How to Register Your Trademarks Internationally

Gergana Hristova Miteva

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Trademark Application Attorney

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Posted over 1 year ago. 2 helpful votes

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International Trademark Registration Overview

Trademark owners may use the Madrid System (comprized of the Madrid Agreement and the Madrid Protocol) to secure international trademark registration in countries which are parties to one of these treaties (note that I am using "trademark" in this guide to signify all of trade, service, certification and collective marks). The United States has been a member of the Madrid Protocol since 2003, which means that US-registered trademarks are eligible for registration in any and all countries party to the Madrid Protocol.

International trademark registration is administered by the International Bureau of the World Intellectual Property Organization (WIPO), located in Geneva, Switzerland. Most communications, however, regarding international trademark registration, go through the applicant's home county trademark office, which in the United States is the US Patent and Trademark Office (USPTO).

As mentioned above, the International trademark registration system is based on two treaties - The Madrid Agreement and the Madrid Protocol and counties which are parties of either of these treaties are counties in which applicants may secure international trademark protection. It is important to clarify, however, that an applicant does not have to secure trademark protection within all counties parties to the Madrid Protocol, trademarks may be secured with select countries only. The fees payable for registering a trademark internationally vary with each country, but are not exorbitant and should be manageable even for small and medium-sized businesses.

Why Register Your Trademarks Internationally?

For individuals and businesses whose products or services are internationally traded or globally recognizable (or seek global recognition), it may be of utmost importance to have recourse against trademark infringers abroad. In many countries it is customary to take advantage of the success of a foreign business’ goods or services by manufacturing locally goods or services of lesser quality and blatantly communicating to the local customers that the origin of these goods or services is the foreign business or that the foreign business has authorized or endorsed the sale these goods or services. The Madrid International trademark registration system was devised to address this and make it easier and cheaper to register, maintain and police marks internationally.

Advantages of International Trademark Registration

As it is difficult to sue foreign entities in the United States if they have no contact with the country and they do not do business within the United States which is why an international trademark registration and ability to arbitrate or sue abroad may be an aggrieved business’ only recourse. This may serve not only to compensate any monetary damages suffered by a business, but also to discourage future trademark infringement in the various counties where the trademarks have been registered.

Before the Madrid System was instituted, a business would have to hire a local lawyer to prosecute a trademark in every country where it does business. The Madrid System has not only simplified the process of trademark registration by having a single filing for all contracting countries and a single payment of all fees (well, almost single, an applicant needs to pay the local trademark office’s international application fee and subsequently pay the International Office’s fee in francs), but also by permitting the applicant to retain a single attorney (preferably one who speaks at least one of English, French or Spanish because the application is only available in these languages at the moment) to do all the international registration work and this attorney would generally, but not necessarily, be located in the home country of the applicant.

Another non-trivial benefit of having a single body of international trademark administration is that any future changes or transfers or additions to the mark are made with one procedure and payment of a single fee. Last but not least, the fees payable for international registration have significantly decreased with the adoption of the Madrid System. Each country may still set its own fee, but the fees are more modest and are all payable to the International Office in one currency, saving quite a bit of banking fees and headache to the Applicants.

Disadvantages of International Trademark Registration

Like any other international treaty, the Madrid Protocol and the Madrid Agreement and protections stemming from them are subject to the changeability of the contracting countries' politics and amendments to the treaties, which are not always to the benefit of registrants. Another factor to be considered is that while the Madrid System has, without a doubt, simplified the international registration process, it is still a very lengthy and burdensome process which generally takes at least a year to complete (however, this is also true for domestic United States registrations). Having differing domestic rules also adds to the uncertainty of success because an applicant may sail through the registration requirements of the home trademark office and the International Bureau and pay all fees therein, to only be rejected by the individual contracting country’s office. Thankfully, this is an unlikely result mostly because the International Bureau’s requirements are so thorough that it is hard for individual countries to top them, and overall, it would be a shrewd move for any business to register its trademarks internationally if it could benefit from such international protection.

Who May Apply for International Trademark Registration?

Only a person or legal entity who is a national of or is domiciled in or has a commercial or industrial establishment in a country which is party to the Madrid Agreement or the Madrid Protocol may use the Madrid System of international trademark registration to secure trademark protection internationally.

A trademark is subject to international registration if it is registered with the home country's trademark office, or if an application for registration has been submitted in the home trademark office (only countries parties to the Madrid Protocol may apply for international registration prior to securing domestic trademark registration).

Application to multiple countries and for multiple international classes and services may be submitted at the same time.

May Countries and Goods/Service Designations Be Added to an International Registration?

Yes. The Madrid System provides for subsequent addition of contracting countries and classes of goods/services to the international trademark registration. However, both the applicant’s country and the designated country must be members of the Madrid Agreement/Protocol, whichever applies.

What is theMadridSystem Trademark Registration Procedure?

An application for international registration is first presented through the home trademark office, which in turn forwards the application, if all of the home office requirements are met, to the International Bureau of the WIPO. Should all requirements of WIPO be met in the application, the mark is recorded in the International Register and published in the WIPO Gazette of International Marks.

The next step is registering the mark in the corresponding countries’ local trademark registers. The International Bureau initiates this process by notifying each contracting county applied for. The priority date assigned to the mark for the purposes of international registration, is the date of international registration with the International Bureau (unless a different priority date is claimed).

After receiving the application, each contracting party has the right to refuse registration of the mark if the application does not comply with the national registration standards of that country. However, rejection of registration may only be made within the applicable time limit (this limit varies county-by-country, but a rule of thumb is 1 year, some states have made an extension declaration for an 18 month refusal period) and if no acceptance or rejection is received by the International Bureau within the specified time period, then protection of the mark in the contracting party is awarded to the Applicant by default.

International Trademark Registration Is Dependent on HomeCountryRegistration

For a continued international trademark registration, it is important to preserve active status of the mark in the applicant's home trademark office for at least the first 5 years of the international registration. If for any reason the mark ceases to be active in the applicant's home trademark office, such as abandonment, cancellation, or any other suspension, the international registration too will be cancelled. After the 5th year of registration, international protection is no longer dependent on the office of origin’s registration and it is thoroughly governed by the Madrid System rules.

Duration of International Registration

An international registration may be maintained indefinitely upon a timely renewal of the registration and payment of the renewal fees every 10 years.

Additional Resources

Form more information on international trademark registration: http://mitevalaw.com/contact-appt/ www.uspto.gov (United States Patent and Trademark Office) http://www.uspto.gov/trademarks/law/madrid/index.jsp (USPTO - Madrid Protocol) http://tmep.uspto.gov/RDMS/detail/manual/TMEP/Oct2012/d1e2.xml#/manual/TMEP/Oct2012/d1e2.xml (USPTO trademark registration manual) http://www.wipo.int (World Intellectual Property Organization) http://www.wipo.int/treaties/en/registration/madrid_protocol/ (WIPO signatories and other resources)

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