Approaches to international brand protection

In general, about the territories

Trademark protection extends only to the specific territory of registration. For example, a protected trademark in the US – has no protection in Switzerland or the EU. Use of the mark without registration is not prohibited, but there are risks of registration by other persons or competitors. The result may be a ban on using your brand or the impossibility of further promotion (on the website, products, etc.).

As a rule, it is only possible to protect a brand once it is registered as a trademark, but protection is also affected by the brand’s reputation worldwide. For example, if Apple Inc. there is no registration in Argentina, but you want to register the brand “Apple” in this territory in the field of mobile phones, it is unlikely that the local office will carry out such a registration since the brand “Apple” is known worldwide.

How to choose territories

Usually, the markets for the sale of goods or the provision of services are chosen. In addition, it is worth considering the location of production, warehouse, employees, plans for the next 2-3 years, requirements of investors, etc. It is not necessary to register TM in a country where the activity is generally not planned. After all, if a trademark is not used within a certain period, it can be declared invalid.

About approaches. National procedure.

The essence of the approach is registration in each individual country or territory. This option is considered quite complicated and costly. After all, the applicant must apply to the intellectual property authority of each particular state, comply with their requirements, pay fees and duties, and engage local patent attorneys. Registration terms and conditions may differ in each country.

You also should consider the unique requirements and prohibitions of registration in certain countries. For example, in China, you cannot register a color as a TM, and it is forbidden to register a mark for smartwatches, gambling and casino services, organization of political meetings, astrology consulting, etc. It is also prohibited to register TMs in retail and wholesale goods, except for pharmaceutical, veterinary and medical goods.

In the USA, the TM owner must confirm at a particular time that he is really using the brand on the country’s territory.

Another advantage of the national procedure is that the registration is not tied to the primary application in other countries.

We recommend considering this option if the range of countries is limited (for example, up to 2-3), international registration is not expected or basic registration is required in a specific country.

Trademark registration in Europe

This option allows you to submit a single application and obtain brand protection in all EU member states. To make an application, fields of use are formed, and one of the official languages of the EU is used.

A critical moment of this registration is the opposition period. The application is published in the registers, and third parties can file objections to the registration. If the objection is satisfied, for example, due to similarity with a TM in another country, then the entire application is canceled. However, it is worth paying attention to the fact that a fee is paid for filing an objection, as well as the guilty party must compensate the other party for the loss of lawyers involved in this process. Therefore, complaints are not filed without grounds, and you can check the risks of registration with the help of a preliminary search.

The advantage of registration is that many countries are covered with one application, which takes an average of 6-8 months. Such registration is a must-have if your business is aimed at the EU.

International registration according to the Madrid system

International trademark registration in several countries is carried out according to a simplified procedure. The essence of the process is that one international application is submitted, and all countries where protection must be obtained are indicated. The Madrid system includes 103 members representing 119 countries. This means it is possible to register a trademark in all 119 countries by submitting a single application to the International Bureau of the World Intellectual Property Organization.

Under this system, it is profitable to register a brand in many countries at the same time. Other advantages of this option are:

• the cost of registration is significantly lower than registration in many countries separately;
• unified rules for the application and documents, one of the international languages (English, French) is used;
• protection of marks for goods and services extends to all member countries of the Madrid Agreement.

An application for international registration must be based on a basic national application or registration.

An important aspect of the registration process is conducting a high-quality preliminary search for registered TMs and submitted applications. The above approaches are not exhaustive. Quite often, we use several approaches simultaneously based on business objectives, previous TM searches, development plans, and TMs themselves.

We are always at your service if you have questions concerning international brand registration.