To protect your trademark in other countries, you will need to file a separate trademark application in each country. Work with an experienced international trademark lawyer who has a network of “local counsel” contacts in countries around the world. You can file applications directly in each country, or you can use the “Madrid Protocol” procedure to save some time and money. Since international trademark protection can be expensive, you should work with your trademark lawyer to prioritize where you need brand protection and develop a strategy for building your trademark portfolio.
This post explains some of the different international trademark filing strategies and the related costs. Feel free to reach out and I can help you prioritize your filings and secure your international trademark registrations.
Territorial Rights and International Trademark Strategy
Trademark rights are “territorial.” They are national rights. A trademark registration in the United States only protects your brand within the United States. Trademark protection in other countries generally requires trademark registrations in those countries.
Trademark protection in other countries is important but expensive, particularly for early stage companies. Technology and consumer products companies need to think about where they need trademark protection and how to budget for it.
Think about where your company is generating revenue now, and where it will be generating revenue in the next 3-5 years. Make a list of the most important countries, ranked by projected revenue. this list of economies ranked by GDP can help Then work with a trademark lawyer to think about the costs and prioritize your filings.
First to Use vs. First to File
The US grants trademark rights to the first company to use the trademark in commerce.1 Many other countries grant trademark rights to the first company to file a trademark application.
In “first to use” countries like the US, filing early is still important. In “first to file” countries like China, filing early is critical.
Madrid Protocol - An “International” Trademark Application
There is no one “international” trademark registration that can provide trademark rights in multiple countries. But a “Madrid Protocol” application will let you file a single application in multiple countries at the same time. It’s generally faster and cheaper than filing separation applications in each country. The main benefit is that your US trademark lawyer can handle the filing without subcontracting out to separate lawyers in each country. This saves time and money.
Here are the approximate filing fees for Madrid Protocol applications in major economies:
|Madrid Filing Fee||800||this fee is paid once per Madrid application, regardless of how many countries you file in.|
|China||250||Squatters are common, file here early|
|Japan||300||charges an additional $300 fee upon registration|
|Mexico||180||Squatters are common|
|Switzerland||450||Not covered by EU trademark|
This table is just the filing fees. Your US trademark lawyer will bill some time to prepare and file these international trademark applications. Also, these costs are approximate. The fees fluctuate based on exchange rates.
Note that the EU application (called “Community Trademark or “CTM”) includes all EU countries, but does not include Switzerland. An EU application does currently include the UK, but that may change as Brexit progresses.
Central Attack - The Danger of the Madrid Protocol
Central attack is a major drawback of Madrid Protocol filings. Each Madrid Protocol trademark application is based on an initial national registration (for US companies, this will generally be your US trademark registration). If that initial US registration is cancelled, then each of the Madrid Protocol applications is also cancelled.
This risk lasts for 5 years, and after that, the Madrid Protocol registrations will stand on their own, regardless of the status of the initial home registration.
If your US registration is already rock solid, you can be pretty comfortable using the Madrid Protocol to secure some international registrations. It will save time and money.
Narrower Description of Goods in a Madrid Protocol Application
One other problem with the Madrid Protocol is that it often leads to a narrower description of the goods/services listed in your trademark application. The US Trademark Office tends to require a narrow, more specific definition of the goods/services. Other countries will allow very broad descriptions.
If you start with a US Registration (with a narrow description), then you will need to use that same narrow description in each country where you file a Madrid Protocol application (even if that country would otherwise allow a very broad description).
Overall, this is a disadvantage, but it’s not terrible. If the US Trademark Office will already allow a sufficiently broad description for your business needs, then you don’t need to worry about the possibility that other countries might allow an even broader definition.
Direct International Trademark Applications
There are several major economies that are not part of the Madrid Protocol. To secure these international trademark registrations, your US trademark lawyer will coordinate work with local trademark lawyers in each relevant country. It’s important to work with an experienced US trademark lawyer who has deep connections with trademark lawyers around the world.
Here is the approximate filing cost per country:
|EU||1,700||covers 28 EU countries|
Middle East filings tend to be expensive. However, they are an important market for many products, particularly cosmetics.
|Saudi Arabia||2,750||squatters can be a problem|
Note this table is for both state filing fees and local trademark lawyer fees combined. Your US Trademark lawyer will also bill some time for coordinating international tasks.
Since many countries award trademarks rights to the earliest filer, squatters in these countries will try to grab your trademark early and hold it for ransom. Their payment demands can vary wildly, sometimes demanding hundreds of thousands of dollars.
Trademark squatters are a particular problem in Asia, South America and the Middle East. Dislodging a squatter is expensive. In comparison, filing an early trademark application is cheap.
Some countries will give you recourse through the courts. If you can prove your brand was already “well known” in the squatter’s country before they filed, then the local courts may cancel the squatter’s trademark rights and award you the registration. However, the process is expensive, and difficult to win in many countries.
If a squatter is demanding an unreasonably high price, companies may be forced to use an alternative brand name in the squatter’s country.
Given the risks posed by trademark squatters, I highly recommend early international trademark filings. Consumer products that want global brands will need to budget early for these filings.
Paris Convention Allows for Early “Priority” Filing Dates
The Paris Convention is a treaty that allows you to maintain your filing date between countries for up to 6 months. For examiner, if you file an application in the US on January 1, 2018, you can then file an application in any other Paris Convention country any time before June 1, 2018, and your application will be treated as though it was filed on January 1, 2018.
The Paris Convention essentially gives you a 6 month cushion you can use to delay trademark filing expenses with little risk.
Filing a US trademark application. You should get a reply from the TM Examiner within 4 months, hopefully it’s an approval. Then file a Madrid Protocol application for:
- South Korea
Then work with local counsel in the following countries to file direct trademark applications.
This strategy will get applications filed in the top 19 world economies (by GDP), in a fairly cost-efficient manner.
Feel free to reach out by email if you’d like to discuss an international trademark strategy for your consumer products or technology company.
International Trademark Protection. Kilpatrick Townsend.
with some exceptions involving “intent to use” trademark applications. ↩