How to remain updated on international tax variations as intellectual property is concerned
Registering an international trademark means that protection can be obtained from countries which are signatory to the Madrid Agreement. To achieve such protection, a single international registration application must be filed through the Madrid system, under which, the signatory countries must provide the brand equal protection to that which it confers upon its national marks.
Registration of an international mark
Registration of the international trademark is managed by the World Intellectual Property Organisation (WIPO). Based in Geneva, this organisation also publishes the announcement of the registration in the Gazette of International Marks.
After the WIPO makes the international registration known, the trademark will be able to be analysed by the relevant bodies in signatory countries, enabling them to refuse the registration if the requirements laid down by national law are not met by the brand. Brand owners have the opportunity to oppose such a refusal, however this must be done directly between the owner and the country themselves – WIPO is not involved at all – within the time limit stipulated by the country.
In any event, before tackling the problem of costs for completing these international procedures, it is important to be clear that a national or EU trademark must first be registered before the protection is extended worldwide under the Madrid system.
Looking at the costs, especially international fees, it is worth noting that there is no fixed, standard price for registering the trademark internationally, as costs vary according to the countries in which protection is sought. Therefore, the cost of registering an international trademark depends on which, and how many, countries are listed, as per the variation in taxes from country to country.
Fees are not fixed, but dependent upon various factors, and as such it is important to remain up to date on any variations in cost. Factors affecting the fees for international registration include:
- Which countries it is registered in;
- The number of countries it is registered in;
- The number of classes to be registered in;
- Whether registration originates from a national or an EU mark; and
- Nature of the mark itself, whether it is a word only mark, or a colour mark etc.
To this end, WIPO has made available an automatic system to calculate the taxes paid for each country in which protection is sought. This fee calculator and details of how much is owed for registration can be found on the WIPO website where you need simply to input the name of the country. This website is regularly updated so as to ensure accuracy, so there is no risk of being provided with out of date figures.
Aside from the useful tools made available by the WIPO, it is always advisable to seek the advice of an intellectual property expert, for assistance in understanding and making the most of this complex procedure.
In pursuit of completeness, attention must also be paid to some other issues which may arise in international registration – in addition to the variations mentioned above, other fees may also be required surplus to those needed for the application. Some countries, such as Japan, require a registration tax in addition to the application fee once the trademark has been approved by the office. Moreover, additional costs can be encountered with regards to receiving the original trademark registration certificate.
These varied charges show the importance of staying updated on brand registration costs in different countries so as not to be left with an unexpectedly large bill.