WIPO BasicsKey considerations, from cost to culture, when filing trademarks around the world
Rosie Burbidge | May 04, 2022
Rosie Burbidge is a globally recognised intellectual property specialist. She helps clients across a variety of sectors to obtain and enforce their IP rights, particularly trade marks, copyright and designs. From managing a trade mark portfolio to suing for design infringement, Rosie will identify the optimum strategy to suit her client’s needs, timeline, and appetite for risk. She is trusted by her clients for her clear, practical, and pragmatic advice and is recognised by Legal 500 and Chambers as an expert in her field and praised for her "enthusiasm and professionalism." Rosie’s book, _European Fashion Law_, has been described as "refreshingly insightful" and "the best industry-focussed legal textbook I’ve seen" by lawyers at major UK fashion businesses. Rosie’s website—www.rosieburbidge.com—keeps readers up to date on IP issues in the UK and beyond.
What is the World Intellectual Property Office?
The World Intellectual Property Office (WIPO) is a global forum established in 1967 for intellectual property services, policy, information, and cooperation. Its aim is to help governments, businesses, and individuals understand the benefits of protecting intellectual property and how to achieve that protection.
It acts as a global reference source and database for a variety of intellectual property information, including trade mark applications and portfolio management.
What is the international filing system?
The Madrid System is a convenient and cost-effective solution for applying to register and managing trademarks worldwide through a central database facilitated via WIPO. Many but by no means all territories are part of the Madrid system. Notable exceptions include Hong Kong and South Africa. You can use the Madrid System if you have a personal or business connection to one of the System’s members.
In order to file a trademark via WIPO using the Madrid System, the first step is to identify a base trademark – usually in the business’s home territory. The application for an International Registration (IR) is then made via the intellectual property office associated with that base mark. There is an administrative fee paid to that office together with a more significant fee which is paid to WIPO.
The priority system can be used in the same way via WIPO as if you were filing directly.
What is the alternative?
The alternative to filing via WIPO is to file directly with the local trademark office in each territory. The benefit of this approach is that you have a lot more control over the process and the marks are usually filed much more quickly. However, it is necessary to incur the costs of appointing and liaising with local attorneys which adds a significant administrative burden and is usually more expensive.
What are the advantages of filing via WIPO?
When filing in more than two additional territories, the most cost effective method of securing trademark protection is usually to file via WIPO using the Madrid System. The cost of an international trademark includes a basic fee which depends on the type of mark, as well as additional fees per class and per territory.
Any updates to the register (such as a change of name or address) are easily done and subsequent designations can be added at a later date. You can also easily carry out renewals online.
Official notifications will be in the language used in the registration.
What are some of the challenges of using the WIPO system?
Not all territories are part of the Madrid System (e.g. Hong Kong and South Africa), so the only route available to file a trademark application internationally may be by filing directly.
If there is an examination report or a refusal raised by one of the designated territories, there will be additional costs incurred to resolve these issues and local attorneys will still need to be appointed. Whereas, if you were to file directly, the local lawyers in these territories could identify any potential issues prior to filing the application.
The full application to registration process typically takes longer than a direct filing because of the additional administrative delays involved in WIPO communicating between the parties and the registries.
The goods and services are tied to the base mark which means they cannot be edited prior to filing. You do have the option to file in a limited number of classes as opposed to all classes in the base mark, however you cannot edit the goods or services themselves to make them more compliant with local trademark laws prior to filing.
Filing directly provides more certainty and control over the process. For example, it typically takes much longer to find out about issues (e.g. provisional refusals or oppositions) or you may not be notified at all.
If you decide to sell one of your trademarks filed through WIPO using the Madrid System, in some of the countries, you will have to convert it to a local mark first which is an expensive and time consuming procedure.
A case study: WIPO vs. Filing Directly
You have a US registration in two classes that you would like to use as the base mark for an international application designating the UK, EU, Canada and China (i.e. four territories).
| WIPO filing (office fees only) | Direct Filing (official fees only) | |
| Costs | WIPO fees: $2,640
USPTO fees: $200 Total: $2,840 Note: No additional foreign lawyer fees required |
Total: $1,950
Note: Additional fees will be incurred for each local territory |
| Timing | Designating countries can take up to 18 month to process the application from receipt of the trademark application from WIPO. Usually this process is much quicker | The timing varies considerably between territories but is usually faster than a WIPO application |
| What if the base mark is challenged? | Each mark filed in a designating territory depends on the base mark. If the base mark is limited or removed from the register, an equivalent change is made to each designating territory. | The marks filed directly are considered distinct applications and are not affected by changes to other trademarks in the same family which have been filed in other jurisdictions. |