering the Madrid System and providing guidance and support to businesses seeking to protect their trademarks internationally.

Suggested Read: Benefits of International Trademark Registration