The blog post, “What are the Types of Trademarks,” explained the distinction between Trademarks, Service Marks, State Marks, Federal Marks, and Common Law Marks, which are common types of protection for marks in the United States. This blog post concentrates on protecting marks outside of the United States. While there is no such thing as an “International Trademark” or “International Trademark Registration”, there is a single filing authority that allows a trademark owner to start the process of obtaining trademarks in foreign countries through an initial “International Registration,” under the auspices of the “Madrid Protocol” through the World Intellectual Property Organization (“WIPO”). This blog post covers three ways to obtain a foreign registration for trademarks while focusing on the most common and least expensive means to register a US trademark in foreign countries. It is important to remember that the filing strategy for foreign marks is complicated and inextricably linked to the business purpose of the trademark filing.

Non-U.S. Foreign Trademark Registrations

There are three main ways to register a mark in most other countries:

1. Direct National Trademark Registration: Filing directly in a country’s national Patent and Trademark Office (“PTO”), usually by hiring a local attorney (which many countries require). This is available in all countries that have a PTO. This can be expensive as you will be generally required to pay a law firm in each country, and subsequently will need to manage each national application individually. This process is usually coordinated by a US law firm. National trademark applications are appropriate where you are seeking foreign trademark protection in a single non-US jurisdiction and do not have future plans or requirements for trademark protection in other non-US jurisdictions, or where the country is not a signatory to the Madrid Protocol. Some of the non-signatory countries include Iraq, Fiji, and Lebanon.
2. Combined Regional Trademark Registration: For a few select groups of countries in Africa and Europe that have combined their jurisdictions by treaty to establish a single trademark registration system, a single application can be filed that covers all of those countries. Examples of this are the EUIPO, Benelux,[2] OAPI for the 17 French-speaking African countries, and ARIPO for the 11 mainly English-speaking African countries. Note, that many of these groupings of countries are also subsumed into the Madrid Protocol application process (OAPI and Benelux) and can be handled more cost-efficiently through the Madrid process. Regional trademark registrations are similar in expense to national registrations insofar as you must hire a regional lawyer, like national registrations, usually coordinated by a US law firm.
3. International Trademark Registration: Most countries (114 signatories covering 130 countries) are now signatories to the single truly International Registration system called the Madrid System (“International Registration”). This system can be used to expand the protection of a national mark in another county or counties pursuant to the Madrid Protocol or Madrid Agreement. An international, nongovernmental organization called the World Intellectual Property Organization (“WIPO”) administers this process.

The Madrid system was originally governed by the Madrid Agreement, from 1891 (“Madrid Agreement”), and more recently, by the Protocol to the Madrid Agreement, from 1989 (“Madrid Protocol”). Some countries are members of one and not the other. The Madrid Protocol is the more useful and prevalent system.

The applicant of an International Registration must be a national of, domiciled in, or have an industrial or commercial establishment in one of the countries that are members of the Madrid Agreement or Madrid Protocol (“Contracting Parties”). Here is a list of the Contracting Parties. Various countries in Central America, South America, Africa, and the Middle East are not members of the Madrid Protocol.

The application for an international registration (“international application”) must be based on an application or registration of one of the contracting parties (“base application/registration”) and must designate one or more countries in which an “extension of protection” is sought, which must also be a member of the Madrid Agreement or Protocol. The international application must be for the same mark, by the same applicant as the underlying application or registration, and must include the same goods and services or a narrower version of the goods and services of the base application or registration.

The application process occurs in two “phases”, an international phase and a national phase. In the initial international phase, the application is submitted to one of the receiving countries designated by WIPO. WIPO evaluates the application and can issue an office action (rejection) or approve the application. If the application is approved it proceeds to the national phase, where WIPO forwards the application to each contracting party designated in the International Registration.

Each country designated will individually examine the application and determine if there is a conflict within that country’s national register and have the option of issuing a national phase office action (rejection). The contracting parties’ PTO must examine and refuse or accept the request for extension of protection within 18 months. If the contracting party’s PTO does not notify WIPO within the time period, the mark is automatically registered.

The international registration is dependent on the base application or registration for 5 years from the registration date of the base application or registration. Therefore, if the base application or registration is abandoned, canceled, or expired in part or in whole during the 5-year dependency period, WIPO will cancel the International Registration, in whole or in part, accordingly.

Advantages of the International Trademark Registration through Madrid Protocol:

1. Expanding and managing trademark protection through a single office (WIPO) in a simplified manner, without the need to file a document for that mark in every country separately
2. It is usually cheaper as all filing fees are paid through and managed by WIPO; and
3. The international application can be handled in one of the official languages of WIPO (English, French, and Spanish) without the need to use the language of the countries of interest and file translations.

Conclusion

Together with a sound business strategy for seeking foreign trademark protection, understanding the type and scope of protection needed for your mark is crucial for an effective national and international brand protection strategy.

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