Basics of International Trademark Protection

Intellectual Property News



U.S. businesses are increasingly aware of the benefits of federal registration of their trademarks and service marks within the U.S. Those benefits include:

  • Public notice of a claim of ownership of the mark;
  • A legal presumption of ownership of the mark;
  • Exclusive right to use the mark nationwide on or in connection with the goods or services listed in the registration;
  • Ability to bring an action concerning the mark in federal court;
  • Right to use the federal registration symbol ®; and
  • Listing in the United States Patent and Trademark Office’s online databases.

Companies doing business outside of the United States should also consider foreign trademark protection. In the U.S. and in some foreign countries based on common law, prior use by the trademark owner can be sufficient for claiming rights over a junior user of a confusingly similar trademark. However, in other countries, only trademark registration, and not merely prior use, will provide the trademark owner exclusive rights to the use of the trademark.

Important international treaties provide registration rights to trademark owners internationally:

Paris Convention
The Paris Convention is an international treaty that provides a crucial priority right to trademark owners. Under this convention, if a trademark applicant of one member country applies for an application for registration in another member country within six months of the initial application, the later registration will receive the registration date of the initial registration. This priority right can greatly benefit companies doing business in foreign countries, because it can help to prevent other parties from usurping their trademarks abroad.

Madrid Agreement/Protocol
Obtaining foreign trademark registration can be approached by registering in each individual foreign country of use or registering in multiple countries at once under an international convention. The Madrid Agreement/Protocol is an international treaty that allows the owner of a U.S. trademark application or registration to file a single international application in the U.S. Patent & Trademark Office and obtain an international registration that secures protection in each of its member states—presently more than eighty foreign countries.

At the time of filing the international application, the applicant designates the countries in which protection is sought and the filing fee is based upon the number of countries designated.

Additional countries may be designated later—for example, if a new country becomes a member of the Madrid Protocol or if the applicant simply develops an interest in additional countries.

The Madrid Protocol application may be filed in English and therefore no translations are required. Because only one international application is filed to protect multiple countries, registration through the Madrid Protocol can offer significant cost advantages over registration in each individual country of use.

A potential drawback of using the Madrid Protocol to register in multiple countries at once is the fact that for the first five years, the international registration is dependent on the U.S. application or registration. This means that if the U.S. application is refused or withdrawn, or the U.S. registration is canceled, the international registration must also be canceled.

The Madrid Protocol offers an ameliorative option in case of this so-called “central attack” on the international registration, however. The applicant can transform the international registration into a series of applications in each country or region designated in the registration. This approach may be expensive, as each individual application is then subject to the filing fees and prosecution fees of each individual country or region. The risk of using the Madrid Protocol should thus be weighed against the possible benefits of this approach.

Most industrialized countries of the world are members of the Madrid Protocol. Notable exceptions include Canada, India, and Brazil. Trademark registration in these countries may only be obtained by filing an application directly in each country.

Community Trademarks
There are a few regional options to filing trademark applications in individual countries. For example, as an alternative to filing in individual European countries, the European Union (“EU”) has established a Community Trademark system under which one trademark application may be filed in the EU and the resultant registration will cover all twenty-seven member states of the EU. An international application under the Madrid Protocol may also designate the Community Trademark Office instead of individual member states of the EU.

Seeking international trademark protection can require significant resources. Thus, economic considerations often drive the decision whether to register trademarks internationally. Widespread commercial use of a trademark in a foreign country should justify the cost of foreign protection.