When Should I File For International Trademark Protection?

Trademark rights are territorial, which means they’re granted on a country-by-country basis. There is no such thing as a “global” trademark. This means that you have to file a trademark application in each country (or region, such as the European Union, in some cases) where you seek legal protection.

Where Should I File?

Determining where to file for international trademark protection is largely a business decision. As a general rule, you should only file in countries that are commercially significant to your success.

  • (1) Start in Your Home Country

Always start in your home country. Securing exclusive rights in your primary market is the most important.

  • (2) Expanding Into New Countries

Once your home turf is secure, you should considering expanding into new countries provided several of the following factors are present:

  • You have, or intend to have, business operations in the country.
  • You are actively directing your goods/services to a specific market or consumer base in that country/region.
  • It will cause significant harm to the success of your business and/or jeopardize your ability to expand into a particular market if someone else controls your brand name in a particular country,
  • You’re a product-based business with a counterfeiting problem.

When Should I File?

Determine Trademark Priority

Trademark priority is the key factor for determining when to file. Priority refers to the time when your trademark rights begin in a particular country or jurisdiction. As such, whoever has “priority” is the legal owner of the trademark.

In some countries, trademark rights start when you file an application, such as Europe; in others, trademark right starts when you begin to use a mark (irrespective of whether you file), such as the United States. This is an important consider when considering when to file since the goal is to secure priority.

There is a major international treaty that says that all international filings made within 6 months of the initial filing (your home country) will be treated as if they were filed simultaneously with your initial application. This gives trademark owners 6 months to get their foreign strategies in place. But it also complicates the playing field, as you can imagine.

Here’s how priority works.

If you file an application in the U.S. on February 20, 2019 and file an application for the same mark in Canada on August 20, 2019, it will be treated as if the Canadian application was filed on February 20, 2019. This means that you will get priority over any others whose trademark rights started in Canada after February 20, 2019, even though you technically filed in August!

What Is The Best Way To File?

There are two paths to international trademark protection:

  • (1) Country-by-Country, and
  • (2) The Madrid Protocol.

For most companies, their international filing strategies will include a combination of both options.

  • (1) Country-by-Country

With this approach, you will file a new trademark application directly with the Trademark Office in each country where you are seeking protection. In some cases, you can secure protection in multiple countries with a single application, such as the European Union. One application, called a Community Trademark, will protect you in all 28 member countries.

  • (2) The Madrid Protocol

The Madrid Protocol provides an alternative, more streamlined, process for filing for trademark protection in multiple countries. Under the Madrid Protocol,once you file an application in your home country, you can then file for an International Registration (IR) with the World Intellectual Property Organization (WIPO). The IR is based on the home country application. The IR functions like the hub and spokes of a wheel. The IR is the hub and the spokes are what we call “extensions” of protection to various countries. You can request an “extension” of the IR (or spoke) to any country that is a member of the protocol. This request is made through WIPO, not individual countries.

Some Quick Tips

If the transaction fee (the filing fees and legal fees) will exceed the return-on-investment, or ROI, then you should carefully consider whether pursuing an international filing strategy is the right move for your business. Simply put, if the costs to get the protection is more than the income or other benefit you’ll receive from it, then it probably doesn’t make sense to move forward.

If you are unwilling or unable to enforce your rights, then it doesn’t make sense to secure them. Filing for trademark protection is just the first step. You have the responsibility to monitor, manage, and enforce those rights in order to keep them.

The Takeaway

International trademark protection is critical if you are growing and scaling an international brand. But, trademark laws are not uniform worldwide, and the nature and scope of protection can vary significantly. To be sure you’re getting the best protection in the best way, take time to create an international filing strategy that supports and aligns with your specific business goals.