How to file an international trademark
To file foreign trademarks is now much simpler:
- Get a corresponding South African trademark number ‐ either file a new South African trademark application, or use a previously filed / registered South African trademark number.
- Complete the Madrid Protocol / international trademark application Form MM2, designating countries in which you wish to secure trademark rights.
Note: South Africa is expected to implement the Madrid Protocol mid‐2018.
- Pay the international trademark filing fee.
- The South African Trademarks Office and WIPO will conduct formal examination of the international trademark.
- The Trademarks Office of each designated country will conduct substantive examination of the international trademark, and communicate objections via WIPO.
Note: responses to a substantive examination office action is made directly to the designated country's trademarks office (in the same manner as a national trademark application office action would have been responded to).
- In 18 months, examination of your international trademark will be completed.
- Renew the international trademark (effective in each designated country) on the tenth anniversary of the international trademark filing date, and each tenth anniversary thereafter.
Subsequent addition of designated countries
- After registration of your international trademark, complete Form MM4 to add designated countries.
- Pay the additional countries' designation fees.
- The Trademarks Office of each additional designated country will conduct substantive examination of the international trademark, and communicate objections via WIPO.
- In 18 months, examination of your additional international trademark designations will be completed.
- Renew the international trademark (effective in each designated country and each additional designated country) every 10 years (calculated from the filing date of the original international trademark).
Assistance with filing an international trademark
Although we recommend that your South African trademark be filed by IdeaNav's team of trademark attorneys after conducting a South African registrability search, we recommend filing the international trademark online, since:
- all the "foundational work" for your international trademark has been done when filing the South African trademark;
- your international trademark must be based 100% on your South African trademark ‐ there is no opportunity to make changes at this stage; and
- filing international trademarks online is quick, simple and inexpensive.
The Iptica international trademark system (launch date: July 2018) walks you through the simple international trademark filing process. Iptica also "holds your hand" during prosecution of your international trademark.
The international trademark prosecution and registration process is simple and streamlined and will be completed within 18 months of filing.
Upon filing, Iptica also adds your international trademark to its online PayAnnuity trademark renewal system. So, your international trademark should not lapse from unintentional failure to pay a renewal.