Built A Killer Brand And Want To Expand It Internationally? Here’s How To Protect Your Brand Internationally
In this article I will discuss two ways to protect your brand internationally.
(1) – File A Single International Application With The World Intellectual Property Organization
The first way is by hiring an attorney in your home country to file a single international trademark application with an international organization called the World Intellectual Property Organization, or WIPO, under the Madrid Protocol (also referred to as a Madrid Protocol application), where the application designates each individual country that you want trademark protection in.
(2) – Hire A Local Attorney In Each Country You’re Seeking Trademark Protection In
The second way is by hiring a local attorney in each country you’re seeking protection in to file a trademark application directly with that country’s trademark office. For instance, if you want to register your trademark in Canada and Australia the second way, you should hire an attorney in Canada to register your trademark in Canada and you should hire an attorney in Australia to register your trademark in Australia.
Note that there is no one trademark that’s going to cover all the countries in the world. Each country is a sovereign nation and requires its own trademark. Therefore, regardless of how you apply for your trademark internationally, every individual country is going to review your application and either approve it or refuse it according to their local laws. One exception, however, is the European Union, where you can register a single trademark called a European trademark that will cover all the EU countries.
Filing An International Application Through The Madrid Protocol
Now, I’ll get back to discussing the two ways that you can apply for an international trademark. As noted above, the first is through the Madrid Protocol. The Madrid Protocol is a system that was created amongst a group of member countries where an applicant who lives in one of the enumerated member countries can file an application with WIPO. In order to submit an international application through the Madrid Protocol, you must first file a basic application with your country’s trademark office. For example, if you live in the U.S., this would be the United States Patent and Trademark Office, or the USPTO. Once you file your basic application, you can begin the process of international registration. You do not need to wait until your basic application is approved by the USPTO.
The Mechanics Behind Filing An International Application Through The Madrid Protocol
When you’re preparing an international application through the Madrid Protocol, you can check a box for each individual country that you would like trademark protection in. Once the international application has been filed and submitted to WIPO, it gets transferred to all the different countries included in your application for their own individual review. The trademark office of each selected country will review the application and either accept it or refuse it according to their country’s laws. In the event a country refuses your application, you’ll have to hire a local attorney in that country to deal with the refusal.
Drawback Of Filing An International Application Through The Madrid Protocol
The major drawback of filing an international application through the Madrid Protocol is that the international application is highly dependent on the applicant’s home country’s application registering and staying registered. In other words, the international application is tied to the basic application. Referring to the example above, if you filed a U.S. trademark application and then decide that you want to file international applications while your U.S. application is pending with the USPTO, if for some reason the USPTO denies your U.S. application, all of those other applications you filed around the world will also be refused.
Advantages of Protecting Your Brand The Second Way
Because of the connection between your home country’s application and the foreign applications, it can be advantageous to protect your brand the second way by hiring local attorneys in the foreign countries to have them file the applications directly with their local trademark offices. This way you’re not tied to whatever happens in your home country. This may be more expensive, but if something happens to your home country’s trademark application, you won’t have to worry about being denied a trademark in other jurisdictions since the other jurisdictions will review your trademark on its own merits.
I hope you found this article insightful. We know that it’s not easy to find attorneys in foreign countries. Our firm has relationships with excellent attorneys in other countries because we’re constantly working in other jurisdictions. We trust that they can file your application and do so at a reasonable rate. Because we’ve vetted them and even have preferred rates with these local attorneys, it’s best to get in touch with us. If you have any questions about your trademark or your case, feel free to send us an email at email@example.com or give us a call at (480) 875-2700.