International Trademark Protection

Yes, there is something called an International Trademark Registration, recognized in about half the countries of the world.

On November 2, 2003, the U.S. became party to the Madrid Agreement Concerning the International Registration of Marks. Under this Agreement, registration of trademarks may be obtained in any or all “contracting parties,” from a single application filed in the home country of the applicant. The term “contracting parties” includes not only individual countries but also regional authortities such as the European Union.

U.S. participation in the Madrid “Protocol” means that U.S. trademark owners who apply for, have applied for, or have obtained U.S. registration of their marks are able to “extend” protection of them into almost all of the participating Madrid countries — currently numbering 101 Protocol nations — and, reciprocally, trademark owners in those countries can use the Madrid System to extend protection of their marks into the U.S.

Where countries that participate in the Madrid Agreement are of interest, International Trademark Registration can greatly reduce the expense of registration across international boarders, but the reach of International Registration is limited in some important areas of the world. Presently absent from participating Madrid countries are Canada, most Central and South American nations, some southern Asian countries, and a number of sub-Saharan African nations. Later in this page we discuss International Registration under the Madrid Treaty for U.S. businesses and for non-U.S. trademark owners seeking protection in the United States, but let’s begin with a general discussion of trademark registration beyond the United States.

In General:

Trademark registration is a national matter. That is, your U.S. registration carries no weight in South Korea, and perhaps less in North Korea. However, even the government of North Korea would be happy to take your money and consider your application for registration of your trademark there.

The cost of registration in each country, in terms of official fees, varies from less than a hundred U.S. dollars to several thousand. In terms of legal representation, except when using the International System under the Madrid Treaty, you will need hire a domestic representative, usually an attorney, in each country of interest, or your U.S. attorney will be required to work through one. Presently, only Canada has an arrangement with the United States under which an attorney of one country may practice before the Trademark Office of the other country.

The idea of trademark registration and protection is generally the same throughout the world, and the progress toward a practical global marketplace is slowly bringing more commonality to the various rules and regulations. In specific terms, however, history, nationalism, and differing political ideas about how commerce should be conducted keep the details of process and procedure sometimes vastly different from nation to nation.

In addition, national laws governing what may and may not be registered and protected as a trademark differ. Some countries, for example, don’t recognize trademark registration and protection of slogans, as the U.S. has done for many years. Others don’t recognize service marks. Also, many countries don’t have registration and protection under trademark laws of what the U.S. calls trade dress (the shape of the Coke? bottle, for example). Outside the United States, protection of the distinctive packaging and shape of goods may be provided, if at all, under a separate concept usually referred to as Industrial Design registration.

That’s the bad news. The good news is that the United States is party to several international conversations about trademarks that permit some basic mutual recognition of trademark rights among the participating nations. Under such international understandings, the most universal reciprocal arrangement gives priority to new applications based on the filing date of an application in the home country. Under this arrangement, after you file an application for trademark registration in the United States, if you file an application in any of most other countries of the world within six months of filing your U.S. application, your application in the other country will be treated as if it were filed on the date you filed the U.S. application, moving you up in line as much as six months. (And, being reciprocal, vice versa, meaning that sometimes a U.S. applicant will also find his application suddenly junior to a foreign applicant whose U.S. application was actually filed later.)

The other most universal practical benefit of the mutual understandings that the U.S. has with other nations is that, once registered in the U.S., your trademark does not usually have to be in actual use in another country to obtain registration there. It will have to be put into use eventually in that country, usually some years later, but not prior to registration. (And also vice versa for non-U.S. applicants to the United States.)

In general, too, the elements of the process are similar throughout the world: You apply for registration, paying the local filing fees. The local authority searches its own registry to be sure there is no conflict with already established local trademarks. Someone will examine your application and trademark to be sure it complies with local rules. Your trademark will be published so that others may object to its local registration. And then registration — sometimes, however, involving additional registration issuance fees.

In Particular:

There is no pat answer to the question, “How much will it cost to register my trademark throughout the world?” There are on the order of 200 sovereign nations in the world, depending on who is counting, and the cost of true “worldwide” registration is enormous. When thinking about registration outside of the United States, you need a plan. You need to think about the specific countries in which you operate, or intend to operate, or to which you export, or intend to export. You need to think about the order in which you may open those markets, about the value of each of those markets, and about the importance of protecting your branding investments in each of those places.

Then you need to find out the rules, the costs, and the procedures in each country of interest. A competent U.S. trademark attorney will have relationships with representatives in other countries through which currently valid information can be gathered and evaluated with regard to your needs. Your U.S. attorney will also have established channels through which funds can be transferred to pay for fees and services.

Finally, you need to consider how regional treaties and unions can help get the protection you need and affect your costs, including International Trademark Registration. The most prominent of the regional registrations is the European Community Trade Mark registration. A Community Trade Mark registration resulting from one application, examination, and publication process in the European Community’s Office for Harmonisation in the Internal Market is valid in all member nations of the European Union — currently 28 nations.Similarly, there is an African Regional Intellectual Property Office (ARIPO) registration in which is valid in 19 African countries

The International Trademark Registration

In order to apply for an International Trademark Registration under the Madrid Agreement, you must first have a valid registration or application for registration, and a presence, in one of the member countries. So that a U.S. business that has applied for or gained U.S. registration of its trademark applies for International Registration through the U.S. Patent and Trademark Office (USPTO), which becomes the “originating office.” The role of the USPTO in the process is to certify that the applicant’s U.S. application or registration exists and is valid, and to notify the International Bureau of any changes in its status. The validity of the International Registration and its force in each other country depends strictly on the registration or eventual registration in the originating country and its continued validity.

An International Registration is not automatically valid in all of the participating Madrid countries. Under the Madrid System for the International Registration of Marks administered by the World Intellectual Property Organization of the United Nations, you specify in your application only those countries in which you want to “extend protection” of your trademark. You pay the official fees for registration for each named country plus an administration fee to the “International Bureau,” which makes sure your application is complete and in compliance with the rules, and then issues a registration that designates each country in which protection of your mark is to take effect. Each designated country then has 18 months to approve or refuse registration or protection in that country. When registration is approved by each country — or not refused within 18 months — the registration then becomes effective within that country. In many countries, the registration may still be open to third-party challenges to its validity for up to five years from its effective date. In most Madrid countries, the International Registration itself becomes effective in that country, subject to its renewal every ten years, and no separate national certificate is issued. Some Madrid countries, including the United States, issue certificates of registration the validity of which is dependent on the International Registration and its renewal, but which themselves must be maintained and renewed according to the rules of each particular issuing country. (Yes, it gets complicated, and for that reason you do best having the entire process looked after by a competent trademark professional.)

The savings realized from an International Trademark Registration derive from your not having to file separate applications, and pay for separate legal representation, in each of those countries in most cases. The only time you will need the advocacy of a local representative is when your registration is provisionally refused or opposed locally. Another benefit of the International Registration system is that you may apply again, at any time, to further “extend” protection of your trademarks to more of the participating countries and realize the same cost benefits.

As more countries join the Madrid System, International Trademark Registration will become more valuable. For now, its value depends on the nations in which you want or need to register your trademarks balanced against other registration opportunities.

Only when you are armed with all the information relevant to your particular needs can you make effective decisions about where you can, where you should, and where you should not seek to register your trademarks internationally.

U.S. Registration for Non-U.S. Businesses

Because the United States participates in the Madrid System, non-U.S. businesses may apply for extension of trademark protection into the U.S. from an International Registration, and this has the same benefits in the U.S. for such applicants that U.S. applicants receive in other countries under the Madrid System. While there are cost benefits to using the Madrid system, as long as your application is not refused or opposed, there are conditions under which it will be more to your advantage to apply directly to the U.S. Patent and Trademark Office, and you should consult with a trademark professional in your country to help you decide which course to follow.

First, there are roughly three million registered trademarks in the United States. Having a search done at least of the U.S. registry, if not of the U.S. market, is a prudent first step just to be sure your application to the U.S. will not likely be refused or opposed. The reason for searching beyond the U.S. federal registry before making your branding decisions for the U.S. market is that each U.S. state has its own trademark registry, and state registrations can bar your entry into state markets.

The second consideration is whether your mark may be considered “descriptive” in the United States or may be refused for other reasons. (See “Marks That Cannot Be Registered.”) The most common basis of refusal is descriptiveness. Most countries refuse registration of descriptive marks. Some countries, including the United States, allow descriptive marks to be registered after they have “acquired distinctiveness” by their use in that country’s market, and the United States, going further, maintains a separate registry, the Supplemental Register, on which descriptive marks can be registered prior to their acquiring distinctiveness in the U.S. market, but there are restrictions to access to the Supplemental Register. In the first place, the Supplemental Register is not available for marks submitted through the Madrid System, even if your mark has been used in the U.S. and has become well known. In the second place, a mark must be in use in the U.S. to gain registration on the Supplemental Register, unless your application is based on a valid registration in your country. So, if there is a chance that your mark is or may be considered descriptive, you will do best to apply directly in the United States, rather than through the Madrid System, and if you don’t yet have registration in your country, and there is any question about whether you will get your domestic registration, you will do best to wait until you have your domestic application approved or your registration in hand before applying in the U.S.

Finally, you need to consider whether or when you will actually use your mark in the U.S. market. The United States requires that marks registered in the United States be in use in the United States — that is, be used on goods and services actually sold in the United States — but will register marks that are registered in another country on the U.S. Principal or the Supplemental Registers without a declaration or showing of use. So your application through the Madrid System or directly in the U.S. relying on your domestic registration, if approved, will gain U.S. registration whether or not you are selling goods or providing services in the U.S., but you will be required to make a legal Declaration of Use in the U.S. before six-and-a-half years after the U.S. registration is granted in order to maintain the registration in effect. Mere renewal of your International Registration or domestic registration will not suffice. And registrations of marks that are not in use in the U.S. are subject to cancellation if attacked.