Why, Where, and When Should I file Foreign Trademark Applications?

Posted on Aug 3, 2020 by |

Why Should You Consider Filing Foreign Trademark Applications?

With the use of the Internet, companies may now sell their products/services throughout much of the world easier than ever. Therefore, trademark owners must consider trademark registration in many more countries to ensure their brands are adequately protected.

Where Should You Consider Filing Foreign Trademark Applications?

Like other intellectual property rights, trademark rights are considered to be distinct in each country or jurisdiction in which they are obtained.  Each country or jurisdiction has its own laws and regulations regarding trademark rights and therefore, the existence and enforceability of these rights are unique to each country or jurisdiction and generally, not interdependent.  You should consider registering trademark(s) that you use on products/services in any country where you: (i) manufacture; (ii) package; (iii) sell; (iv) offer for sale; or (v) intend to sell your products/services.

When Should You Consider Filing Foreign Trademark Applications?

Once a trademark has been selected and cleared for adoption, use, and registration (please see our other blog posts here for more information on selecting and clearing a mark), a trademark owner must decide where to file for registered protection and then promptly file those trademark applications. There are unique considerations like first-to-file trademark registration systems and international treaties that support filing a foreign trademark application as soon as possible. This article focuses on international protection and how to decide what trademarks to protect, when to file applications, and some of the key systems for executing an international filing strategy.

What Trademarks Should I Protect in Other Countries?

You should consider registering trademark(s) that you use on products/services in any country where you: (i) manufacture; (ii) package; (iii) sell; (iv) offer for sale; or (v) intend to sell your products/services.  When analyzing this list of trademarks and countries, you may consider prioritizing your trademark filings based upon the following tiers:

  • First Tier: House brands – these trademarks appear across your full range of products/services;
  • Second Tier: Important individual product/services trademarks that are used in all or most of your key markets;
  • Third Tier: Consists of: (1) sub-brands; (2) regional brands; and (3) trademarks used on a limited range of goods or services; or
  • Fourth Tier: Consists of: (1) slogans; (2) trademarks used for a limited duration; and (3) non-traditional trademarks such as product configurations and color trademarks.

When Should I File Trademark Applications in Other Countries?

You should file as soon as possible after clearing the mark because in most jurisdictions priority of trademark rights is determined by the filing date, regardless of use in that country or elsewhere.  In other words, most countries use the first-to-file system – whoever gets to the trademark office first with a suitable application secures the trademark registration. Even in the United States, where priority is determined by use rather than filing (i.e. a first-to-use system) (you can learn more here), it is still best to file as soon as practical, as the filing date sets a nationwide constructive use date.

There are also benefits to filing promptly that arise from international trademark treaties. For example, the Paris Convention for the Protection of Industrial Property (“Paris Convention”), the oldest international IP treaty, set up the principle of national treatment – that a member country’s own persons and the foreign nationals of all other member countries must enjoy a similar level of trademark protection. The Paris Convention also set up Convention priority rights. In countries that are parties to the Paris Convention, trademark owners can file trademark applications up to six (6) months after the first filing in a Paris Convention jurisdiction for the same mark and for the same products/services, and still claim the earlier filing date as the effective filing date.   As priority in most countries is based on the filing date, an applicant can secure a filing date by first applying to register its trademark in one principal country and then determining the other countries of most importance in which to seek protection. Unlike the Madrid Protocol (discussed below), the registration of a mark obtained in one Contracting State is independent of its possible registration in any other country, including the country of origin.

For example, if you file a U.S. application on January 1, 2020, you can file applications in other Paris Convention treaty countries for the same trademark and the same goods/services up to July 1, 2020 and you can benefit from the earlier filing date of January 1, 2020.

Can I file One Application Covering More than One Country?

In the past, most international trademark protection relied on a patchwork of different countries’ trademark laws, creating inconsistency and confusion. However, today, several international agreements make it possible to file a single application to register a mark in more than one country. For example:

  • A registration with the Benelux Office for Intellectual Property offers trademark protection in the Benelux territory (Belgium, Luxembourg, and the Netherlands);
  • A European Union Trade Mark (“EUTM”) registration protects a trademark in all the member states of the European Union (“EU”);
  • The Madrid Agreement and the Madrid Protocol make it possible to file an application for an International Registration, which will offer trademark protection in any of the countries the applicant designates that are party to either or both of those treaties;
  • Filing with the African Regional Intellectual Property Organization or the African Intellectual Property Organization protects a trademark in all the member states of that organization.

In addition to these multinational filings systems, several other treaties affect international trademark practice like the Paris Convention mentioned above.

What is a European Union Trademark (EUTM)?

The EUTM registration system, which was created in 1996, protects trademarks in all 27 member states of the EU. EUTM registrations and applications are automatically extended to any new member states upon accession. The EUTM application serves as a single, unified filing covering all EU member states. The EUTM system is available to any natural person or legal entity from any country in the world.  A current list of the EU member countries can be found here.  Today, the EU consists of Austria; Belgium; Bulgaria; Croatia; Cyprus; Czechia; Denmark; Estonia; Finland; France; Germany; Greece; Hungary; Ireland; Italy; Latvia; Lithuania; Luxembourg; Malta; Netherlands; Poland; Portugal; Romania; Slovakia; Slovenia; Spain and Sweden.

Once granted, an EUTM registration takes effect throughout the EU for an initial period of ten years from filing and can be renewed for successive ten-year periods.

Advantages:

  • Administration. One application, one registration, one renewal, and one set of fees at each stage.
  • Cost. Consolidated filing offers potentially significant cost savings over individual national applications.
  • Geographical Scope. All 27 member states of the EU.
  • Convenience. Consolidation of registrations; can claim seniority from earlier national registration.
  • Use. Use in only part of the EU should be sufficient to resist a revocation action.
  • Infringement. Choice of forum and opportunity to obtain EU-wide relief.

Disadvantages:

  • Oppositions. Oppositions are more likely and, if the trademark is refused on the basis of an earlier right in a member state, it will be refused for the whole of the EU. Conversion to national rights is available but at significant additional cost.
  • Assignment. Can only be assigned for the whole of the EU.

In light of the UK’s withdrawal from the EU (Brexit) on January 31, 2020, owners of EUTMs registered or granted before the end of a transition period extending through December 31, 2020, will automatically become owners of comparable IP rights in the UK.

What is a Madrid Protocol International Registration?

The participation of the United States, the European Union, and several additional commercially significant countries in the Madrid Protocol system was one of the most important developments affecting international trademark filing strategy. The Madrid Protocol is a treaty creating a multinational trademark filing and registration system. It offers applicants the opportunity to obtain trademark protection in more than one country using one application based on a trademark registration or application in their country of residency (their “home” country).

The Madrid Protocol is only open to trademark applicants or registrants who are one of the following:

  • Nationals of a country that is a member of the Protocol.
  • Domiciled in a member country.
  • Have a real and effective industrial or commercial establishment in a member country.

To use the Madrid Protocol system, a company must file a trademark application or own a trademark registration in its home country.  An applicant then files an application for an international registration (“IR”) with its home country’s trademark office, which certifies the application and sends it to the International Bureau of the World Intellectual Property Office (“WIPO”). WIPO then:

  • Reviews the application for irregularities.
  • Registers it on the International Register and publishes it in the WIPO Gazette of International Trademarks, if the application has been correctly filed.
  • Transmits the application to the trademark office in each country designated by the applicant. IRs can be extended to additional member countries at any time after registration.

Each country’s trademark office examines the IR according to the country’s own trademark laws as if it were an individual national application filed through standard channels, and then that country’s trademark office notifies WIPO of any provisional refusal.

If an IR issues, it is valid for an initial ten-year period and renewable for successive ten-year periods. An IR is equivalent to a national registration in each of the respective jurisdictions to which it extends.

Advantages:

  • Administration. One application, one registration, and one renewal.
  • Cost. Consolidated filing offers potentially significant cost savings over individual national applications.
  • Geographical Scope. Potential protection in over 100 jurisdictions.

Disadvantages:

  • Scope of Registration. The trademark applied for must be identical to the trademark in the home country application or registration, and the specifications of goods and services cannot be broader than in the home country application or registration.
  • Objections. Objections will be in the local language and may require use of local agents, increasing costs.
  • Use. The trademark should be used in each designated country to protect the trademark from non-use challenges in the respective countries.
  • Dependence. Registration is dependent on the home application or registration for the first five (5) years so that if that right is attacked, international protection could be lost. Conversion to national rights is available but at significant additional cost.

What is the filing arrangement in Africa?

In Africa, applicants can file for consolidated trademark protection through the:

African Intellectual Property Organization (OAPI)

Like the EUTM system, OAPI is a unified framework. It covers the following 17 mostly Francophone African states: Benin; Burkina Faso; Cameroon; Central African Republic; Chad; Comoros; Congo; Equatorial Guinea; Gabon; Guinea; Guinea-Bissau; Ivory Coast; Mali; Mauritania; Niger; Senegal; and Togo.

Registrations cover all countries that are member states, and use in one country constitutes use for all countries. Notably, it is impossible to obtain national registrations or renewal in any of the OAPI member states individually. Trademark protection lasts ten years from the date of application and is renewable for further periods of ten years.

African Regional Intellectual Property Organization (ARIPO)

Under ARIPO, protection is extended as a collection of national rights (like the Madrid Protocol). It covers the following 19 mostly English-speaking African countries:  Botswana, Democratic Republic of Sào Tomé and Príncipe; Gambia; Ghana; Kenya; Lesotho; Liberia; Malawi; Mozambique; Namibia; Rwanda; Sierra Leone; Somalia; Sudan; Swaziland; Uganda; United Republic of Tanzania; Zambia; and Zimbabwe.

Unlike OAPI, ARIPO is not well recognized or well administered. Because certain ARIPO member countries have not yet passed implementing legislation, the ARIPO system may not be a viable option for trademark protection. Therefore, national trademark applications still offer the soundest mechanism for protection in ARIPO member countries. Unlike OAPI, separate national registrations may be obtained in each country that is a party to ARIPO.

What is the Benelux System?

Another example of a regional filing arrangement is the joint trademark application protection available in the Benelux countries. The Benelux Office for Intellectual Property (BOIP) is the official body for trademark registration in Benelux. The registration process typically takes about four months. Registration covers all three Benelux countries and is valid and renewable on a ten-year basis.

Practical Pointers:

Given the nature of today’s global and online marketplace reality, international trademark protection is increasingly important.  A careful international trademark strategy helps your company expand and leverage your brand and business.  On the other hand, failing to protect your trademarks abroad can damage and dilute valuable assets and competitiveness. We share some practical pointers for those considering foreign trademark applications as a part of their overall protection strategy:

  1. Identify the most important brands for your business and identify whether these brands’ products are manufactured or sold in foreign countries.
  2. Identify priority countries of interest based upon current and projected business plans.
  3. If you are based in the United States and have filed a federal trademark application in the United States, you may consider filing foreign applications using the Madrid Protocol System.
  4. Regardless of whether you are based in the United States, if you have recently filed a federal trademark application in the United States, you may consider filing foreign applications under the Paris Convention within 6 months of your U.S. filing date.
  5. To facilitate foreign filings, we can handle such matters in-house ourselves or through our network of foreign counsel.
  6. Once you provide us with a list of your countries of interest, we can provide you with a quote for such services.  Fees and costs vary country by country.
  7. Consult with your counsel to develop a filing strategy!

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