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Getting an International Trademark


We've covered why you should get a trademark in an earlier post. Now, it's time to dig into why you might want to go a step further and register your trademark internationally.


When you register your trademark in the U.S., you are only getting protection for the U.S. This does not give you the same protection in the EU, China, Australia, Mexico, Canada, etc. If you want the same level of trademark protection for your mark in any geographic market outside of the U.S., you'll have to apply for it separately in the regions/nations you want protection.


Lucky for you, there are some major tools to help save time when trying to register outside of the U.S, in particular, the Paris Convention and the Madrid Protocol. I will also discuss the European Union Trademark (EUTM) application as well as filing directly with specific foreign countries as additional tools to help protect your trademark portfolio internationally.


Paris Convention: (short for the "Paris Convention for the Protection of Industrial Property"). This treaty was signed in Paris in 1883 and is STILL effective today. The Paris Convention gives anyone who filed a U.S. trademark a six-month window to also register their mark in other Paris Convention member countries and enjoy the same effective filing date there that they do in the U.S. This is especially important, as most other countries prioritize the first to register the mark over the first to use the mark (unlike the U.S.) Here is a list of all the Paris Convention member countries.


Madrid Protocol: (short for the "Madrid Protocol for the International Registration of Marks"). The International Bureau (IB) of the World Intellectual Property Office (WIPO) located in Geneva administers the Protocol. The Protocol essentially works in tandem with the Paris Convention, allowing international trademark registration applicants to use the date of filing in their home country as their priority date of filing for the international mark. It also allows applicants to file for registration in several different regions at once using a single application. The list of all 88 Protocol member countries can be found here.


The actual procedure for filing through the Madrid Protocol is fairly simple:


1. File the mark in your home country.


2. Through your home country's IP Office, you can opt in to filing through the Madrid Protocol. Here is the link for opting in through the United States Patent & Trademark Office (USPTO). (If you prefer to file directly with the international IP office of the region in which you wish to obtain a registration, I have included some info on that below. Personally, I recommend just filing through the WIPO for the significant added convenience.)


3. You'll need to run the same search that you ran in your home country to make sure nobody has filed for a similar mark in the international region you want to register in.


4. Pay the fees. I'll link to the WIPO fee schedule here. The WIPO fees are fairly expensive, (starting at 653 francs for a no-color mark and 903 francs for a mark with color). This includes three classes, but the fees go up for additional classes and additional countries/regions where you want to file. You will likely also have to pay additional fees to your home IP office when requesting a WIPO registration. The WIPO also provides a fee calculator, which can be very useful in estimating the government fees you will owe. Your trademark counsel will of course need to charge additional fees to cover the cost of their time in helping you file the mark.


This can be a somewhat expensive process ultimately costing you a few thousand dollars, but the value you get is significant. For a few grand, you are getting a trademark with international protection, which is a significant asset. Also, this is likely to save you tens of thousands if not more, if someone abroad were to start using your mark before you registered it. If you put off filing your mark internationally, you may find yourself in an international IP lawsuit, or paying an international company to sell you your own mark (if they register it before you do, since most IP offices abroad give priority to the entity that registered the mark first, not the entity that used the mark first).


European Union Trademark Application (formerly named "Community Trademark" prior to March 23, 2016): the European Union Trademark Application (EUTM) process can be a great solution for protection in the EU, as it gives you coverage in all 28 EUIPO member countries. It is typically quicker and cheaper than filing through the Madrid Protocol. The link to file the EUTM application can be found here.


If you file for the EUTM, you enjoy a few benefits:

1) Typically faster turnaround time (5-6 months vs over 12 months through the WIPO under the Madrid Protocol)


2) Typically quite a bit cheaper. If you file through the WIPO and select only coverage in the EU for three classes and a color mark, you're looking at roughly 2000 francs! If you file directly through the EUIPO for the EUTM, your cost would go down to 1050 Euros (or roughly 1260 francs), a nearly 40% cost savings. (though you will need a EU representative, which will of course add a bit to your cost).


3) You do not need to base the EUTM directly on your USPTO trademark, which means you can claim a broader set of class descriptions, potentially giving you a stronger trademark abroad. (The USPTO encourages fairly narrow class descriptions).


The major EUTM disadvantages are:

1) You will need to work directly with EU-based counsel for a "representative" to list on your application within two months of filing.


2) If you decide to file for other countries, you'll need to either directly work with other international IP offices, or you'll still need to go through the WIPO and you would have lost the convenience factor and potentially financial savings as you will have already directly filed through the EUIPO.


3) Perhaps the biggest disadvantage with the EUTM is that it is an all-or-nothing application. If a single member of the EUIPO finds fault with your trademark application in their country, you lost the entire application. There are no EUIPO member country exceptions to the EUTM. This all-or-nothing rule can actually make the EUTM route quite risky.


Filing Directly in particular countries: You can also file directly in the IP offices of specific countries in which you wish to seek registration. What you lose in convenience with the WIPO or EUTM, you certainly potentially gain in cost savings if you aren't looking to file in several countries. Also, a major advantage is that you could broaden claim, as filing through the WIPO require you to use your USTPO trademark application basis, which highly encourages rather narrow claims. By filing directly with other countries, you could broaden the basis of your trademark claim significantly. Of course, you would likely need to work with foreign counsel in the specific countries in which you hope to register your mark.


If you would like Ramos-Lynch Law to file your marks for you, either internationally or domestically, please do not hesitate to reach out to Michael at Michael@RamosLynchLaw.com




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