Q & A - WIPO Trademark Registration

Lexi Tichenor,

We recently hosted a webinar along with Dr. Holger Gauss, Attorney and Partner at Grünecker where we explored what impacts the clearance process as well as potential things that may go wrong in the process when registering trademarks using WIPO.

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If one files an international registration and designates the EU but not Benelux, does that mean no protection in Belgium?

If you designate the  EU, you automatically designate all 27 member states. Within the EU the Benelux is seen as one member state. Belgium, Netherlands, Luxembourg are covered automatically if you designate the EU.

Is there a standard way to refer to registration? I hear WIPO, Madrid, International registrations.

Actually, there are some more International registrations - IR as a shortcut. It’s all the same. Our files are named International registrations but internally I usually speak about WIPO filing.

Can you explain the main difference between the Madrid agreement and Madrid Protocol?

The Madrid agreement - there is only one country (Algeria) who has not signed the Protocol. The protocol is much more user-friendly. For the Madrid agreement, you have to file it in French. The protocol allows all English filings. For the Madrid agreement you need to have a basic registration which means that your mark must be actually registered for being able to file.

Is it possible for an agent to be automatically assigned as a recorded agent on the application in WIPO upon filing and renewal? 

Yes you can, you can actually really easily apply to be a representative of your trademark. Appointing a representative is free of charge.  

Does WIPO registration enable also filing the basic application in Chinese characters? 

I think it should be possible. I think you can file any national trademark in the local characters.

If you can choose between WIPO and OHIM (Now EUIPO)  for registration of a trademark in the EU, which will you choose and why?

It depends. If you want to have a quick registration then you would file the EU directly because then you will have a registration in 6 months. Time is the main aspect.

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