Trademark rights are national. If a mark is used and registered in the United States, its owner might not be able to stop third parties from using the same mark in connection with the same goods and services in other countries.
For this reason, many brand owners are interested in protecting their trademarks outside of the U.S., in countries where they do business or plan to do business in the foreseeable future. A brand owner that wants to protect its trademark outside of the U.S. might consider filing one or more trademark applications in any other countries (or territories) of interest.
Developing an international filing strategy is unique to each client. In this article, we discuss the pros and cons of filing national registrations versus filing an “international application.”
There are two possible ways of filing international trademark applications.
The first way is to file separate applications in each country of interest. If a brand owner wants to file an application to register its mark in a small number of countries (for example, the UK and Canada), then it might be advisable for it’s U.S. trademark counsel to instruct local agents in each of those countries to file applications on the client’s behalf. The benefits of this approach include:
- the brand owner receives expert advice from lawyers in each country;
- the brand owner might be able to register its mark for a more expansive list of goods and services. In the U.S., a trademark can only be registered for goods and services that are actually in use in the United States (e.g.: “clothing, namely, shirts, shorts, pants and scarves”). In most other countries, a trademark can be registered much more broadly (e.g.: “clothing”); and
- the application might be processed more quickly.
The second way is to file an “international application” under a treaty called the Madrid Protocol. A brand owner might elect this option if it wants protection in a large number of different countries. Because engaging local counsel in multiple countries can become expensive, many brand owners elect to file a single international application.
The Madrid Protocol allows one firm (in our example, a U.S. firm) to use an existing U.S. application or registration as the basis for a single application designating multiple countries. This avoids the need (at least initially) to engage lawyers all around the world. Once the application is filed and approved by an office called WIPO, the international application is forwarded to each designated country’s trademark office for review and approval. If successful, each local trademark office will issue a “grant of protection,” and the brand owner’s mark will be registered in that country.
A notable benefit of this approach is the cost – it is typically significantly less expensive to file an international application than to hire and supervise lawyers in multiple countries. However, filing an international application comes with some downsides, which include:
- the goods and services included in the international application have to match the goods and services in the U.S. application or registration. This typically means that that the goods and services in the international application are narrower than they would have been if a client filed national applications;
- the success of an international application hinges on the success of the U.S. application or registration. If the underlying U.S. application does not register or if the underlying U.S. registration is cancelled within five years from the international application filing date, then to maintain the international application, a brand owner would have to convert it to local national applications, which is an expensive process; and
- the international application is examined by the trademark offices of each designated country, and if one or more of the offices issues a “provisional refusal,” it might be necessary to engage local counsel at that time in order to overcome the refusal.
Despite the downsides, many clients elect to file international applications as a cost-effective means to protect their brands in multiple countries.
We would be happy to speak with you to discuss your global filing strategy.