International Trademark Protection

A United States trademark registration will not protect your trademark in a foreign country. Trademarks are territorial and must be filed in each country where protection is sought. Importantly, the law of many countries is governed by the “first to file” doctrine, meaning that the first trademark applicant will be granted trademark rights.  So, delaying protection of brands overseas can lead to many undesirable consequences, including ownership of your brand by a foreign third party.  Brand Registry Trademark assists online sellers in evaluating, strategizing, and obtaining international trademark protection.

Foreign Trademark Clearance Searches

Because each country is a unique jurisdiction, with its own laws and rights grants, trademark clearance searches should be conducted for each country in which protection is sought.  It is not enough that a trademark has been cleared for use or registered in Country A if protection is sought in Country B.  Because a third-party in Country B may own rights to the trademark, or a confusingly similar mark, an independent trademark clearance search must be conducted for Country B.

Foreign Trademark Application

When considering international trademark protection, it is also important to understand that there are different mechanisms by which to start and proceed with trademark application and registration.  These include using international treaties, on one hand, and, on the other, filing directly in the countries in which protection is sought.  Each mechanism has advantages and disadvantages.  A good international trademark attorney can help you select the best mechanism for your global trademark strategy and particular circumstances.

Using International Treaties to Protect Trademarks Abroad

International treaty mechanisms like the European Community Trademark Registration (CTM) and Madrid System offer cost-effective mechanisms for obtaining international trademark registrations.  The CTM allows a trademark applicant the ability to obtain a single trademark registration for all EU countries, while the Madrid System (e.g. Madrid Protocol) allows a trademark applicant or registrant in a home country the ability to extend the trademark application or registration to one or several other countries, and to continue to add countries as the brand expands geographically.

While using international treaties can be a cost-effective way to obtain foreign trademark rights, one drawback is that they are vulnerable to “central attack” meaning that if the home country registration is cancelled, an international registration five years old or less is also cancelled, unless they are transformed into national applications.

Filing Directly to Protect Trademarks Abroad

In some instances, it makes sense to forego international treaty mechanisms and to instead file trademark applications directly in the country or countries for which protection is sought.  For example, some countries are not members to international treaty mechanisms, so trademark application must be sought directly.  However, these countries are increasingly fewer as more countries become members to treaties like the Madrid Protocol.

In another example, in specific circumstances—such as when seeking registration in China—it makes more sense to file directly because that route is more cost effective and the particular country’s trademark law and/or unique examination system is less amenable to the uniform approaches common to treaty mechanisms and more friendly to trademark applications filed directly.

Contact Brand Registry Trademark today to work with international trademark attorneys that can help you with international trademark application and registration to protect your brands abroad.