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Tips for International Trademark Protection


September 21, 2016
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What You Need to Know About International Trademark Protection

international trademark protectionGiven our increasingly global economy, even small businesses should consider international trademark protection. Failing to protect your brand when conducting business overseas can lead to costly legal disputes.When a business registers a trademark with the U.S. Patent and Trademark Office (USPTO), the legal rights are limited to the United States. Thankfully, it is becoming easier to extend trademark rights to other countries around the world.

Proactively Protect Your Marks

Defensive registration is extremely important with respect to trademarks, particularly because many countries give priority to the first to file. Under “first to file” systems, trademark rights are generally bestowed on the first entity to file an application. With this in mind, there is incentive for brand counterfeiters and hijackers to pursue trademark rights ahead of U.S. companies.

“When a business registers a trademark with the U.S. Patent and Trademark Office (USPTO), the legal rights are limited to the United States.”

In countries like China, for example, major brands have been forced to buy back a registration, which can be extremely expensive and time consuming. Given the potential legal headaches, businesses should identify key international markets and then begin the process of obtaining trademark protection as soon as possible.

Do Your Research

Once your business has identified the key markets where trademark protection is needed, it’s time to do some research. To start, it is imperative to verify that another entity is not already using an identical or confusingly similar mark.

“Businesses should be sure to assess how well their brand names and slogans will translate into other languages.”

In some cases, a perfectly acceptable English term or image may be vulgar or otherwise offensive in another language.

 Consider a One-Stop Solution

The Madrid system makes it possible to register a mark in several territories through one procedure. The system is administered by the World Intellectual Property Organization (WIPO) and governed by two international treaties, the Madrid Agreement and the Madrid Protocol.

For trademark owners, the Madrid system provides several key advantages.

It allows trademark owners to file one single application to secure trademark protection in more than 100 different countries. Accordingly, it also avoids the need to comply with different national procedural rules, translate applications, retain local agents, and pay several different fees. Upon receipt of the trademark application, WIPO notifies all of the Madrid Protocol countries in which registration is sought. If the member country fails to object within twelve to eighteen months of being notified, the trademark is registered.

Renewing Your Trademark

Renewal is also more manageable under the Madrid system. The required fees need only be paid every 10 years to the International Bureau of WIPO rather than several national trademark offices. Additionally, if the international registration is assigned to a third party or a change in name and/or address occurs, it only needs to be recorded once with the WIPO.

What to Look Out For

While the Madrid system offers many advantages, trademark owners utilizing the Madrid Protocol must be cognizant of their trademark rights. The rights granted by an international registration can be extinguished if the home national application in which the international registration is based on does not mature to registration if the international registration’s home national registration is cancelled during its first five years.This concept is called a “central attack.” If either of these situations were to occur, trademark owners may opt to transform an international registration into national applications in each of the contracting parties in which the international registration had effect, which would allow for the preservation of the priority date of the international registration.

Are you still unsure about international trademark protection? Would you like to discuss the matter further? If so, please contact me, Adrian Lee, at 201-806-3364.