One of the most often questions we receive from clients is, “How can I register my trademark internationally?”
Contrary to common assumption, there is no single method for registering your trademark in every country on the planet. Each country is autonomous in its own right and must file its trademark application. So, regardless of how you apply for your trademark on a global scale, each country will assess your application and either authorize or deny it based on their local register. The only exception to this rule is a “European Trademark,” which includes trademark registration in all EU member countries.
How Can I Register My Trademark Internationally?
There are two ways to file for your trademark to be registered globally. One method is to use the Madrid Protocol, and the other is to hire a local counsel in each particular country where you want rights and have that local attorney apply on your behalf.
1. The Madrid Protocol
The Madrid Protocol is a technique developed by many different governments to make international trademark applications easier. Rather than needing to pay a local attorney in each country to file a trademark application, the Madrid Protocol permits a standard application to be filled out and sent to any country that is a signatory of the treaty.
When employing the Protocol, a business owner can make a single application with the World Intellectual Property Organization (“WIPO”), checking the box for each particular country in which rights are sought. The application is subsequently sent to each of those countries for their independent examination. If the trademark is ever refused in a certain nation, you will need to employ a local attorney to deal with the denial.
One of the most significant advantages of filing through the Madrid Protocol is the cost savings that result from not having to retain a local lawyer for each application. However, it is not a panacea for simply securing the trademark anyplace you want. Certain nations will push back and issue preliminary refusals, prompting the trademark applicant to employ local lawyers to react.
However, one of the key disadvantages of implementing the Madrid Protocol is that your foreign application must be based on an application or registration in your home country. If the USPTO rejects your United States trademark application (assuming the US is your “home country”), all of the other applications filed around the world will be rejected as well. As a result, the success of your Madrid Protocol application is heavily reliant on the registration and maintenance of your US application.
3. Hiring Local Counsel in Individual Countries
Because of the link between your “home country” trademark application and your Madrid Protocol filings, it might frequently be advantageous to simply go and employ local counsel to submit the applications in other countries. In this manner, you are not bound by what happens to the application in your native country.
For example, if our business completes a clearance check for a client situated in the United States that indicates a potential risk for the US application, we may not want to utilize the US application as the foundation for files in all other countries. Instead, we recommend to the client that we hire local counsel in each of the relevant countries to file new trademarks directly in those countries (and not through the Protocol). It may be a little more expensive, but we won’t have to worry if something happens to the US trademark. The trademark in the other jurisdictions will not be linked to the US application and will be evaluated independently.
You may be thinking that hiring many attorneys all over the world seems complicated– and it is. However, if you employ an experienced trademark law firm (such as ours), we already have ties with numerous local counsels around the world because we work in these other countries regularly. Keep in mind that there is no single method for registering your trademark globally. Except for the EU, we must go into each country and get privileges. This can be accomplished in two ways. One is through the Madrid Protocol, and the other is through filing with local counsel in each country. Please contact us if you have any further queries concerning your trademark or your circumstance.