Westchester Women's Bar Association

In Which Countries Should You Register Your Trademark

A prospective trademark owner should determine which countries they are doing business in (offering goods or services under a brand) and in which countries they intend to use the mark, in connection with its goods and services in the future. One question to consider is how many years will it take for the company to be conducting business under its brand in a particular country or geographic region, and weigh that against the risk of a third party registering an identical or similar mark for related goods or services. This is an important consideration because trademark rights are territorial in nature and geographic in scope, and it's possible for the same trademark to be registered in different countries by different owners. Based on this information, the company can develop a list of countries or geographic regions in which to register its mark. This list of countries should be prioritized based on most important markets and time frames to enter those markets.

Then a prospective trademark applicant should determine which countries are members of which international treaties. For example, the Madrid System is governed by two international treaties, The Madrid Agreement (Agreement) and the Madrid Protocol (Protocol). The United States is a member of the Protocol and not the Agreement. Another important treaty is the Paris Convention. One hundred and seventy five countries adopted this treaty. The primary principle under the Paris Convention is that nationals of any country of the Union are afforded the same advantages with respect to intellectual property rights. One advantage is the right of priority on the basis of a trademark application filed in one of the countries of the Union. The applicant will have six months from the date of filing of the first application to file another trademark application in another Union country, and it will receive the benefit of the first filing date.

Under the Protocol, if you are a national of a member country you can secure trademark protection in countries that are contracting parties to the Protocol based on a pending trademark application or registration in the country of origin. In other words, both your country of origin and the countries you wish to file in must be members of the Protocol. If not, you can file a national application directly with the Trademark Office in that country. If you decide to file through the Madrid Protocol, you can designate the European Union ("EU"), and gain protection in all member states of the EU. The down side of this option is that if there is a problem in one of the member countries with a refusal or an unsuccessful opposition, the entire EU application will fail. The applicant will have the opportunity to convert to national applications within three months with the same filing date of the International Application. However, this will require national fees, local counsel, and examination by the national trademark offices and costs will accumulate quickly. It should also be noted that there must be use of the mark on the identified goods and/or services in at least one member country in the EU to protect the mark from cancellation on the ground of non-use.

Use of a mark is not required for filing a trademark application in most countries. Unlike the U.S. most countries around the world have a first to file trademark system. In the U.S., we have a hybrid system (also known as a common law system) where we must evaluate common law rights in conjunction with registration rights. Once you have a prioritized list of countries and regions, a prospective trademark owner should determine if the countries of interest are either a first to file country or a common law country aka first to use (where constructive use dates and filing dates are considered along side common law rights).

The next step is to decide what type of trademark clearance you will conduct for each country. It is important at this stage to know if your targeted countries have trademark systems that are first to file or first to use because this will impact the type of searching you conduct in advance of filing a trademark application. International clearance costs can add up quickly and sometimes be prohibitive. Some prospective trademark applicants may choose to screen the International Register or Registers of Protocol member countries for identical marks only. WIPO's online searching tool is useful for knock out searches as it is updated daily and contains information on filings within a couple of days from the trademark filing. To learn more about filing trademark applications outside of the U.S., see our pages entitled, International Trademark Filings, Madrid Protocol Trademark Filings, and Holders of International Trademark Filings Extending Protection To The U.S. If you have questions regarding trademark registration, please feel free to contact the firm for a courtesy consultation.

Client Reviews
Nikki's commitment to clients is unparalleled with her devotion and attention to detail in every assignment and aspect of intellectual property law. Damien Germino
Nikki Siesel is the most profound trademark lawyer I have worked with and she has thoroughly empowered me with her knowledge. Maria Jacobs