International registrations under the Madrid Protocol
International trademark registrations are registrations conducted under an agreement called the Madrid Protocol. The registration system is administered by the World Intellectual Property Organization (WIPO).
Who can apply?
In Finland, international registrations can be applied for by Finnish citizens, or by legal persons with a domicile, registered office or company in Finland.
How can I apply?
The applicant must have a Finnish registration that is identical to the international trademark in question, or an application pending in Finland. This is referred to as a basic registration or basic application. The international registration application must be consistent with the basic registration or the basic application.
Use a WIPO form and file your application in English.
The forms are available on the WIPO website.Open link in a new tab
Your application must designate the Madrid Protocol member countries in which you are applying for trademark registration. The registration will be validated in all member countries where there are no obstacles to the registration under their laws. As a result, your application may take effect in some of the designated member countries, even if there are obstacles to the registration in others.
File your international application with the PRH. We will examine and certify the international application and check that it is consistent with your Finnish registration or application.
Once we have checked that your application is consistent, we will send it to WIPO in Switzerland. WIPO will record the application in its International Trademark Register. In addition, WIPO will forward the application to the countries you have designated in the application. Each of the designated countries will then process your application in compliance with its own trademark legislation.
An application or a registration for an EU trademark also acts as a basic application or basic registration for an international registration application. In that case, the application will be directly submitted to the EUIPO, which examines the international application and ensures that it is consistent with the registration or the application for an EU trademark.
Please note: The validity of your international registration will be dependant for five years on the validity of your Finnish basic registration or basic application (the Central Attack rule). Every change in the basic registration or basic application during this period will also affect the international registration. For example, if you limit the scope of protection, i.e. the list of goods and services, of your Finnish registration, the list of goods and services of the international registration will be limited in the same way. Or, if your Finnish basic application is fully rejected, the international registration will be cancelled as well.
Where can I find the terms for the goods and services in English?
TMclass database
When compiling the list of goods and services of your international trademark registration in English, you can make use of the TMclass classification database.Open link in a new tab
Read further instructions on how to use the database on the TMclass website. The database includes a feature that helps you translate the Finnish and Swedish classification terms of goods and services found in the database into English.
Madrid Goods & Services Manager database
When compiling the list of goods and services of your international trademark registration in English, you can also make use of the MGS classification databaseOpen link in a new tab maintained by WIPO.
Read further instructions on how to use the database on the MGS website. The database includes a feature that helps you check whether the classification terms of goods and services found in the database are acceptable in WIPO or in the designated countries.
Bear in mind that the list of goods and services of the international registration cannot be more extensive than the list of goods and services covered by your Finnish registration or application.
Apply to extend the trademark protection in new countries
Once your international trademark has been registered, you as the owner can at any time file an application to extend the trademark protection to new countries. That may be necessary, for example, when your company is entering new markets or when new countries of interest to you join the Madrid Protocol.
How long will the registration be valid?
The international registration will be valid for ten years after WIPO has registered the mark. You can renew the registration for a period of 10 years at a time. You can renew your registration with WIPO via a centralised system, so you do not need to do it separately in each designated country.
Which countries are covered by the registration?
The registration covers the countries that you have designated in your application and that have approved and validated the mark.
The Madrid Protocol is in effect in about 100 countries. See the current member countries on the WIPO website.Open link in a new tab
How much does it cost?
In addition, we charge a fee for the receipt of your application for an international registration. See the fee for receipt on the page Application and registration fees.
WIPO International Trademark Register
Division of international trademark registrations
From 1 February 2019, it has also been possible to divide international trademark registrations. The option to divide a registration is applicable to registrations that are already in effect and applications pending in the designated country. After the division, the two registrations resulting from the division will still have the same owner. Division may be useful, for example, if your trademark could be accepted for a part of the goods or services covered by the registration, but there are registration obstacles for the rest of the goods and services, which may cause a longer processing time.
How to request division of a registration
To divide your registration, file a request with the office of the designated country. Use the form MM22 available on the WIPO website (Request for the division of an international registration)Open link in a new tab. Enclose a list of the goods and services you want to separate from the basic registration. The goods and services on the list must be grouped based on their classes. The office of the designated country may ask you to give further details where needed. The office can also charge a fee for the processing. The Finnish Patent and Registration Office (PRH) charges the normal application fee for a division request.
Once the request for the division is in order, the office of the designated country will send it to WIPO. WIPO will examine the request, and, when they find it can be accepted, they will register the division and notify the applicant and the office of the designated country.
Merger of international registrations is not possible in Finland
The rules about the merger of international trademark registrations will not take effect in Finland. Finland has expressed a reservation about this rule, as the Finnish Trademarks Act does not allow a merger for national registrations or applications.