International Registration of a Trademark

International Registration of a Trademark

The effect of law protection of a trademark is limited by the territory where the trademark has been registered. Thus, if your trademark was registered in the Republic of Kazakhstan, then no one can prohibit registering the same mark in other CIS of other countries. Therefore, if your commercial interests cover more than the territory of Kazakhstan, you need to register your trademark in all countries concerned.

You may apply for the trademark registration directly with a Patent Office of each county, this, however, will take substantial material costs since such an application will require the translation thereof and payment for the services of patent attorneys registered in those countries. Moreover, such registration may take quite long time, for instance the registration of your trademark in Germany may take about three years.

You may significantly facilitate the process of the international registration of a trademark by applying the Madrid System of Trademark Registration.

The Madrid System of Trademark Registration allows obtaining the international registration of a trademark simultaneously in several countries that are parties to the Madrid Agreement and Madrid Protocol thereto. A trademark will be registered through the World Intellectual Property Organisation (WIPO). If the country, where you are intending to register you trademark, is not a party to the Madrid Agreement or Protocol, then the trademark will be registered directly with the Patent Office of that country.

The Republic of Kazakhstan is a party to the Madrid Agreement ad Protocol.

Procedure of the International Trademark Registration

• an application for the international registration of a trademark is filed with an authorised agency of Kazakhstan, which forward the application to the WIPO International Bureau. An application for the international registration of a trademark shall contain the information of a basic application or basic registration. The list of countries, where registration is requested, as well as goods and services that require the registration (the list of goods and/or services indicated in the international application shall match the same indicated in the basic certificate of the Republic of Kazakhstan);
• upon the receipt of the application, the WIPO International Bureau arranges an expert examination for the regularity of the application for the international registration of a trademark and compliance of the list of goods and services with the International (Nice) classification. Then it registers the trademark and forwards to the trademark owner a certificate containing the information entered into the International Register while registering;
• after the regular expert examination, the WIPO International Bureau sends the application to national offices of the countries where the registration is requested;
• National Office of those countries arrange a substantive expert examination of the applied trademark in accordance with the trademarks protection laws effective in those countries;
• after the said examination, a National Office of each country informs the WIPO International Bureau the decision regarding the trademark protection possibility in the territory of its country:
• the International Bureau sends the trademark owner the notice on the entries made to the International Register regarding the preliminary and final refusals to provide trademark protection, final decision following the refusal, as well as the notice on the entries made to the International Register regarding the invalidation of the registration and a copy of amendments entries made to the International Register;
• international registration of a trademark with the International Bureau is made for the period of ten year with a renewal option.

Comparative Table for the International Registration under the Madrid Agreement and Protocol

Our services:

• informational search;
• preparation and filing of an application for the registration of a trademark in Kazakhstan;
• preparation and filing of an application for the international registration of a trademark under the Madrid System;
• preparation and filing of an application for the registration of a trademark in any country of your concern that is not a party to the Madrid System;
• obtaining of the title of protection;
• amending and renewal of the trademark certificate;
• drafting and filing of objections to the expert committee decisions;
• representation and protection of interests in the Board of Appeal of the IP Rights Committee.

Experience:

Informational Search for Trademarks.  Informational search for trademarks for a foreign food manufacturer.  

International Registration of a Trademark. The international registration of trademarks for Kazakhstani bank, national net of clothing stores, national mobile operator, Irani paints manufacturer.

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