Trademark registration (part 2)

In our previous article (see: Trademark Registration: General Information), we shared general information about the local trademark registration and discussed the importance of registration. However, when there is an intention to expand the geographical scope of business activities and enter international markets, the need arises to protect the trademark under which goods and services are offered at the international level. This article provides general information on the international registration of trademarks.

1. Regulatory framework.

The international trademark registration is governed by the Madrid Agreement and the Protocol Relating to the Madrid Agreement. The Republic of Azerbaijan has been a party to the Protocol since 15 April 2007. The elements of the Madrid Protocol are reflected in domestic legislation through the Law of the Republic of Azerbaijan “On Trademarks and Geographical Indications” (hereinafter referred to as the Law).

More specifically, pursuant to Article 24 of the Law, legal entities and individuals of the Republic of Azerbaijan have the right, in accordance with the established procedure, to register trademarks and geographical indications in foreign countries or to carry out their international registration.

2. Procedure for international registration

According to Article 24 of the Law, an application for the international registration of a trademark is submitted through the authority determined by the relevant executive body.

In practical terms, a trademark must first be registered within the territory of the Republic of Azerbaijan. After local registration, an application for international registration is submitted through the Intellectual Property Agency (hereinafter referred to as the Agency). When submitting the application, it is important to ensure that the list of goods and services is prepared in accordance with the latest version of the International Classification of Goods and Services (Nice Classification) and corresponds to the national registration.

Once the Agency verifies that the international application has been correctly prepared, it is forwarded, through the Agency, to the International Bureau of the World Intellectual Property Organization (WIPO) (hereinafter referred to as the International Bureau).

After receiving the application, the International Bureau conducts a formal examination to ensure compliance with the requirements of the Agreement, the Protocol, and the relevant regulations. If no deficiencies are identified, the trademark is entered into the International Register, the information is published in the WIPO Gazette of International Marks, and the application is forwarded to the patent offices of the designated countries. The competent authorities of those countries conduct a substantive examination within one year and notify the International Bureau of the results.

3. Fees.

Pursuant to Clause 2.14 of Decision No. 198 of the Cabinet of Ministers of the Republic of Azerbaijan dated 19 May 2022, a service fee of 60 AZN must be paid to the Intellectual Property Agency of the Republic of Azerbaijan for the acceptance, preparation, and submission of the international application to the International Bureau.

Fees for international registration are calculated in Swiss Francs (CHF). One of the key differences between international and local registration is that, in international registration, whether the trademark is in color or in black and white affects the amount of the payable fee.

Accordingly, under the Madrid Protocol, the following fees apply for international registration:

Basic fee:

• Black-and-white trademark – 653 CHF
• Color trademark – 903 CHF
• Supplementary fee for each designated country – 100 CHF
• Fee for each additional class exceeding three classes – 100 CHF

It should be noted that individual (special) fees may apply for certain countries.

To determine the total amount payable for international registration, the Madrid Fee Calculator (https://madrid.wipo.int/feecalcapp/) available on WIPO’s official website can be used.

4. Conclusion.

As can be seen, the international registration of a trademark is based on prior local registration and is a legally complex, long-term, and multi-stage process.

As Ironwood Consulting, we are ready to provide our clients with professional, consistent, and reliable legal support at all stages of the application process for both local and international trademark registration.