International trademark registration provides protection in countries that are party to the Madrid Protocol, by means of a single application. Thanks to this international agreement, you can obtain protection in a large number of countries reasonably cheaply and easily. An international trademark should, in fact, be seen as a bundle of national trademarks obtained all at once and at a considerably lower cost than if you were to file applications at each office individually.
Over 110 countries, including large economies such as the US, China, Japan and Europe, are now party to these agreements. You can opt for protection in all participating countries or in a selection of them, and also for the entire EU in one go (see EU trademark via an international application).
If within six months of filing an earlier application, you file an international application, you can claim the priority of your earlier application for the international one. The protection afforded by your international application will then run from the same date as your initial one (the filing date).
How does it work?
International trademarks are registered by WIPO (World Intellectual Property Organization). However, an application for an international trademark must always be based on a basic application, e.g. a Caribbean Netherlands trademark application, and is always handled by the office of origin. If a Caribbean Netherlands trademark application is the basic application, the office of origin is BOIP.
We check whether your international application is in order, and whether it is identical to your Caribbean Netherlands basic registration. We then forward your international application to WIPO. Once you have completed the necessary forms, you can send them to us. The fee for BOIP forwarding your application to WIPO is 103 USD. In addition, the basic fee for an international registration and the fees for registering your trademark in the relevant countries apply (current fees per country can be found at www.wipo.int). You can use the WIPO fee calculator to calculate the cost of an international registration.
Why opt for an international trademark?
A downside of an international trademark registration is that it is contingent upon the underlying basic registration for the first five years. If the basic registration expires however, in most cases the international registration can be converted into national applications for the relevant countries.
There is, on the other hand, a considerable upside. If there is an objection to your trademark in a particular country, for instance, if it is refused or opposed there, it only affects your trademark protection in that country.
Another advantage of an international registration is the flexibility it offers. Should you start operating in new markets at a later stage, you can expand your protection to include the relevant countries by means of so-called subsequent designation. All of your international protection will continue to be covered by a single registration. This makes administration of your trademark protection not only simpler, but also cheaper in the long term, since you only need to renew one registration.
The biggest advantage of an international registration is that you can obtain protection in a large number countries relatively cheaply and easily. To obtain international registration, you can also deal with an organisation with which you are already familiar, BOIP. Our Information Centre will be happy to provide you with further information!
Expanding the geographic scope of your protection
If you have an international registration and want to expand it to include other countries, you must file an application for “subsequent designation”.
The form can be found here. You fill the form in on the screen, then print, sign, and send it to WIPO. The fee for subsequent designation consists of a basic fee and an amount that depends on how many and which countries you select.
If you wish to submit one or more changes and also designate additional countries, we recommend that you contact the Information Centre, as in such cases, the order of submission is crucial to acceptance of your application.