Obtaining International Trademark Registration and Protection: 4 Quick Facts

After you have filed for your US trademark, you may want to expand your trademark and brand protection globally to other countries outside of the US. Whether you have a new business opportunity, are targeting new markets for penetration, or simply want to strengthen your trademark protections in the age of global commerce facilitated by the internet, international registration of your trademark can be a valuable asset to your business, especially in industries where sales or customers are more likely to be siphoned off by illegitimate use of your mark through counterfeiting or other methods.

If you’ve looked into international trademark protection at all, you’ve likely heard of the Madrid Protocol. If you haven’t, in a nutshell, the Madrid Protocol is a treaty comprised of over 80 countries, including the U.S., which allows for a streamlined trademark application process to each nation which is a member of the Protocol.  The Madrid protocol simplifies that process of obtaining international trademark rights, but it’s not the “global trademark” that it may seem like at first glance. There’s still a lot of time, research, effort, and cost involved in expanding your U.S. trademark internationally, regardless of whether you utilize Madrid or not.

You also need to be cognizant of the trademark law in each country in which you’re filing through the Madrid Protocol – there’s no one set of rules you can adhere to via the central agency. If you’re thinking about using the Madrid Protocol for international filings and want to know more, let’s look at four important things to note:

FACT #1: There is no single trademark filing which provides you with trademark protection in every country.

 A filing through the Madrid Protocol gives you the opportunity to file an application in up to 80 countries, however, it is not a global trademark application — you still must pay a filing fee for each country in which you want the trademark to be filed.  Then, after your trademark application is filed, it still must go through the application process in each country to determine if it is registerable in that country.

It’s a common misconception that the Madrid Protocol is a quick and easy way to gain global trademark protection. In reality, the Madrid Protocol trademark application is only as broad or localized as you specify (and pay for).  Finally, there are very major countries that are not Members of the Madrid Protocol, and, you would not be able to obtain protection in these countries unless you file your applications directly through local counsel (Canada, Mexico and Brazil are some of the largest countries that are still not members of the Madrid Protocol).

FACT #2: Your international trademark application (i.e. Madrid Protocol filing) will still be subject to approval or refusal from individual governments.

 The Madrid Protocol saves you a bit of time because you’re only submitting one application to a central clearing house, which, in turn, files the application in any country for which you have paid the individual filing fee.

That being said, the central clearing house does not offer a blanket approval or refusal. It serves one purpose: to get your applications where they need to be, saving you a bit of time (and the need to translate the application for each individual country). Once your trademark application gets to each individual government, it’s up to each local government to review the application and register or deny your trademark based on local laws and trademark registrations that already exist in that country.

Because each country has different trademark laws you may find that you need to respond to requests for amendments to your applications in various countries.  To do this, you would need to hire local counsel to file the appropriate responses.

FACT #3:  Filing for international protection of your trademark requires even more vigilance for your U.S. registration.

 If you file for international protection of your trademark through the Madrid Protocol, your international applications and subsequent registrations are all dependent upon the viability and health of your registered U.S. mark. For the first five years of any international mark granted through Madrid, if your U.S. mark is cancelled or lost through inactivity or insufficient defense of an attack on your US registration, your registrations in other countries will be cancelled as well unless you convert them to a nationalized or direct application with each country’s trademark agency.   Therefore, it is incredibly important to ensure your trademark attorney is monitoring your US registration to ensure it remains valid and enforceable.

FACT #4: The Madrid Protocol won’t always save you money when filing a trademark internationally. 

Filing an international trademark application through the Madrid Protocol it is significantly less expensive than hiring local counsel in each country and filing applications one by one.  That being said, because the Madrid Protocol is not a single “global trademark” application, each country in which you are applying to through the Protocol still requires that your trademark not conflict with any local registration, and, complies with all local rules. Should any of those conditions not be met, you’ll likely receive an initial refusal, and, then still need to hire a local counsel to respond to the local trademark office.  Depending on the complexity of your trademark and the issues involved, it is sometimes recommended to file through local counsel to ensure a smoother process.

For more information on filing for international trademark protection please contact trademark attorney Josh Gerben by submitting a contact form through this Web site.

Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.

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