What does an international trademark application mean?
An international trademark application is a procedure with which you can apply for trademark protection outside your home market. For companies with a connection to Switzerland, this often runs through the Madrid System of the World Intellectual Property Organization WIPO.
The basic idea is simple: You do not register your trademark in each country individually, but instead submit a central application and select the countries or organizations in which you want protection. The Madrid Protocol allows for an international registration if a basic application or a basic registration already exists with the competent authority of a contracting party (Art. 2 Abs. 1 Madrider Protokoll).
However, it is important to note: The international trademark application is not a "world trademark". There is no automatic global protection in all countries. You must explicitly designate the desired countries or regions. Protection from the international registration extends only to the contracting parties for which you apply for it (Art. 3bis Madrider Protokoll).
Is a Swiss trademark sufficient for international business?
A Swiss trademark is only sufficient for protection in Switzerland. If you offer your products or services under the same trademark abroad, you generally need separate protection there.
The Swiss Trademark Protection Act expressly regulates international registration. International registrations can be initiated through the Swiss Federal Institute of Intellectual Property if Switzerland is considered the country of origin under the Madrid System (Art. 45 Abs. 1 lit. a MSchG). The application must be submitted to the IGE if Switzerland is the country of origin (Art. 47 Abs. 1 MSchV).
For Swiss companies, the typical process is therefore as follows: First, a trademark is applied for or registered in Switzerland. After that, an international trademark application can be built upon it. The international application is forwarded to the WIPO via the IGE. The WIPO registers the trademark centrally and forwards it to the selected countries or organizations.
Each of these countries then examines, according to its own law, whether protection is granted. This is a crucial point: The international procedure simplifies administration, but does not replace the substantive examination in the individual protection areas.
How does the international application via the Madrid System work?
The international trademark application via the Madrid System works in four steps. First, you need a basic trademark or at least a basic application. After that, you submit the international application through the office of origin. For Swiss origin, this is the IGE. Subsequently, the WIPO registers the international trademark and informs the selected countries. Finally, these countries examine whether they grant or refuse protection.
The international application must designate the goods and services for which the trademark is to be protected. The international classification according to Nice is used for this purpose (Art. 3 Abs. 2 Madrider Protokoll). These classes are more than a formality. They describe the goods and services for which you claim protection.
An example makes this more tangible: If you protect a trademark for software, it does not automatically help you for clothing, food, or consulting services. Protection always depends on the goods and services for which the trademark is applied for. Furthermore, the classes specified in the international application do not bind the contracting parties when assessing the scope of protection of the trademark (Art. 4 Abs. 1 lit. b Madrider Protokoll). Therefore, it is worth formulating the list of goods and services carefully.
What is the difference between Switzerland, EU, and worldwide application?
The three terms concern different scopes of protection. A Swiss trademark protects in Switzerland. An EU trademark protects in the European Union. An international registration via the Madrid System can enable protection in selected countries and regions.
In the case of a Swiss trademark, you register your trademark with the IGE. This makes sense if your market is initially in Switzerland or if you need a Swiss basis for later international steps.
An EU trademark is an EU trademark. It is registered with the European Union Intellectual Property Office and offers uniform protection in the EU member states. For companies that want to become active in several EU countries, this can be more efficient than individual national applications.
With worldwide trademark protection via the Madrid System, you select specific countries or organizations. This can also include the European Union. You can therefore also apply for protection for the EU via an international registration, provided the requirements are met.
The most important difference lies in the strategy. If you are only active in Switzerland, a Swiss trademark is often the first step. If you want to sell directly in the EU, an EU trademark can be obvious. If you have several countries outside the EU in mind, the international trademark application via the Madrid System is often particularly practical.
What role does the Swiss basic trademark play?
The Swiss basic trademark is the starting point for an international registration of Swiss origin. Under the Madrid Protocol, an international registration can be based on a basic application or a basic registration (Art. 2 Abs. 1 Madrider Protokoll). The IGE points out in its official information that a Swiss trademark registration application or a registered Swiss trademark must be present.
In practice, an already registered Swiss trademark is often more solid than a merely pending application. This is because if the Swiss basis fails or has to be significantly fundamentally changed, this can have consequences for the international registration. The link to the basic trademark is particularly delicate in the first few years. If the basis is restricted or ceases to exist during this time, the international registration can also be affected.
For founders, SMEs, and growing brands, this means: The international trademark application should not be planned in isolation. First, it should be clear whether the trademark is actually protectable as a sign, whether similar trademarks already exist, and whether the list of goods and services matches the actual template of business activity.
If you need support with the topic of trademark protection, Jurata is happy to help you at any time: Markenschutz.
When is an international trademark application worthwhile?
An international trademark application is particularly worthwhile if you realistically want to become active in several countries or are already selling there. It is particularly interesting if you want to cover several protection areas at the same time and prefer centralized administration.
Typical situations are an online shop with customers abroad, a planned expansion into the EU, sales partners in other countries, franchise or licensing models, international investor discussions, or a brand name that is to be strategically secured for later markets.
The international application is not always necessary immediately. If you are only active in Switzerland and do not plan any concrete foreign expansion, a Swiss application can suffice. However, as soon as you actively enter foreign markets, the risk increases that third parties registers a similar trademark or that you yourself get into trouble because of older rights.
A good trademark strategy therefore does not only ask: "Where am I active today?" It also asks: "Where should the brand grow in the next three to five years?"
What mistakes often happen with international trademarks?
The most common mistake is applying too late. Many companies only look after international trademark protection when sales, marketing, or packaging are already being prepared for a new market. Then it can happen that a search shows older rights or that the desired trademark is no longer available in an important country.
A second mistake lies in an inaccurate list of goods and services. Too narrow formulations might not cover important activities. Too broad formulations can increase the risk of objections or conflicts. Since the international application must designate the goods and services (Art. 3 Abs. 2 Madrider Protokoll), this part of the application is central.
A third mistake is the assumption that an international registration automatically means protection in all countries. That is not correct. Protection only applies in the designated contracting parties (Art. 3bis Madrider Protokoll).
A fourth mistake concerns the EU. Some companies prematurely apply for an EU trademark, even though a conflict in an EU country can make the application more difficult. Others only apply for individual EU countries, even though an EU-wide strategy would be economically more sensible. An upfront clarification is worthwhile here.
How should you choose the countries for trademark protection?
The selection of countries should be economically and legally justified. The decisive factor is not as many countries as possible, but the right countries.
Crucial are above all the current sales markets, planned countries for expansion, production sites, important sales partners, countries with an increased risk of imitation, and markets in which you want to win investors or licensees.
Costs also play a role. In the case of an international trademark application, fees are incurred for the international registration and for the selected countries or organizations. In addition, extra costs can arise in individual countries if the office raises objections or an opposition is filed.
A lean, realistic protection strategy is usually better than an oversized application. Anyone who selects all imaginable countries pays more and manages more. Anyone who selects too few countries risks protection gaps. The right way usually lies in prioritizing by market, risk, and budget.
How long does an international trademark registration take and last?
The duration depends on the procedure and the selected countries. The WIPO performs the international registration centrally and publishes it. Thereafter, the individual designated areas of protection examine, according to their own law, whether they grant or refuse protection.
A clean distinction is important here: The classification specified in the international application is not automatically decisive for assessing the scope of protection in each individual area of protection. The Madrid Protocol explicitly states that the indication of the classes does not bind the contracting parties in assessing the scope of protection of the trademark (Art. 4 Abs. 1 lit. b Madrider Protokoll). In practice, it therefore remains important how the applied-for goods and services are formulated in concrete terms and how the respective protection area examines these indications.
For Switzerland, the reverse applies: An international registration with protective effect for Switzerland has the same effect as a filing with the IGE and a registration in the Swiss registry (Art. 46 Abs. 1 MSchG). If protection is refused for Switzerland, this effect does not apply to the extent that the refusal reaches (Art. 46 Abs. 2 MSchG).
Conclusion
An international trademark application is sensible if your brand is to grow beyond Switzerland. It does not offer automatic worldwide protection, but can cover many countries and regions efficiently via the Madrid System. For Swiss companies, the Swiss basic trademark is often the starting point. For the EU, either a direct EU trademark or a designation of the EU in the international system comes into consideration.
Most important is a clear strategy: Which markets are relevant today? Which countries will become important in the next few years? Which goods and services should really be protected? Anyone who answers these questions cleanly avoids expensive protection gaps and builds their brand internationally in a significantly more stable manner.
Frequently asked questions about international trademark application
Is there a worldwide trademark?
No. There is no trademark that automatically protects worldwide in all countries. The Madrid System enables central international registration for selected contracting parties. You must explicitly designate the countries or organizations in which you want protection (Art. 3bis Madrider Protokoll).
Can I combine an EU trademark and an international registration?
Yes. An EU trademark can be applied for directly with the EUIPO. Alternatively, the EU can be designated as part of an international registration if the requirements of the Madrid System are met. Which variant is more sensible depends on your starting point, your basic trademark, and your expansion strategy.
Do I have to register a Swiss trademark first?
If you want to submit the international trademark application of Swiss origin via the IGE, you need a Swiss basis. Under the Madrid Protocol, this can be a basic application or a basic registration (Art. 2 Abs. 1 Madrider Protokoll). In practice, a registered basic trademark is often the more stable basis.
Does the international registration automatically protect against imitators?
It significantly improves your legal position, but does not replace monitoring. Trademark offices do not examine with equal strictness in every country whether older, similar trademarks exist. Moreover, you must react yourself if third parties use or register similar signs. Trademark protection is therefore not only about registration, but also ongoing maintenance.
