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Pros and Cons of Filing a WIPO Trademark Application: Protecting Your Brand Worldwide

WIPO, the World Intellectual Property Organization, protects intellectual property worldwide, including registering trademarks. WIPO's international trademark system, known as the Madrid System, provides a centralized way for trademark owners to apply for protection in multiple countries through a single application. While there are many benefits to filing a WIPO trademark application, there are also some drawbacks.

One of the main advantages of a WIPO trademark application is that it offers a streamlined process, meaning less administrative work for the applicant. Additionally, filing a trademark application directly in each country can be expensive, especially when local representation is required. With WIPO, one application covers multiple countries. WIPO also offers a fee calculator on their website, allowing applicants to estimate the cost of their international trademark application. Another benefit of a WIPO trademark application is that applicants do not need a local attorney unless an issue arises during registration. As WIPO's filing fees are usually higher than a direct filing, not hiring local representation tends to make WIPO more cost-effective for those seeking protection in three or more countries.

Additionally, official notifications from WIPO will be in the language of the international registration, making it easier for applicants to understand the process. Additional countries can be added to the international registration later through a subsequent designation (priority dates are only maintained in the six-month filing window). WIPO offers an online platform for updates to the register and easy online renewals.

However, there are also some drawbacks to consider when filing a WIPO trademark application. For example, WIPO does not cover all territories, meaning applicants may need to file a separate application in countries not covered (WIPO list). In addition, WIPO only offers protection for the exact mark filed, meaning applicants may miss out on broader protection offered by local trademarks. This is especially true if your base application is a US mark, as US marks can have comparatively narrow class descriptions.

Additionally, if an issue arises during the registration process, applicants may need to hire a local attorney, incurring additional costs. Again, this is where the US can be the squeaky wheel in the system. If your base application is not in the US, you will almost certainly have to hire local representation to amend your class description to fit the US's more narrow guidelines.

Registration with WIPO can also take up to 18 months, longer than most direct filings, and goods and services are tied to the base mark. Again, the US is particularly problematic as the US requires "use" for a trademark to be maintained. Another party can even cancel a US mark by non-use. If your base mark fails, your entire Madrid application set fails.

Another potential drawback is that applicants may need to convert their international registration to a local mark before selling products in a particular country, which can be expensive. WIPO may also not notify applicants about issues, such as oppositions, in a timely enough manner for a response.

In conclusion, WIPO trademark applications offer a streamlined and efficient process for protecting a brand worldwide. By registering a trademark with WIPO, companies can protect their intellectual property rights and prevent others from using their brand without permission. However, applicants must also be aware of the potential drawbacks and weigh the pros and cons carefully before deciding whether to file a WIPO trademark application or a local application in each country.


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