Trademark protection outside of the U.S. can be important for a number of reasons. You should at least consider filing for trademark protection internationally if your sales, distribution, and/ or manufacturing position is as follows:
- You conduct business in another country
- You plan conduct business in another country
- You manufacture, distribute, and/or advertise in another country
- A country of future interest is known for counterfeiting or intellectual property infringement
- Your products come into contact with nationals from another country, e.g., through tourism
Owning trademark registrations outside of the U.S. may be the only means of enforcing trademark rights. Unlike the U.S., many countries recognize trademark rights based on the first-to-file, rather than the first-to-use. Additionally, most international countries do not require use of a mark prior to issuing a registration; meaning, you can effectively reserve your brand name for 3-5 years (depending on the country), when a registration could become vulnerable for non-use.
Keep in mind, if you file international applications in most other countries within 6 months of the filing date of a U.S. application, your international applications may obtain the filing date of the U.S. application for priority. This is because the U.S. is party to the Paris Convention treaty, which allows applicants to obtain their U.S. filing date as the priority date in many foreign countries that are also parties to the Paris treaty.
There are two main ways to apply to register a trademark and obtain international protection: (1) filing an application through the World Intellectual Property Office (WIPO), aka “Madrid system,” based on a prior-filed U.S. application/registration, or (2) filing a “national application” directly through a country’s trademark office. A third mechanism are regional filing systems, such as European Community (x countries), the Benelux (Belgium, Netherlands and Luxembourg), the Andean Pact (Bolivia, Columbia, Ecuador and Peru), Mercosur (Argentina, Brazil, Paraguay, Uruguay and Venezuela), OAPI (African Intellectual Property Organization) (x countries), to name a few. The focus of this article is on the national and the WIPO/Madrid system (which offers access to the regional European Community registration system).
The WIPO international trademark filing system, also known as the Madrid Protocol is advantageous for many reasons including reduced costs and fees for filing new applications and subsequent renewals, as well as reduced prosecution time and costs in many jurisdictions.
That said, filing through WIPO system has significant restrictions, starting with the requirement to tie WIPO applications to an underlying national application. This may not always be ideal in the U.S. because WIPO applications restrict the goods/services description to the identical identification in the underlying application. Under U.S. trademark practice, the goods/services description must be specific and narrow; broad product categories and class headings are not allowed. Meaning, other countries allow applicants to file broader identifications, which could be beneficial because the broader description could block other parties from adopting the same or confusingly similar mark for a wider range of goods/services. Additionally, because the U.S. requires use of a mark prior to registration, the description can be narrowed for that reason.
Also, if the underlying national application or issued registration may be vulnerable to cancellation or challenge, filing under the WIPO system may not make sense. This is because if the application does not result in an issued registration or if the issued registration is successfully attacked, within five years of the issuance of an international registration, there can be an expensive process of transforming the WIPO registration into national applications and starting the international examination process over.
National applications, ones filed directly with a country’s trademark office, are not tied to any U.S. application, and allow flexibility to amend, modify, expand the applied-for goods/service, consistent with local practice. However, it is costlier and more time consuming.
In addition to enabling your company to enforce trademark rights, owning exclusive rights outside of the U.S. can significantly increase the value of your brand portfolio. When considering an exit strategy, such as a merger or acquisition, the extent of the portfolio can be a factor.