US Trademark Owners' Guide to International Trademark Protection
US trademark owners selling in the global market are well served to understand the basics of International brand protection, or trademark protection. There are two ways to file for international trademark protection. This guide explains the two ways to file and some of the pitfalls to be aware of.
Who Needs Foreign Trademark Registration? A Tale of 2 Real Life ClientsLet's take the real life story of one of my favorite clients, who I'll call Eric. Eric, a successful Hollywood composer, launched a software company called COOLD SOUNDS. The company developed libraries of sounds for music industry professionals used by composers and music producers that become part of others original music. Eric launched COOL SOUNDS using Facebook, giving away thousands of free downloads of sample music. This drove traffic to the company website where the products are downloaded. Soon online sales of COOL SOUNDS by buyers outside the US exceeded six figures.
Then there's our fashion brand client, HIP THREADS, started by two young women who had already built and sold one successful fashion brand. This time around, they understood in advance the risks of foreign knock offs of the brand. Even though they were launching in the US immediately, it would be several seasons before International distributors were in place, they sought my help with International trademark registration in key markets.
So how did COOL SOUNDS and HIP THREADS secure their brand protection around the globe?
Two International Treaties Guide the WayWhy do the different treaties matter?
There are two key treaties. One allows a US trademark owner to file an application directly into another country using their US application or registration as a basis for the filing. The second allows filing into the US directly from the US Trademark Office under a second treaty known as the Madrid Protocol.
Paris Convention. The Paris Convention dates back to 1883. In1967 the World Intellectual Property Organization (WIPO) was created to administer this treaty. WIPO, based in Geneva, Switzerland is possibly one of the least well-known, yet most important operating divisions of the United Nations.
For direct filings in a foreign country, we maintain a carefully selected network of expert foreign trademark law firms around the world who oversee and monitor our clients' trademarks in each country.
Madrid System. A second treaty, the Madrid Protocol, allows US trademark owners to create an International Registration through WIPO, and "designate" those countries in which they wish to seek additional protection. These foreign applications are based solely upon the existence of their home country pending application or registration. The application for each country is forwarded by WIPO to the local office in the designated country. The home office of each country decides whether the mark qualifies for registration, as they would any application filed directly in that country.
Which is the preferred method?First, there are still countries which have not yet become part of Madrid, meaning there is no choice but to file directly. These include a number of Latin American countries. Canada and Mexico have been notably absent, but are scheduled to join within the next two years.
There are benefits to both, and a couple of important pitfalls. Most notably, Madrid filings are based upon the existence of a valid US trademark registration. The goods and services claimed in the foreign country are limited to the precise goods and services which are registered in the US. This can be a distinct disadvantage since the foreign protection will be narrow and quite limited. Most foreign countries do not require proof of use (sale of products within the territory). As a result, one can register for a broader scope of goods and services when the filing is done directly instead of using Madrid.
Second, if for some reason the US registration is not secured, or is abandoned or not successfully registered, all Madrid filings are also lost! Not a good result.