International registration of trademarks
The Madrid Protocol system is administered by the World Intellectual Property Organization (WIPO) in Geneva. Individuals or companies in any of the member countries of the Madrid Protocol may apply for registration of a trademark in other member countries on the basis of a national application or registration of a trademark.
Norwegian basic application
As a Norwegian applicant you must have a national application or registration as a basis before you can apply for international registration. You must have either Norwegian citizenship, or a residential or business address in Norway.
The international registration is dependent on the national basic application or registration for 5 years. If the Norwegian application is not registered, or your registration is deleted before five years have passed, the international registration will also be deleted. It may therefore be worthwhile to wait until the Norwegian application has been processed before filing an international application. You should still apply within 6 months from filing your Norwegian application, so that you can take advantage of the priority rule.
Which countries should you choose?
Your trademark is only protected in those countries where it is registered. This means that you risk being banned from important markets if you have not registered your rights in time. You should therefore carefully consider in which countries you wish to use your trademark and thereby ensure market access.
It is a good idea to register the trademark in the country where the manufacturing process takes place. If you have established your warehouse stock abroad or are considering establishing it there in the future, you should also safeguard your rights to the trademark in these countries before others do so.
The more countries you wish to register your trademark in, the more expensive it becomes. It is therefore a good idea to prioritise which markets are most important to you.
Think strategically when deciding which countries are attractive to you and whether or not to apply with priority from Norway. Some countries have rules on duty of use and some require that you can document using the trademark before any registration or renewal of a trademark.
Which countries you should apply in is an important strategic decision. It may therefore be a good idea to contact a patent attorney for advice before making major investments.
How to apply?
You file an international application to WIPO via the Madrid e-Filing service on the WIPO website. The Norwegian Industrial Property Office (NIPO) will validate the application you have filed to WIPO before it is processed and distributed to those countries you have selected. Each country will then assess whether is is possible to register the mark in that country.
Advantages of using Madrid e-Filing:
- Automatic import of data in the application. Data is imported from your basic application directly to your international application.
- Payment of all fees is made in the Madrid e-filing service. You can pay by credit card, through your WIPO account or bank account.
- Direct access to Madrid Goods & Services Manager which translates and checks classification and terms.
- NIPO validates your application directly in the Madrid e-filing service.
- Communication about your application is done electronically through the service.
- Updated application status in real time in your WIPO account overview.
- The service covers the entire registration process.
Processing time in each country may vary, but is not normally longer than 18 months. If the trademark is not rejected within this period, it is considered registered in the country concerned.
Benefits of applying via the Madrid Protocol
- It is easier and cheaper to submit one international application under the Madrid Protocol than to apply in each country separately.
- You may broaden your international registration to include additional countries at a later date.
What does it cost to apply via the Madrid Protocol?
The Norwegian Industrial Property Office requires a clearance fee of NOK 800. The invoice must be paid by the due date, or we will consider the application as not filed.
In addition to the clearance fee you must also pay international application fees to WIPO. The amount depends partly on how many countries you have selected in your application and how many classes of goods and services you have applied for. You can calculate the fee by using the WIPO fee calculator. The amounts are in Swiss francs.
WIPO fee calculator
More information about applying for an international trademark
Renewals and other changes
Renewals and other changes to a registered international trademark (via the Madrid Protocol) must be made directly to WIPO. Only the initial examination takes place at NIPO. Other changes may be, for example, transfers and name changes.
Fees for renewing trademark registrations vary from country to country. To find out how much you have to pay in other countries, contact your patent attorney or the patent office in the country in question.