A Korean trademark registration does not provide protection in every country. Businesses expanding internationally need to consider the procedures for securing rights in their target markets.
In particular, recently, an increasing number of companies are trying to secure overseas trademarks while reducing the cost burden by using the Madrid international trademark application, which allows trademark applications in multiple countries simultaneously, and export vouchers. However, the Madrid system is not suitable for all companies, and it is important to understand both the advantages and limitations of the system and then establish a filing strategy that fits your business plan.
Why you need to apply for an international trademark under the Madrid System
Most countries overseas adopt the first-to-file system. In other words, the rights are generally recognized to the person who applied for the trademark before the person who used the trademark first.
For this reason, when trying to apply for a trademark after entering an overseas market, there are many cases where it is belatedly discovered that a third party has already applied for or registered the same or similar trademark. Problems often arise when trying to apply for a trademark after a brand is first known through participation in overseas exhibitions, opening a store on an online platform, or consulting with overseas buyers.
When this situation arises, you may need to change your brand name or engage in trademark disputes or transfer negotiations to maintain your existing brand. In some cases, the overseas expansion schedule itself may be delayed or significant costs may be incurred.
Therefore, the most effective way to respond is to secure overseas trademarks in advance, not after overseas business begins in earnest, but at the stage of preparation for entry into the market.
What is Madrid International Trademark Application?
The Madrid International Trademark Application is an international system that allows you to apply for trademark protection in multiple countries through a single international application based on a trademark applied or registered domestically.
Applicants submit an international application to the Korean Intellectual Property Office (KIPO), which then transmits it to the International Bureau of the World Intellectual Property Organization (WIPO). Once the International Bureau completes the formal examination, international registration is made, and then the trademark office of each designated country individually reviews registration according to its own trademark law.
In other words, the application is processed through one procedure, but the examination is conducted independently for each country.
Additionally, since international applications are based on domestic basic trademarks, international applications cannot be filed beyond the scope of designated goods and services of the domestic trademark.
Advantages of filing an international trademark application under the Madrid System
The biggest advantage of international trademark applications under the Madrid System is that applications for multiple countries can be filed in one procedure.
Compared to the individual application method, where an application is prepared separately for each country and the language and procedures are different, the initial administrative burden can be reduced, and it is especially advantageous for companies preparing to enter multiple countries at the same time.
Additionally, even after international registration, the following management tasks can be handled relatively uniformly.
- Registration Renewal
- Change of name of right holder
- change address
- Subsequent designation of additional countries or regions
The process becomes simpler and long-term rights management becomes easier than having to manage each country individually.
There are also cost advantages. Initially, administrative costs can be reduced as the process can be simplified compared to individual applications for each country, and efficiency can be increased, especially when multiple countries are designated simultaneously.
However, if the reasons for rejection are notified in the designated country and a response is required, separate costs for appointing a local agent may be incurred, so it must also be taken into account that the cost is not lower than filing for an individual application in all cases.
Things you must check when applying for an international trademark under the Madrid System
The Madrid international trademark application is a convenient system, but its structural features must be fully understood and utilized.
① Stability of basic trademark
In the Madrid system, international registration is subordinate to the basic trademark for five years.
If the domestic basic trademark is rejected, invalidated, or canceled within this period, the same effect may be had on the international registration. This is called a central attack.
If you meet certain requirements, you can apply for transformation to a domestic application in each designated country, but additional costs and procedures will be incurred, so it is important to thoroughly review the registration feasibility and stability of the basic trademark from the beginning.
② Not available in all countries.
The Madrid System is only available to countries that have signed up to the Madrid Protocol.
In order to secure a trademark in a country that is not a member, you must file an individual application in that country, so depending on the country you are entering, it may be more appropriate to file a Madrid application and an individual application in parallel.
Matters that must be reviewed before filing
- Designated country selection
The designated jurisdictions affect the overall cost and geographic scope of protection.
Excessive inclusion of countries unrelated to the actual business plan may result in unnecessary costs, and conversely, excluding important countries may require a separate application to be filed again later.
Therefore, it is advisable to select a designated country by considering not only the current export target countries but also countries with a high possibility of entering the future.
- Product/Service Designation
If you set the product or service category too narrowly, there may be restrictions on the use of your trademark when expanding your business in the future.
Conversely, excessively specifying products that are not actually planned for use may increase the likelihood of rejection depending on the country, so a design that takes into account both the business plan and each country's review practices is necessary.
- Examination standards by country
Trademark examination standards and practices vary significantly from country to country.
The same trademark may be registered in one country but rejected in another. Therefore, for overseas trademark applications, it is important to review examination trends and registration possibilities for each country rather than simply specifying many countries.
The Madrid International Trademark Application is a useful system that allows you to more systematically secure and manage trademarks in multiple countries. However, it is not equally suitable for all companies, and the most appropriate application method must be selected by comprehensively reviewing the country of entry, business plan, and stability of the basic trademark.
If you want to reliably protect your brand in overseas markets, the most effective way is to check your overseas trademark strategy from the preparation stage rather than after the business begins in earnest.
This article reflects the information available when it was published. Contact us to discuss your circumstances.