In the United States, trademark rights arise from use. However, in most foreign countries, you must register your mark to create protectable trademark rights. Registering your marks in foreign countries is expensive, but there may be ways to formulate a strategy to manage expenses.
The following is a short list of things you may consider when deciding in which countries to pursue foreign registration or maintain an existing foreign trademark portfolio:
- In which countries do you currently have operations, or where will you soon be distributing goods or offering services?
- Which countries represent the biggest markets or potential markets for your goods or services?
- Where are your distributors, vendors, or suppliers located? Are you likely to encounter a rogue distributor or vendor, who may use ownership of a registration for your mark as ransom or a bargaining chip in negotiations?
- Which countries are particularly known to have trademark counterfeiting or pirating problems in your industry?
When introducing a new mark, new product or expanding into new countries, it is generally wise to commission a search. The trademark search and clearance of the trademark should be conducted on a country-by-country basis. The trademark search is usually conducted by reviewing the registry of the national trademark office to identify any conflicting marks. In addition, any clearance of a trademark should involve a review for unintended foreign language, cultural or slang meanings. If you are considering a couple of marks, selecting a mark that is coined or arbitrary is likely to provide greater cost efficiency in the registration process as opposed to other marks that may be refused registration on absolute grounds. Once the trademark is searched and cleared, you may consider using one or more of the following methods to obtain foreign protection.
At the outset, you may consider using the Paris Convention, if possible, to maintain a priority date for your trademark applications. Today, over 180 countries are signatories to the Paris Convention. Under the Paris Convention, if a foreign trademark application is filed in a member country within six months of the filing date of a corresponding U.S. application, the foreign application will be given an effective filing date that is the same as the U.S. application. So, this may provide you with some flexibility with the timing of the filing of new trademark applications. Depending upon the scope of the roll-out of the new trademark and/or the identified countries of interest, you may consider concurrent filing of trademark applications in many national trademark offices on a single specified or “trigger” date to establish the earliest possible priority date, especially if the roll-out is in a country that is not a member of the Paris Convention.
In a so-called traditional approach of seeking protection abroad, you may retain local counsel in a foreign country of interest and file an application with the national trademark office. The cost of preparing and filing such an application varies greatly depending upon governmental fees and exchange rates, but is usually less than $2,000 per country. Sometimes translations are needed with the application, which could increase the cost. So, depending upon the number of identified countries of interest, this may be the most economical approach. To obtain trademark protection in Latin America, India, and Canada, as well as in a number of other smaller countries, this method is the only one currently available. If the country is a member of the Paris Convention, you may be able to maintain priority to any newly filed, corresponding U.S. trademark application. You may also consider whether filing a national application in a country will afford you rights throughout all territories or protectorates of the country, and thus dispense with the need to file directly in those smaller territories or protectorates.
As described in the other article in this newsletter, over 80 countries are members of the Madrid Protocol. So if you desire protection in one or more Madrid Protocol countries, you may consider filing an international application keeping in mind the guidelines described in the previous article. Your international application may be afforded priority to any earlier filed, corresponding U.S. trademark application under the Paris Convention. The cost for filing the international application will vary in part by the number of classes of goods and services included in the application, and the number of countries designated. Some countries, for instance, in Latin American and Canada, are not members, so this method may not be useful depending on the area of the world in which you seek protection. Also, not all members of the Madrid Protocol have enacted legislation to enable you to assert an international registration in the courts of the country. In these countries, primarily in Africa, you may consider filing national applications despite these countries being members of the Madrid Protocol. Even if you currently have national registrations, it may make sense to file an international application under the Madrid Protocol for the same mark because the international application (and registration) in some jurisdictions may be deemed to replace an existing national registration but with a date of priority of the national registration.
You may also consider filing an application with the European Union’s trademark office to obtain trademark protection in one or more of the 27 current members of the European Union. The cost for preparing and filing a European Community trademark application will usually be less than $5,000. The European Community may also be covered with an international application under the Madrid Protocol. Your European Community trademark application may be afforded priority to any earlier filed, corresponding U.S. trademark application under the Paris Convention. The European Community trademark registration affords you, as the trademark owner, rights throughout the European Union. So, the registration enables you to pursue infringements occurring in multiple European countries in one venue, and prevents the importation of counterfeit goods throughout the European Union. Also, your use of the trademark in only a limited number of European countries generally enables you to withstand actions for cancellation of the registration based upon nonuse. Generally speaking, national registrations or extensions of protection under the Madrid Protocol are vulnerable to cancellation based upon nonuse typically three to five years after the registration date. So, this is an advantage over the Madrid Protocol. That said, the European Community trademark registration system may not be useful in all cases. For instance, if a mark is descriptive in the official language of a member country, or if a conflicting registration exists in any of the member countries, the mark may be refused registration.
The following provides an example in which all three methods may be used to obtain foreign protection. A company with operations in many countries is unveiling a major new mark for its business. Because of scope of the roll-out and the company’s United States and European presence, trademark applications are concurrently filed on a “trigger date” in the United States, the European Community, and all other countries that are not members of the Madrid Protocol or the Paris Convention. To orchestrate this coordinated filing on the “trigger” date, all documents required for the filings are obtained in advance from foreign counsel and completed in advance of the specified or “trigger” date. Then, within six months after the “trigger” date, an international application claiming priority to the U.S. application is filed, designating all countries of interest, except the European Community, which was previously filed directly with the European Community trademark office on the “trigger” date. Also, within six months after the “trigger” date, any national applications are filed in countries that are members of the Paris Convention.