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How Do International Trademark Laws Differ from the United States?
The most significant difference in trademark law in countries outside the US is how trademark rights can be established. For example, in the United States, trademarks rights are typically reserved for the first person to use the mark, even if that person is not the first to register it. Canada, Italy, and a host of other countries also implement ‘first-to-use’ laws regarding trademarks.
On the contrary, other countries, such as China, Mexico, and Vietnam, grant rights to the first person to file for the trademark. This means that anyone, regardless of their intent to use the mark, could gain trademark rights if they are simply the first person to file a trademark application. The most common example is China. There are many times the US owner of a brand decides to seek registration in China only to find out someone else has filed for the brand. The cost of dealing with this type of issue is astronomical compared to the cost of having just filed the trademark application earlier.
Other differences in intellectual trademark law are a bit more subtle. China, for instance, has a longer than average wait time for a trademark application to be registered and has different ways of categorizing goods and services than most other countries. Other countries, like India and the United Kingdom, will not allow any trademarks that could be seen as offensive or contrary to the public order.
How Can I Register My Trademark in Another Country?
Beginning the process to register your trademark in another country—or even multiple countries—can seem like a daunting task. Fortunately, the process may be easier than you think. While there is simply no one international trademark application that grants you trademark ownership across the board, an international treaty, the Madrid Protocol, has simplified the process considerably.
If you plan to apply to any of the 90 countries affiliated with the Madrid Protocol, you are able to fill out only one application, in one language, with the World Intellectual Property Organization, or WIPO. There is still a cost to file in each individual country so many businesses will pick the country or countries that are most likely to be a concern for that particular issue. With that said, while the Madrid Protocol streamlines the application process, it does not guarantee that your trademark registration will be approved in every country in which you apply. Each country will still review the application itself and you may need to find a local attorney to respond to any particular issues found in each country. This is why using a trademark law firm to make this filing can be helpful as we have relationships with local counsel to quickly address most common issues.
Finally, keep in mind that not all countries are affiliated with the Madrid Protocol. If you wish to file with a non-member country, you will need to file an application with that country’s trademark office directly through a local attorney in that particular country.
Understanding trademark law internationally is an important step in protecting your brand and growing your business. There was a time when only large businesses and corporations had to consider international trademark registration, but today, nearly any business could have global reach. As you grow and expand your business, your trademark strategy should expand as well. Once you’ve registered your trademark, in the United States and internationally, it is critical that you are diligent in policing the use of your mark. Owning a trademark grants you certain rights, but you must know the laws and be prepared to take action against others. Protecting your trademark is essential to your brand’s success.