Protecting trademarks used to designate our company's goods and services outside of Poland or the European Union may seem problematic at first glance. Many entrepreneurs may be concerned about having to find a lawyer in a given country or having to conduct the application process in a foreign language. It is indeed possible to conduct direct proceedings before the office of your choice. However, we can also take advantage of a second, much more favorable procedure. If we already have a registered trademark in a given country, we can file an international registration in another country or countries through the competent office in that country. The European Union Intellectual Property Office (EUIPO) can also serve as such an "office of origin." Owning a registered European Union trademark allows us to register our mark internationally without having to initiate direct proceedings in a given country.
Importantly, the World Intellectual Property Organization (WIPO) is the intermediary for international trademark registration in every case. Therefore, through the EUIPO, we submit an application for registration to WIPO, which examines our application and then forwards it to the offices in the countries we have indicated as the places where the mark is to be registered. It's important to emphasize that WIPO only confirms the conformity of the applied-for mark with the mark registered in the office of origin. The competent office in the country where the mark is to be registered will evaluate our trademark according to the same criteria as trademarks registered directly with that office and may refuse registration. In accordance with the law of the given country, such office will also set a deadline for the filing of oppositions by holders of previously registered marks. If such an opposition proves successful, registration in that country will be impossible. Of course, refusing registration in one of the countries we have indicated does not guarantee the same decision in another country.
To sum up, international registration may prove to be a much better and more convenient way to register trademarks than registering them in individual countries, especially if we conduct international business.
This alert is for informational purposes only and does not constitute legal advice.
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