Trademarks are intrinsically tied to a business’ identity and reputation, built over time with effort and investment to provide a distinguishable edge over the competition.
As you plan to take your business beyond Brunei’s borders – whether in the form of a product or service – protecting your trademark in your target market is a fundamental measure that you should consider.
Trademarks, as intellectual property (IP), are territorial in nature; they are only recognized after you have registered within the sovereign borders where your product or service is being sold.
Simply put; if you don’t register your trademark where your business is operating or your product is found, someone else can.
Registering your trademark internationally has often meant hiring foreign legal representation to engage the local IP offices where your business is exporting to – a costly and arguably cumbersome process for smaller companies who often opt out of the procedure.
However, Brunei businesses now have a much simpler, more effective solution for international registration – the World Intellectual Property Organization’s (WIPO) Madrid System.
As a “one-stop solution” for registering and managing trademarks worldwide – businesses can file one application, in a single language, paying a single set of fees to protect their marks across the territories of up to 98 members which covers 114 countries at present.
Biz Brunei sit’s down with WIPO’s senior legal officer Juan Rodriguez to get the scoop on how the Madrid system works, and what it means for local businesses.
Q: What is a trademark and why do I need to protect it?
A: A trademark is a phrase, words, symbol or design that represents a company or their product. It’s an integral part of branding that allows businesses to separate themselves from other players in the market offering similar goods or services.
Registering your trademark – which is a separate process from registering/creating your business name – is important because it gives you the grounds to prevent someone else from riding off the brand that you’ve built. You’re positioning yourself to be able to take legal action effectively should another company or person copy or imitates your trademark.
Q: What is the Madrid System and how does it work?
A: The Madrid System – also known as the International Trademark System – is a one stop solution for businesses to register their trademarks worldwide under one centralized system.
To file an international application you first must already have your trademark registered in your “home” office – in this case the Brunei Intellectual Property Office (BruIPO).
You then make your international application to this same office who will forward it to WIPO and we will conduct a formal examination. Once approved, we will send you a certificate of international registration and notify the foreign IP offices in the countries you seek to protect your mark in.
The foreign IP offices will make a decision over your application within 12 to 18 months, as they have to factor their country’s legislation. WIPO records these decisions and will notify you.
Q: 18 months is a substantial amount of time. What if I want to already branch out or export abroad during this period?
A: 12 to 18 months is actually relatively quick to register a trademark, when compared to the traditional route of applying directly to a foreign IP office. In many cases, doing so can take several years before your trademark is legally registered.
The good news is that by simply filing the application, you instantly put your business in a better position for protection.
This is because once your trademark is granted, the date of effect is back dated to the date of application. You are therefore protected from any competing applications or claims that come after yours.
There is still a risk, albeit much smaller, if a particular IP office rejects your application – but they will not do so without any significant reason.
Q: How much will it cost to register a trademark?
A: This depends primarily on (1) the number of countries you are seeking registration to, (2) the class of goods and services, and (3) the individual cost of registration in those countries.
However we can assure that it will not cost more than if you filed an application directly. You also save on hiring a legal representative and translators in a foreign country to assist with the application process for example.
The application fee itself is 903 Swiss Francs (approximately 1266 BND) for colour trademarks and 653 Swiss Francs for black and white (915 BND).
Each country either has a complementary/individual fee, and then a supplementary fee if you are registering your trademark for more than three classes of goods or services. The period of registration is 10 years.
BruIPO is located on Level 2 (East Wing) of the Design & Technology Building, located within Simpang 32-37 of Kg Anggerek Desa. To learn more visit www.bruipo.gov.bn or contact +673 2380 965 to get in touch directly.
To learn more about the Madrid system visit www.wipo.int/madrid/en where application forms and fee calculators can also be found.