How to Protect Trademarks Internationally: Part Two of a Three-Part Series

How to Protect Trademarks Internationally: Part Two of a Three-Part Series 

This post is part two of a three-part blog series on the international trademark registration process. 

If you have not read part one, I recommend that you do so here before reading this post. 

Part Two:

Int’l Treaties and Laws for Global Trademark Protection

There are several key international laws and treaties that brand owners should consider when preparing a global trademark filing strategy, including the Madrid Protocol, European Union Trademark system and Paris Convention for the Protection of Industrial Property. 

Madrid Protocol

The Madrid Protocol is an application filing mechanism used by trademark owners that own home country trademark applications or registrations. A Madrid Protocol application, also referred to as an International Trademark Application and ultimately an International Registration (or a/k/a an “IR”), is an application filed through the applicant’s home country trademark office, which is the U.S. Patent and Trademark Office, or USPTO, for most U.S. companies. 

Once the Madrid Protocol application is filed with the USPTO, the USPTO reviews that application and, if all is in order, certifies the application and forwards it to the World Intellectual Property Organization located in Geneva Switzerland – also known as the WIPO.  The WIPO then reviews the application and, if it meets the minimum filing standards, certifies the application and forwards it to each of the designated country trademark offices. 

International Trademark Registration Process

For example, if a U.S. trademark owner designates India, Italy, Finland and France in a Madrid application, the WIPO “files” those applications on behalf of the trademark owner in each of the local trademark offices.

Just like anything else, the Madrid Protocol has advantages and disadvantages.  

The primary advantages of the Madrid Protocol are the following: 

  • There are lower initial filing costs compared to filing national trademark applications via local counsel (those initial savings are mostly due to avoiding local counsel fees); 
  • There is only one Madrid trademark application for a mark (and one resulting Madrid registration), one filing fee (per group of designated countries) and one renewal for all countries designated in a Madrid registration; 
  • Currently, the trademark owner may designate up to 99 countries in a single Madrid filing; and 
  • Once the Madrid Protocol application matures into a registration, the brand owner may continue to designate additional countries within the same Madrid filing. 
  • Key Notes: 
    • After the initial country or countries have been designated and the Madrid Protocol registration issues (known as your “International Registration”), any subsequent country designations will still incur additional filing fees for those countries. 
    • The issued “International Registration” does not grant any substantive trademark rights to any of the designated countries.  The brand owner must still wait for each country office to review the designated country trademark application in the country office; rights are not granted or created in any country until the country trademark office registers the mark. 

Major disadvantages of the Madrid Protocol are the following: 

  • The Madrid application and registration and all of the designated country filings are dependent on the underlying home country trademark filings for the first five years of the registration.  Meaning that if the underlying trademark filing(s) that form the basis of the Madrid Protocol registration ultimately fail or expire within that five- year period, then all designated country applications and issued registrations would also fail. 
  • If the brand owner’s underlying filing(s) forming the basis for the Madrid application fail during the dependency period, the brand owner may still re-file in any of the designated countries via local counsel within the designated grace period and retain the Madrid application priority filing date, which has the effect of substantially increasing overall costs. 
  • Unlike many country trademark offices, the USPTO requires narrowly and accurately defined products/services in trademark applications.  Thus, trademark applications filed in other countries via the Madrid Protocol based on a U.S. trademark filing will also contain the same narrow scope of products even though a designated foreign country may allow broadly defined products.   Therefore, it is sometimes advisable not to utilize the Madrid Protocol for certain countries and instead file national applications in order to secure broader trademark protection. 

For those reasons, brand owners should consider the practicality and risks of using the Madrid Protocol strategy and try not to focus only on the Madrid Protocol cost savings… no matter how enticing they may be… 

European Union Trademark (EUTM)

With respect to the EUTM trademark filing system, a EUTM covers all 28 EU member countries in a single trademark application.  

Primary advantages of the EUTM are the following: 

  • Brand owners need only file one trademark application to cover all EU members, pay one filing fee, and pay one renewal fee; and 
  • There is an automatic extension of protection to new EU member countries without any additional filings, unless a third party from the extended country successfully objects to the extension based upon its prior rights in that country. 

However, there are also the following disadvantages for utilizing the EUTM trademark system:    

  • A EUTM trademark registration is either “good to all” EU member countries or “good to none.”  In other words, if there are parties with prior rights in any EU member country and should a party with prior rights object to the filed application or an issued EU registration and prevail, the EUTM trademark filing would also fail.  That is true even if the objecting party uses its subject mark in an EU member country that is not of interest to the EUTM applicant/registrant. 
  • If a third party successfully objects to a EUTM filing, the applicant may still re-file in any of the EU member countries within the designated grace period and retain the EUTM trademark application priority filing date.   

For that reason, companies should conduct clearance searches prior to filing a EUTM trademark application to identify any third-party rights that may present significant barriers to registration and use. 

Paris Convention for the Protection of Industrial Property – A Key Aspect of the International Trademark Registration Process

The Paris Convention is an international treaty that allows nationals of contracting parties – or states – the same equal rights as nationals of other contracting parties and states. International Trademark Registration Process

With respect to trademark rights, the Paris Convention priority grants a trademark applicant a six-month priority period within which to file subsequent foreign trademark applications.  During that six-month period following an initial trademark filing, a trademark owner may file in other member countries and receive the same priority filing date as listed in its earlier filed application.  

Example: 

  • ABC files in the U.S. on Jan. 1, 2017 for the mark ‘Palm Tree’ for umbrellas 
  • XYZ files in Germany May 1, 2017 for the mark ‘Palm Trees with palm tree design’ for umbrellas 
  • ABC files in Germany June 15, 2017 (claiming a priority filing date of 1/1/17) for the same mark and products 

Under the Paris Convention priority, ABC’s German application receives an earlier filing priority date.  Thus, as between these parties, ABC is deemed to have earlier filing rights in a first-to-file country and may prevent XYZ’s use and registration of its mark based on filing date priority and resulting trademark registration.  

That is the power of Paris Convention priority!  All brand owners should utilize this powerful tool when undertaking a global trademark filing strategy, which allows brand owners to spread out costs over the six-month priority period while maintaining the earliest possible priority filing date in key countries.

Your Homework Assignment and Action Item

Identify which of your priority countries are members of the Madrid Protocol here and European Union here. 

You have now identified which countries may be protected via the Madrid Protocol and EUTM filings and which countries must be protected by filing national applications. 

The next step is to prioritize the marks and countries and initiate trademark clearance searches. 

Post 3, in this three-post series on the international trademark registration process, will provide examples for seeking trademark registration for marks and products in certain countries and jurisdictions while utilizing national, Madrid and EUTM filings. 

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International Trademark Registration Process

How to Protect Trademarks Internationally: Part One of a Three-Part Series

How to Protect Trademarks Internationally 
There are 3 Essential Parts

Overview / Introduction of Three-Part Series: How to Protect Trademarks Internationally

In this three-part blog series, I will discuss how to protect trademarks internationally and provide certain trademark registration planning and protection strategies.  Specifically, I will cover the following topics:

Part 1: Global trademark protection strategy and planning considerations;

Part 2: International treaties and laws strategically used for global trademark protection; and

Part 3: International trademark filing strategies and critical post registration requirements. 

If you listened to my Podcast Episode 2, you will know that I discussed how international trademark rights are created.  If you have not listened to Episode 2, I suggest that you do so before reading this post (it’s only 8 minutes long): Podcast Episode 2 is here. 

As I discussed in Podcast Episode 2, there are two primary ways in whichHow to Protect Trademarks Internationally international trademark rights are created and they are as follows: 

  • “First to file” principle – meaning whoever files a trademark application first for certain products or services and secures trademark registration is generally considered the trademark owner in the majority of countries; and  
  • “First to use” principle –  meaning whoever uses a mark first for certain products or services is typically considered the owner of the mark – but only in the geographic regions in which the mark is actually used, leaving open geographic regions where the mark has not been used for someone else to create rights in the same or confusingly mark. 
    • For that reason, securing trademark registration rights in first to use countries is still recommended in order to secure and reserve future geographic expansion rights in geographic regions where the mark has not yet been used. 

Before proceeding any further, I want to first explain that use of the terms “product” and “products” also refer to and cover “services” and use of the terms “marks” and “trademarks” also refer to “service marks” as the legal standards for both are essentially the same.  So for those service providers reading this post…no worries as the legal standards for products apply equally for services.   How to Protect Trademarks Internationally    

As a starting point in the brand expansion process, it’s important to understand that U.S. – or home country – trademark rights and registrations do not provide brand owners with the right to freely expand into other countries as trademark rights are country specific.  

Therefore, prior to brand and product expansion into new countries, trademark owners must first determine whether their use of “their” trademarks in a new country may actually infringe third party trademark rights already established in that country by undertaking trademark clearance review.  This initial trademark clearance step will provide an assessment of the risks of infringement, and potentially avoid the need to rebrand after product launch should a third party allege infringement and possibly file an action, and whether the mark is distinctive and thus eligible for trademark registration protection.

Part One: 

The Strategic Plan & Overview

As a first step, brand owners should prepare a filing strategy that is based upon their core trademarks and products and their marketing and business strategy.

With respect to trademarks, they should be prioritized based upon their value to the company:

  • First tier marks are House marks, which are those marks used across product lines, and major product names; 
  • Second tier marks are important product names used in major markets; 
  • Third tier marks are valuable names that are used in certain regions as well as names used as sub-brands; and 
  • Fourth tier marks are typically slogans and non-traditional marks (such as trade dress, sounds and configuration designs). 

With respect to products, companies should focus on top-tier countries and jurisdictions where: How to Protect Trademarks Internationally:

  • The majority of sales are taking place;
  • Key customers are located;
  • They have distributors and licensees;
  • They are manufacturing; and
  • They plan to launch their products in the near future (1-2 years). 

Once the core marks and products, and key countries and jurisdictions, have been identified, brand owners should plan their trademark application filing strategy accordingly to maximize protection, reduce uncertainty and minimize overall future registration costs.  

Companies should also audit their trademark portfolios periodically for any gaps in protection.  The audit should include whether there are any core trademarks and products not adequately protected in priority countries either due to recent product line expansions, acquisitions or newly opened markets. 

  • Once audits are completed, brand owners should review their current filing strategy and feel free to modify it, as necessary, to ensure that priority is maintained. 

As companies prepare their global filing and protection strategies, they should plan a consistent strategy that covers core marks and core products and avoid the – what I call – “reactive strategy” – one that lacks focus and typically “wastes” marketing’s limited resources.  A “reactive strategy” is just that – a strategy that reacts to the “next emergency” at the detriment of protecting the company’s core marks and products and one that exhausts the annual budget.  

And speaking of budget, due to the costs of protecting trademarks globally, and believe me they are much higher than most brand owners expect, companies should consider preparing a rolling filing strategy that may be carried out over 1 to 2 years or even 3 plus years depending upon the size of the portfolio and the number of relevant countries.  For that reason, global brand protection should be carefully considered and, in most cases, companies will need to make difficult decisions regarding which of their brands and products to protect, when to protect and where to protect.  

Clearance 

Once the core marks and products have been identified and the strategy has been prepared, the next step is to conduct trademark clearance searches in each of the relevant jurisdictions and countries. These searches may find third party trademark applications and registrations and possibly common law trademarks that may potentially block the use and registration of a brand name in a selected country. 

If the searches identify potentially high infringement risks in certain countries,How to Protect Trademarks Internationally the company may decide whether to seek cancellation of high risk registrations, seek purchase of high risk registrations and trademarks in order to clear the path for its own trademark registration and rights or adopt a different name altogether to avoid uncertainty and potentially costly trademark litigation and re-branding.

The searches should also reveal whether the proposed name is distinctive (meaning that it functions as a trademark, or source identifier) and is actually eligible for trademark registration and protection.

The searches will also look for cultural and connotation issues. For example, in China the number four represents death. For that reason, companies should ensure that their trademarks do not require modification for cultural and translation issues before brand launch.

Homework Assignment and Action Item

Identify your core marks, key products and priority countries/jurisdictions based upon business factors that are most relevant to your business, which may include some of the factors I have listed above.  Then rank them in order of value to the company’s “bottom line.”

In Post 2, I will outline key filing options for securing global trademark registration for your key brands.

Roger Bora is a former U.S. Trademark Examining Attorney, a partner in a major law firm, the creator of this blog and, most importantly, a husband and a father of an amazing 13-year-old son.
How to Protect Trademarks Internationally – 3 Essential Parts