What All Businesses Should Know About Protecting Your Brand Abroad

If you’re a company considering doing business overseas, or you’re already there, then you need to be thinking about not only your trademark rights in the United States, but also your rights abroad. Specifically, you should consider registering your mark in any country where you currently offer products or services, and any country where you intend on offering products or services in the future.

 So, the world is a big place, where should you start?  Getting into the international sphere can be tricky, but begin with the basic understanding that a trademark registered in the United States will not be protected overseas without more. Trademarks are territorial, and you must file in each country where you seek protection. Though it may sound difficult or expensive, they’re ways to streamline the process. For example, if you have a U.S. registered trademark, you may seek registration in any country that is a signatory to the Madrid Protocol by filing a single application called an “international application” with the International Bureau of the World Property Intellectual Organization (“WIPO”), through the USPTO. With this, there are pros and cons, but the biggest advantage is that you may concurrently seek protection in up to 92 countries (each referred to as a “contracting party”), therefore diminishing time and expense (note: while an international registration may be issued, it remains the right of each country designated for protection to determine whether or not protection for a mark will ultimately be granted – as there really is no single “international law” on trademark protection).

Timing is everything – well, sort of. Timeliness of your international application is an important factor. If you file a Madrid Protocol application within six months of filing your U.S. registration, then your international application will have the advantage of the same filing date as your U.S. application (see Article 4 of the Paris Convention). However, if you already have a registered mark, but have not filed a Madrid Protocol application in the 6 month period, don’t fret, your international application will simply have the filing date of your international application. So, while there may be advantages to filing within that 6-month time frame, know that you will always be able to file an international application after that period passes, but that you lose the advantage of the earlier filing date.

Next, what is actually required under the Madrid Protocol to file for international trademark protection? To file an international application through the USPTO, an applicant must have a U.S. application, called a “basic application” or a U.S. registration, called a “basic registration.” The mark and the owner of the international application must be the same as on the basic application or registration. The international application may be based on more than one USPTO application or registration provided the mark and the owner are the same for each basic application and/or registration. The international application must also include a list of goods and services that is identical to or narrower than the list of goods or services in the basic application or registration. Last, the applicant must then pay the U.S. certification fees at the time of submission and identify at least one country where protection is sought.

Once you’ve submitted your application, assuming no issues, the International Bureau will issue a registration and notify each country designated in the international registration of the request for an extension of protection to that country. Each country then examines the request for an extension as it would a national application under its own law. If the application meets the requirements for registration of that country, then the contracting party will grant protection of the mark in its country. Once you have protection, an international registration will last you 10 years from the date of registration and may be renewed for additional 10-year periods by paying a renewal fee to the International Bureau.

If the Madrid Protocol doesn’t suit your purposes, there are several other international agreements that coordinate the procedure of filing trademark applications in more than one country, which may also save you time and money. For example, a registration with the Benelux Office for Intellectual Property (BOIP) covers Belgium, Luxembourg and the Netherlands. A Community Trade Mark (CTM) protects a trademark in all of the member countries of the European Union. Filing with the African Intellectual Property Organization (OAPI) protects trademarks in all of the member countries in Africa, and so forth. Each option should be considered depending on your business’s individual circumstances.

In the end, expanding into international territories as a business can be exciting and lucrative, but also understand that dealing with foreign laws and treaties adds an extra layer of complexity to your game. It’s always advisable to speak with a trademark attorney who can help you navigate foreign waters, and ensure that your mark is not only protected on home soil, but that you are protected abroad as well.

Ready to protect your trademark overseas, or have more questions? Please contact SK&S Law Group intellectual property attorney Christina Saunders at 303-396-0270 or by email at saunders@skandslegal.com.