Image by WikiImages from Pixabay
Detroit Trademark Lawyers: No Such Thing as “International Trademark Registration” Per Se
The registration of trademark is a territorial matter. That is, it is a process handled domestically by each country in which a trademark is to be registered, according to that country’s own laws and rules.
In the United States, the US Patent and Trademark Office (USPTO) handles the registration of trademarks. An application for the Federal registration of a trademark (name, logo, tag-line, etc.) is filed with the USPTO and, once approved, that trademark is then protected against infringing marks—in the United States.
What if you have a registered US trademark identifying a product or service that you sell in a foreign country as well as the US? What if you market the product or service in many foreign countries?
Is there a way to register a trademark so that it is protected globally, in all countries?
The short answer is “No,” but that doesn’t mean there aren’t options.
International Trademark Registration Option #1: Register domestically in a foreign country with a local trademark attorney or trademark agent.
The first option to protect your mark in a foreign jurisdiction is the obvious one. If your trademark meets the requirements for registration domestically in that jurisdiction (whatever they may be), you always have the option of retaining a trademark attorney or trademark agent (or whatever flavor of professional is licensed to provide such services in the country in question) to pursue an application on your behalf locally.
This option will present varying requirements and costs from country to country, clearly. If you wanted to register a trademark in multiple foreign countries, separate applications with separate requirements and costs would need to be pursued in separate jurisdictions, with the assistance of separate legal professionals.
International Trademark Registration Option #2: The Madrid Protocol
The second option is simplifies the above process.
The Madrid Agreement and Madrid Protocol are international agreements that comprise the “Madrid System,” which allows for the filing for registration of a trademark on an international basis.
The United States is a signatory of the Madrid System.
What this system allows is for trademark registrants domiciled in member states, such as the United States, the United Kingdom, Turkey, and more than a hundred others, to submit an application pursuant to the Madrid System with the World Intellectual Property Organization (WIPO).
WIPO processes the application rather than the USPTO or similar domestic governmental body, but the application is filed locally with the USPTO or similar domestic governmental body.
Although member states have the opportunity to accept or refuse the application, once filed, it remains a single application filed by your local trademark attorney which can provide trademark protection in multiple foreign jurisdictions simultaneously.
The trademark must initially be registered in the applicant’s jurisdiction of domicile before a Madrid Protocol application may be filed. It is not sufficient that an application merely have been filed.
The Madrid application requires that you select the specific countries within which you would like your application to be effective, and the fees you pay will vary depending on the number of countries selected and the individual fees associated with each.
For example, the fee currently associated with the Republic of Turkey is 73 Swiss Francs.
There is a base application fee as well, currently 643 Swiss francs, in addition (in the US) to the processing fee charged by the USPTO, if the mark does not include color, etc.
There are various other requirements imposed by the USPTO, which should be discussed with your trademark registration attorney.
International Trademark Registration: The Bottom Line
The bottom line is that, if you are doing business and exposing your brand in a foreign jurisdiction, it is vital that you protect your investment from infringement.
The Hilla Law Firm, PLLC offers free virtual or telephonic consultations to clients throughout the United States or abroad for trademark matters.
If you are interested in discussing the filing of an initial trademark application or defending an office action already filed, please contact us at (734) 743-1489 to discuss your matter or click here to directly schedule your initial trademark consultation into our calendaring system.