How To Register A Trademark Internationally
Trademarks are one of the most important forms of intellectual property. They protect the brand and help differentiate products from those of competitors. While many companies take the step to register a trademark domestically, they may not register a trademark internationally.
Why International Trademark Registration Is Necessary
According to the International Trademark Association, trademark rights are distinct in each jurisdiction in which they are obtained. Each jurisdiction has the right to recognize and protect trademark rights in ways that fulfill the jurisdiction’s policies. Therefore, just because a trademark is registered in one country does not mean that another country will recognize it.
Additionally, some countries have “first to file” rules that recognize the trademark as belonging to whomever first files the trademark application, even if the real owner of the trademark is someone else. Register a trademark internationally to help protect intellectual property rights in other countries where you do business.
Benefits of International Trademark Registration
International trademark registration lets applicants file their trademark applications in multiple jurisdictions. This provides the following benefits:
- Companies can register their trademarks in multiple countries with one uniform application
- An organization, such as the World Intellectual Property Organization, checks the accuracy of goods and services and the application details
- International registration has fixed examination periods, making the process more predictable
- Examination periods may be shorter than the periods for national trademark offices
- International registrations may be able to be extended to additional countries that were not included in the original designation
- Businesses can renew their trademarks through one system
Who Is Responsible for Overseeing International Trademark Registration?
The party that oversees the international trademark registration process and grants trademark protection depends on where the international application is filed. Some options for international trademark registration include:
- European Union Trademark—Recognized in all European Union member states; as the European Union expands, so does the trademark recognition
- Paris Convention—An international treaty that 177 countries have adopted; nationals of any of the member countries receive intellectual property protection in all member countries
- Madrid System—One of the most popular forums for registering a trademark internationally, the Madrid System provides protection for 113 countries. The World Intellectual Property Organization administers the trademark program. The United States is part of the Madrid System. Applications for registration are examined based on the laws in each designated country
- Andean Pact—An agreement among Bolivia, Colombia, Ecuador, and Peru that applies the same trademark law among these countries
- African Regional Intellectual Property Organization—Created by members of some English-speaking nations in Africa, such as Sierra Leone and Liberia
- African Intellectual Property Organization—Established by some French-speaking nations in Africa, including the Central African Republic and Chad.
Registering a Trademark Internationally
Each international trademark registration is different depending on where the trademark is registered. Registering a trademark under the Madrid System involves the following process:
- Register a domestic trademark—The Madrid System requires that a trademark first be registered with the trademark office where the applicant has the necessary connections.
- Create a link to the designated country—The applicant must be connected to one of the countries recognized by the Madrid System through establishment, domicile, or nationality.
- Complete the international application—The applicant completes the international application. The applicant designates each country where protection is needed. Applications can generally be filed in English, Spanish, or French. The applicant pays a basic fee, a supplementary fee, and a complementary fee.
- Review the international registration—The International Bureau examines the application for compliance. If it detects no irregularities, it records the mark in the International Register, publishes it in the proper publication, and notifies the designated countries. Each designated country’s trademark office is responsible for determining whether the trademark conflicts with an existing registered trademark.
- Receive Grant of Protection—Each designated country issues a statement granting protection. If the designated country finds there is conflict, that country can issue a refusal of protection instead.
Tips for International Trademark Registration
The following are tips to help with the international trademark registration process:
Register the Trademark in the United States
It is vital that you register your trademark first in the United States through the United States Patent and Trademark Office.
Conduct Due Diligence
To protect the trademark in another country, it is essential to understand the legal systems in other countries where you are considering registering your trademark. The International Trade Administration and World Intellectual Property Organization provide valuable information for this part of the process.
Be Careful with Translations
If you are registering the trademark in a country that has an official language other than your own, be careful with translations. The specific terms used on the application can impact protection. Additionally, some terms may not be appreciated by other countries and can damage the brand. Consider how your trademark will be translated into other languages before registering it in another country.
Do Not Delay
Because many countries recognize a first-to-file system, it is important to not delay in registering the international trademark when you determine that you would like to register the trademark internationally. Under this system, a third party may legally register your trademark and try to sell it back to you later.
Work with an Intellectual Property Lawyer
International trademark registration can be a complex process. A knowledgeable intellectual property lawyer can help with the unique issues associated with this process, analyze which countries where the trademark should be registered, and answer questions that arise during the process. The experienced intellectual property lawyers at Amini & Conant can help.