From its creation, or at the latest from the start of negotiations with foreign partners, overseas Trademark protection must be considered by trademark owners.
After Brazil (2 October 2019), it is the turn of Malaysia to join the international trademark system as of 27 December 2019.
Given its wide geographical coverage and simplicity, this system is becoming more and more adapted to worldwide business development strategies.
- Advising and assisting you to determine which trademarks to protect. The same trademark, its translation or its transliteration?
- Deciding which markets, depending on foreseeable evolutions?
- When to file? If protection for the same trademark is extended to another country within 6 months of the original filing, i.e. priority date, then any foreign filings benefit from the original filing date Which path to take? Together, we will select the most appropriate path depending on your trademark, prior rights and budget
Which path to take? Together, we will select the most appropriate path depending on your trademark, prior rights and budget
- National filing: if the trademark is specifically for one country, or if a country is not a member of any regional agreements Among the major countries, China has modified certain fundamental aspects of its Trademark law, and we await more significant changes in 2014/2015.
- International filing: covering, in one single filing a large number of countries, including the European Union. It allows the addition of countries in relation with the economic expansion of your trademark. One single application using this system enables the registration, valid for 10 years and renewable through a single operation, of your trademark. However, the International registration remains subject to the laws of each designated country or territory. Additionally, a National or EU filing is required in order to proceed with the International filing.
- EU filing: for the 28 countries of the European Union, if no other country is envisaged. This system of one procedure performed by the OHIM (EUIPO), provides 1 registration.
- Filing with the OAPI for Francophone African countries
It is now possible to cover the following countries through only one filing: Benin, Burkina Faso, Cameroon, Central African Republic, Congo, Ivory Coast, Gabon, Guinea, Guinea-Bissau, Equatorial Guinea, Mali, Mauritania, Niger, Senegal, Chad, Togo, and Comoros. In the OAPI, it is appropriate to carry separate filings depending on whether it refers to products or services in its wording.
- Filing with the ARIPO for Anglophone African countries
The ARIPO system exists and permits 9 of the 18 countries that signed the Banjul protocol to be designated, they are: Botswana, Lesotho, Liberia, Malawi, Namibia, Swaziland, Tanzania, Uganda, and Zimbabwe, however it is really only effective in the 3 underlined countries.
- Protection in the Andean Pact countries
Bolivia, Colombia, Ecuador, Peru An agreement concerning these 4 countries alone, which allows a trademark holder registered in one of these countries to oppose an infringement filing in any of the other member countries of the pact.
- Our Network of Foreign Colleagues
We directly perform a number of operations before the French (INPI), EU (OHIM (EUIPO)) and International (WIPO) offices. In other countries we operate via a network of foreign correspondents that we have selected due to their competence, responsiveness and price.
- Adapting the Protection of your Trademarks to your Markets
We propose reviewing the protection of each trademark depending on market expansion in order to adapt, as necessary, with each evolution, by conducting an audit of your trademarks, domain names, designs and patent portfolios.
- Adapting the means of fighting counterfeiting to the extension of your trademarks
Your anti-counterfeiting policy should also be reviewed especially depending on your manufacturing and export markets, and in particular for customs retainer declarations.
Overseas protection of a trademark cannot be improvised but must be the subject of a conscious strategy that is being constantly adapted in relation to the commercial development of the company.