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A Guide to International Trademark Registration

On Behalf of | Jun 22, 2021 | Trademark Law

In addition to managing employees, profits and losses, and distribution issues, business owners need to be aware of trademark violations. Even with federal trademark protection, your rights can be violated in other countries. As markets become increasingly international, businesses must protect their trademarks in the United States and worldwide. There are two main ways for businesses to apply for international trademarks — the Madrid Protocol and the Community Trademark system.

Registering a Trademark Internationally Using the Madrid Protocol

The Madrid Protocol allows applicants to file trademark registration applications in any of the countries that belong to the Madrid Protocol Treaty at the same time. There are currently 108 members in the Madrid Union, covering 124 countries, equating to over 80% of world trade. For applicants from the U.S., the first step in the Madrid Protocol is to register your mark with the U.S. Patent and Trademark Office. After your application is complete, you can choose to apply with the Madrid Protocol. WIPO administers the Madrid Protocol and provides a less expensive and more efficient route to register several trademarks at one time.

The nations you select to register in through the Madrid Protocol are referred to as nations for which you seek an “extension of protection.” The applicant can decide how many countries with which they would like to apply. Many business owners choose to select countries in the territory they play to extend or protect your brand. For example, if you have experienced significant trademark infringement from Asian countries, you may wish to apply to Asian countries.

The Madrid Protocol Application Process

The first step in using the Madrid Protocol is to have registered for a trademark in your home country. This will be referred to as your “basic mark.” Your office of origin will certify the international application and forward it to the WIPO. The WIP will conduct a formal examination and register the mark in the International Register, then publish it in the Gazette. WIPO will issue a certificate of registration and notify the designated Contracting Parties. Each individual nation-state will review your application and determine whether to grant an application or not.

The Role of National Criteria in International Trademarks

Applying for a trademark in other countries does not guarantee that they will accept your application. Each country has the right to accept or reject your trademark application based on its national trademark laws. However, if one country denies your trademark application, the denial will not affect your main application through the Madrid Protocol.

The only time your primary application will be affected would be if the basic trademark application with the USPTO is declared or abandoned within the first five years of your registration with the Madrid Protocol. Should the U.S. deny your application, the other registrations will be completely terminated. If you would like to add more nations to your applications, you can return to your original application and select “Subsequent Designation.”

Registering a Trademark Using a Community Trademark

A Community Trademark will protect your trademark in every nation-state within the European Union (EU). Security a Community Trademark will help you protect and encourage international branding and business. When you secure a Community Trademark, it will be valid for 10 years, and you will be able to renew your application in 10-year periods. The Community Trademark divides services and goods by international standards. Your Community Trademark could apply to one class of services and goods or several, depending on how you complete your application.

Discuss Your Case With an Intellectual Property Lawyer

Applying for an international trademark will help you protect your brand and our business. The trademark process is complex and can take some time. If there are mistakes in your trademark application, you will probably experience delays. Working with an experienced trademark lawyer will help you achieve your international trademark goals as smoothly as possible. AtAU LLC, we assist clients throughout the country in obtaining trademark registrations outside of the U.S. Contact us today to learn about our international trademark services.

Why is Getting a Community Trademark Important?

Securing a Community Trademark will help you with international business, including exports and imports. It is also a more cost-effective way for businesses to protect their trademarks and businesses. The Community Trademark allows businesses to use a single trademark in all of the EU countries. A Community Trademark is valid in the following countries:

  • Austria
  • Belgium
  • Bulgaria
  • Croatia
  • Cyprus
  • Czech Republic
  • Denmark
  • Eire
  • Estonia
  • Finland
  • France
  • Germany
  • Greece
  • Hungary
  • Italy
  • Latvia
  • Lithuania
  • Luxembourg
  • Malta
  • Netherlands
  • Poland
  • Portugal
  • Romania
  • Slovakia
  • Slovenia
  • Spain
  • Sweden
  • UK

Obtaining a Community Trademark will give you the exclusive right to use your trademark in the EU, along with the following benefits:

  • Other people cannot use your trademark without your permission in the EU
  • People cannot use a similar trademark for the same or similar goods and services
  • Members of the Paris Union Convention and the World Trade Organization (WTO) are allowed to apply for community trademarks
  • When a new country enters the EU, your community trademark protection extends to that country

Your Community Trademark will prevent others from:

  • Using your trademark to sell or stock your goods
  • Use your trademark on any of their packagings
  • Use your trademark on business documents or advertising without your consent
  • Sell services or goods that use your trademark without your consent

How to File a Community Trademark Application

As with other trademarks, you will need to conduct a trademark search. Once that is complete, you can file a trademark application with the EUIPO. You can file a Community Trademark with the EUIPO in Alicante, Spain, or with any EU member’s state Trademark Office. You can also apply online. The EUIPO will initial an examination period of your trademark and publish your trademark in the EU Trademark Bulletin. After a three-month period in which other trademark owners can review your publication, your trademark will be issued, and you will need to monitor and renew your trademark.

Consult With an Experienced Trademark Lawyer 

Do you have questions about the international trademark process? If so,AU LLC is here to help. Contact our Chicago-based intellectual property law firm today to schedule your initial consultation.