EU trademark or WIPO Madrid registration
The obvious way to register a trademark in the European Union is to file it with the EUIPO, the Intellectual Property Office of the European Union in Alicante. It is quick and easy, and the customer interface technology is up-to-date. It is always possible to watch the status of the application, or even an opposition.
But many trademark applicants prefer an alternative way out of certain reasons. Basically it is possible get the same protection by the combination of a national trademark and a WIPO Madrid registration.
How to use the WIPO Madrid system for European Union trademark registrations
First, you need a trademark application or registration in a country which is member of the WIPO Madrid system. The member states are available on the WIPO website. You have to submit the WIPO application at the trademark office in the country of the origin.
For example, Germany is a WIPO Madrid member. We file a German trademark with the German trademark office, the DPMA (Deutsches Patent- und Markenamt). As soon as we have the confirmation of the filing, and this is seconds after submitting it electronically, we complete the DPMA and WIPO forms, pay the fees and file the application with the DPMA. Most important ist the selection of the WIPO Madrid member countries, in our example we chose the European Union who is actually member of the Madrid system as a whole, in order to obtain protection in all 28 EU countries.
The DPMA will then forward our application to the WIPO office in Geneva, where they will send it seperately to each of the selected countries’ trademark office. If the EU is selected, the EUIPO gets the application and will do its own examination. If there ar no complaints by the office, the tradmark will be registered with the WIPO and has the same protection as the “ordinary” EU trademark.
What is the advantage of filing a national trademark against a EU trademark registration
At first sight, the direct EU application is clearly cheaper than the combination of a national trademark and a WIPO motion (see below).
If the trademark application is challenged by a third party by an opposition, and the EUIPO finds that the opposition will be upheld, there is the fallback possibility to convert the EU application in national applications in order to save the priority date of the EU application. But the national applications underly the national rules, and the full national fees have to be paid for then.
If a WIPO/EU application is objected, and you can’t get protection in one country, e. g. Spain, you can obtain protection and pay only the WIPO fees for each country which are significantly lower than the fees of each national trademark office.
So, if you anyway would like to start your European business in Germany, or at least if you are not deliberately avoiding Germany, it might be a good idea to start with a DPMA trademark, and apply for international protection by a WIPO application following.
The DPMA is quick, a registration can be received often within one month. The fees are moderate (290 EUR for a trademark up to 3 classes), and it is strong when it comes to trademark litigation.
The following example illustrates the difference in costs:
Direct EU application
850 EUR (EUIPO fees) + 199 EUR (Our attorney fees) = 1.049 EUR
German trademark + WIPO Madrid EU filing
399 EUR + 199 EUR (Our attorney fees = 598 EUR) + 180 EUR (DPMA fees) + 1550 CHF (ca. 1.430 EUR WIPO fees) = 2.328 EUR
This means that in a usual way the price is more than double as high as the direct EU application.
Fallback fees in case of rejection
However, if an opposition based on a national trademark blocks your EU application filed in either way, you might save substantial funds if you chose the WIPO application. To continue the trademark application process in the countries not contested, for example you can continue for France, Benelux and UK. The office fees amount to ca. 815 EUR, while the Madrid fees are only 427 EUR in this example. Moreover, the lawyer’s fees will be much higher if you have to pursue applications before the national trademark offices.
Is the EUIPO trademark better for me or a national / WIPO trademark application?
One further disadvantage of the alternative way is that mostly it will need more time to get your trademark registered, depending on the selected country.
However, it makes sense to select the WIPO way if you anyway would like to cover countries which are not EU members, as Switzerland and Norway, or any other Madrid system members worldwide. Therfore you can expand the geographic protection range of your WIPO trademark without having to file for a completely new trademark.
If you have individual questions concerning your European trademark registration strategy, you should get legal advise and contact us.