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Greece/October 2014

Is there a term, global trademark or international? And what is the process needed?

First of all, note that the term global trademark does not exist.  We are talking about international trademarks.

About registering an international trademark, therefore, we need to highlight the following:

Applicants (natural or legal person) may:

have just filed a request for registration of the mark as a national (basic mark) or may have completed the process for trade mark registration in Greece or any other national office that may have chosen and thereupon proceed to request registration of the trademark within the international authority in Geneva, namely the World Intellectual Property Organization (WIPO).

Regarding the international trademark process, we can say that the applicant in the application of the international registration should be required to indicate the countries in which  wishes to register the trade mark as an international.

The applicant must describe the classes and the respective trademark, such as the Class 35 Advertising, business management, Class 38 for telecommunications, etc.

Upon application, the WIPO (World Intellectual Property Organization) will check whether the requirements of the respective legislation have been met. The International Bureau (International Bureau of WIPO) recognizes the trademark database of international brands. Subsequently, the International Bureau of WIPO shall inform its competent authority eg Greece (General Secretariat of Commerce – Department of trademarks) and sends the certificate of registration of the  international trademark holder in Greece or the authorized attorney. Also, the WIPO informs the Contracting parties, namely other countries the applicant  has entered in the  respective international trademark. At this stage, the Trademark Offices of the countries (Contracting Parties) in which the applicant wants to register its trade mark as international, examine the trademark  and decide whether to proceed in protecting the trademark as international or refuse protection.

Timeframes within the trademark examination will be completed by each which Trademark office  vary and they depend on each country’s system.  The testing procedure and acceptance  of a trademark as international may range from four (4) months to two (2) years.

The protection of international trade marks last ten (10) years and may be renewed for another ten (10) years. One can renew the international trademark on an indefinite basis.

The applicant can use the international trademark as an international brand even before submitting an application for an international mark at the International Bureau of WIPO or during the interval between the submission of an application for international registration and the approval and registration of the trade mark as an international of the World Intellectual Property Organization (WIPO). In this case, however, there is no guarantee that the trademark will be fully protected as international. However, if a mark is deemed to trade as well-known, and before then formally registered as an international, it can have a copyright protection.

The International trademark protection extends to over 80 countries around the world (as chosen by the applicant in the application, otherwise it only extends to countries chosen and included in the application).

Depending on how many classes the applicant is interested in registering for an international trademark, the calculation of fees (WIPO fees) will be proportional.

Necessary clarifications:

All trademark applications must be filed within the office of Greece and the international trademarks from there are brought to the World Intellectual Property Organization (WIPO), and then the trademark application is transferred to the local Intellectual Property offices depending on which countries the applicant  has chosen to proceed with the registration of the international trademark.

EXAMPLES FOR APPLICATION FORMS TO BE USED FOR INTERNATIONAL TRADEMARK APPLICATIONS:

• For the European Union, using the form MM2
• For Russia using the form MM3
• For United States of America using the form MM18

Important, for each trademark is to choose the right classes, ie classes that cover specific services and products that distinguish each trademark. The trademark classes in conjunction with the originality and the artistic part of the trademark  (if the trademark is more than just words, of course) confer a particularly distinctive character to the trademark and make it a valuable asset to every company.

Chryssa Tsiotsi
Eurofast Global, Athens office
www.eurofast.eu
Source: www.news.gr