One of the biggest questions we get from clients is, “How do I register my trademark internationally?”
Contrary to popular belief, there isn’t a single way to register your trademark in every country around the world. Each individual country is its own sovereign and requires its own trademark application. So, regardless of how you apply for your trademark on an international scale, every individual country is going to review your application and approve it or refuse it based on their local register. The one exception to this rule is a “European Trademark” that covers trademark registration in all the EU countries.
How Can I Register My Trademark Internationally?
In order to register your trademark internationally, there are two ways you can make your filings. One is through the Madrid Protocol, and the other is by hiring a local attorney in any individual country you would like rights and having that local attorney filing the application for you.
1. The Madrid Protocol
The Madrid Protocol is a system that was created among many different countries to make international trademark filings less burdensome. Rather than having to hire a local attorney to file a trademark application in each individual country, the Madrid Protocol allows a standard application to be filled out and submitted to any country that’s a member of the treaty.
When using the Protocol, a business owner can file one application with the World Intellectual Property Organization (“WIPO”) and check the box for each individual country in which rights are desired. The application then gets submitted to all those different countries for their own individual review. If there’s ever a refusal of the trademark in a particular country, you will then have to go and hire a local counsel to deal with the refusal.
One of the biggest benefits of filing through the Madrid Protocol is cost savings, because you don’t have to hire a local counsel to file each individual application. However, it’s still not a silver bullet solution to just getting the trademark everywhere you want. Certain countries will push back and issue initial refusals— requiring the trademark applicant to hire local counsel to respond to the refusal.
That said, one of the major drawbacks of using the Madrid Protocol is that you have to base your international application on an application or registration in your home country. If, for some reason, the USPTO denies your United States trademark application (presuming the US is your “home country”), that causes the refusal of all of those other applications that were filed around the world. So, your Madrid Protocol application is highly dependent on your US application registering and staying registered.
2. Hiring Local Counsel in Individual Countries
Because of the connection between your “home country” trademark application and your applications through the Madrid Protocol, it can often be advantageous to just go and hire local counsel to file the applications in other countries. This way, you’re not tied to whatever happens to the application in your home country.
For example, if our firm completes a clearance search for a United States based client that points to some risk for the US application, we may not want to use the US application as the basis for the filings in all the other countries. Instead, we suggest to the client that we engage local counsel in all the desired countries to make the additional trademark filings directly in those countries (and not through the Protocol). It may be a little bit more expensive, but if something happens to the US trademark, we don’t have to worry. The trademark in the other jurisdictions won’t be tied to the US application and will be reviewed on its own merits.
Now, you may be thinking that it sounds complicated to hire multiple attorneys around the world– and it is. But, if you hire an experienced trademark law firm (such as ours), we already have relationships with many local counsel around the world because we’re constantly working in these other countries.
Remember, there is not one way to internationally register your trademark. We have to go into each individual country, with the exception of the EU, and acquire rights. This can be done in two ways. One, through the Madrid Protocol, and two, through filing with local counsel in each individual country. If you have any further questions about your trademark or your situation, please feel free to reach out to us.