The Facts on Filing an International Trademark

By Josh Gerben, Esq.

After you have registered your U.S. trademark, you may be considering expanding your protections to other countries. In today’s global marketplace, it is often a good idea to have a strategic international trademark plan. Whether you reach customers in Europe or you manufacture goods in China, filing an international trademark can be a valuable, and often necessary, asset to your business. Knowing how to register your trademark in other countries is the first step in the process to protect your trademark internationally.

The Madrid Protocol is an international treaty that allows business owners to file in any one of its 90 member countries on a single application. While this simplifies the application process, it may not make the registration any easier to obtain. It is important to know the trademark laws in every country in which you plan to file, whether or not you use the Madrid Protocol application or file directly with each country’s trademark office. Consider the following international filing facts before you begin the process.

Filing Fact #1: There is No Single Application that Grants Global Trademark Protection

If you plan to register your trademark in many different countries, you may be wondering where to start. The Madrid Protocol provides a consolidated way to file your trademark in its member countries. In most cases, people filing an international trademark through the Madrid Protocol can file one application, in English, through the United States Patent and Trademark Office, or USPTO.

The Madrid Protocol certainly simplifies the registration process, but it does come with drawbacks. The first of which is that not all countries are members of the Madrid Protocol. For instance, Brazil and Hong Kong, as well as many Caribbean countries are not members. Using only this one application for international trademark filing could leave your mark vulnerable to counterfeiting and infringement in non-member countries. If you are seeking a trademark in a non-member country, you will need to work with local counsel to register directly with that country’s trademark office.

Filing Fact #2: Your International Trademark Registration will be Decided by Each Individual Country

Once a Madrid Protocol application is filed, it is reviewed by the World Intellectual Property Organization (WIPO), and sent to each country for which you have paid the individual filing fee. Each country then makes a determination to approve or reject your trademark based on local laws or existing trademarks in that country. The Madrid Protocol streamlines the application process, but it does not guarantee that your trademark will be approved in every country where you’ve registered. Whether you file through the protocol or directly with a country’s trademark office, trademark approvals are decided on a country-by-country basis.

Trademark laws and requirements differ by country. After your trademark application is filed, additional documentation or amendments may be requested by individual countries. In this situation, you would need to hire local counsel to navigate the process and file the appropriate responses.

Filing Fact #3: A Strong U.S. Trademark is Needed for International Filing and Protection

Individuals and business owners looking to file an international trademark must first register the mark with their home country. For U.S. citizens, this means that a trademark registered with the USPTO is required for international trademark filings. In addition to filing a federal registration, your trademark should be actively used and monitored to ensure that it is valid and enforceable. Within the first five years of filing through the Madrid Protocol, if your U.S. registration is canceled due to inactivity or lost because of insufficient defense against infringement, your international trademarks may be canceled as well. Therefore, it is essential for you to maintain a strong U.S. trademark.

In order for your trademark to be strong, you must consistently use it. Display your mark and the ® symbol prominently on your signs, products, and website. Be sure to use your trademark just as it appears in your original registration with the USPTO. In addition, actively police the unauthorized use of your mark or any mark that may be confusingly similar. Protection at home is a critical step to obtaining trademark protection internationally.

Filing Fact #4: Filing through the Madrid Protocol May Not Always Save You Money

International trademark filings through the Madrid Protocol can be significantly less expensive. Instead of hiring local counsel in each country to assist with the trademark filing, you are able to fill out only one simple application. If no oppositions or appeals arise in a particular country where you’ve registered, then you may be able to continue navigating the process without local counsel. Unfortunately, that is usually not the case when filing through the Madrid Protocol.

While all member countries have agreed to the same basic application, more information is typically needed for registration in most countries. The application is broad in nature, but most trademark offices have additional detailed requests. In those instances, hiring a local attorney will be necessary. In the end, it is often easier and less expensive to work with a local attorney throughout the entire process, from completing a comprehensive trademark search to filing and responding to appeals and oppositions.

If you’ve registered your trademark with the USPTO, you know the importance of the protections it provides. Those protections, however, only apply to trademark disputes within the United States. To ensure that your trademark, brand, and business are protected outside the U.S., it is important to register your trademark internationally. While the Madrid Protocol simplifies the application process, it does not guarantee approval, nor does it guarantee that the entire registration process will be easy to navigate. Whether you plan to register in just one country or several, it is often best to work with an experienced trademark attorney to assure the process runs smoothly.

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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.