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Written by : Jaime Cleveland
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hi everybody trademark attorney Josh gurbin here and one of the biggest questions I get from clients is how do I register my trademark internationally and there are two ways to register your trademark internationally one is through the Madrid Protocol and the other is by hiring a local attorney in any individual country you would like rights and having that local attorney filing the application for you so the biggest myth we have to dispel is that there is a way to internationally register your trademark that's going to cover all the countries around the world each individual country is its own sovereign and requires its own trademark application so regardless of how you apply for your trademark on an international scale every individual country is going to review your application and approve it or refuse it based on their local register the one exception here is the European Union where there is one trademark called an European trademark that will cover all the EU countries so let's go back to the two ways that you can actually make these filings the first is through the Madrid Protocol the Madrid Protocol is a system that was created amongst a lot of different countries that said look we understand it's burdensome to go and have to hire a local attorney to file a trademark application in each individual country so we'll allow a standard application to be filled out by somebody and submitted without an attorney in the local country - as you know - any country that's a member of this treaty essentially and so what you can do is you file one application with an international organization called the World Intellectual Property Organization or WIPO and you check the box for each individual country that you would like rights then that application gets submitted to all those different countries for their own individual review and as those individual countries do their reviews they'll come back to you and they'll say up your trademarks granted here or note your trademarks refused here and if there's ever refusal of the trademark in a particular country then you have to go hire a local council to deal with the refusal in our experience and this is extraordinarily anecdotal and not scientific by any means but about 80% of the trademarks filed through the Madrid Protocol will just get accepted and then there's about 20% that won't so you you definitely have a lot of cost savings by filing through the Madrid Protocol because we don't have to hire as many local counsel but it's still not a silver bullet solution to just getting the trademark everywhere you want they're still going to be pushed back from certain countries and you're still going to have to go hire local councils sometimes to deal with that so one of the major drawbacks of using the Madrid Protocol is that you have to base that international application through the protocol on an application or registration in your home country so let's say you're a business in the United States and you filed your trademark in the US it'll take 8 to 10 months at minimum for the trademarks to go through the process here and get registered but at the same time you say you know what I want to file my trademark in China Australia the EU and I want to get these filings in now as well so let's say we file the application through the Madrid Protocol for China EU Australia and we've got the pending application here in the US if for some reason the US government denies your u.s. application and we cannot get it registered that then causes the refusal of all of those other applications we filed around the world so your Madrid Protocol application is highly dependent on your u.s. application registering and staying registered so because of this connection between your u.s. application and the foreign applications a lot of times it can be advantageous to just go in hire a local counsel in these countries to have them file the applications so that you're not tied to whatever happens in the US process so if we do a clearance search for our client we say we know your u.s. application is going to be a little risky we do not want that u.s. application being the basis of all these other international filings so in that case we'll go and we'll hire the attorney in Australia in China in the EU to make these filings individually it may be a little bit more expensive but now if something happens to the u.s. trademark we don't have to worry because these other jurisdictions they're just going to review the trademark on its own merits and it's not going to be tied to the US application now you may say well Josh that seems complicated have to go find an attorney in China we can trust your Australia that you and all these different places and that's true it's tough but that's why you know if you hire someone like myself or you hire another good trademark attorney we have relationships with these folks because we're constantly working in these jurisdictions so if somebody comes to me and says I need to file a trademark in Australia I have three or four people that I've worked with for years that I trust inherently that we can have file your application and do so at a really reasonable rate because we've vetted them and we have preferred rates sometimes with these local counsel so I hope you found this video helpful remember there is not one way to internationally register your trademark we have to go into each individual country with the exception of the EU and acquire rights and this can be done in two ways one through the Madrid Protocol and two through filing with local council in each individual country of course if you have any further questions about your trademark or your situation please feel free to drop me an email give me a call get in touch through LinkedIn however you prefer thank you so much and I'll talk to you soon you
Thanks for your comment Emmy Kanoy, have a nice day.
- Jaime Cleveland, Staff Member
the rules for registering a trademark are governed by the laws of the country in which the registration application is made and these rules differ from country to country thus companies must submit application forms to the central office of the countries in which they intend to operate in line with their established procedures now despite occasional differences many territories offer vastly similar processes and protections largely underpinned by international intellectual property agreements here are just some of the differences that will be encountered when registering a trademark in different territories United States of America America is one of the busiest territories for trademark registrations in the world US law stipulates that in order for a mark to be registered it must first be used in commerce in addition once the mark is registered you are under an obligation to maintain use of your mark if you intend to keep the brand active and avoid revocation ownership therefore does not rest merely upon registration but hinges upon the actual use of the brand Italy in Italy eight non registered mark it's still protected though the extent of this protection is lesser than afforded to a registered mark pursuant to the Civil Code trademark registration does not nullify the rights of those who have used it up till this point under certain conditions someone who proves that they have previously used a mark that another is seeking register has the right to continue to use it provided this is within the geographical and general limits of its previous use USA also has similar protections China Chinese legislation on the other hand only grants protection for Marx when they are actually registered the previous use of a brand therefore does not confer any rights of priority furthermore as in the USA Germany France and Japan the first-to-file principle applies whoever files the trademark application first acquires the ownership rights in China as well as other territories following the first-to-file principle it is essential to register well in advance of the effective start of business activity in order to ensure such use is protected moreover due to the lengthy waiting periods to obtain trademark protection anywhere from 18 months to 3 years and the fact that protection only subsists once registration has been obtained it is advised that businesses wishing to register mark in China allow plenty of time for protection to arise before entering the market now additionally Chinese law requires a translation if the mark is in a foreign language when doing so it is also strongly advised to register a corresponding version using Chinese characters both to avoid risks of counterfeit competitors and excluding your mark from a share of the market and therefore potential customers unlike many other systems China also requires that a separate application is made for each class of goods or services the trademark is to be registered with regards to this requirement increases both the time and expenditure for registration of a mark Brazil Brazil also requires that each registration in a class of goods or services to be completed on a new application form again increasing time and cost expenditure a Raziel adheres to the first-to-file principle meaning registration of the mark is necessary for protection further requirements of trademark registration in brazil are that the mark must be capable of being visually perceptible therefore unconventional marks such as sounds and smells are incapable of registration in Brazil now Brazilian law just like UK and EU law also stipulates that if a mark has not been put to bonafide use within five years of registration being granted the mark may be subject to revocation India in India marks which are considered by the authorities to be contrary to public order or good morals are deceptive or offensive and they're not capable of registration many other territories have such a clause including the United Kingdom however due to the multitude of religions and beliefs present throughout India it is a viable that businesses wishing to register their brands in this territory carry out prior analysis in this vein if upon publication of a register mark a person wishes to file for opposition on any grounds they must do so within four months with the opportunity to apply for a one-month extension when it comes to supplying evidence of the reason for opposition this potential extension on the time for opposition means that a time taken to register of mark may increase the USPTO the EU registration allows for a trademark to be registered in all EU states current and future with one single application form on one set of fees the European intellectual property office EU IPO receives applications from all over the globe and a pom registration allows trademark holders to exercise their exclusive rights in all 28 territories the advantages in pursuing an EU registration with regard to time and money and expenditure need not be explored any further white Bois wider than EU registration is the World Intellectual Property Office International registration referred to as the Madrid system this registration process enables businesses to file one international application from their country of origin and one language paying only one set of fees yet the mark is capable of being registered in any of the 104 members which are party to the Madrid agreement this international registration process entails access to the same protection that the laws of member countries confer upon national trademarks please feel free to watch more of our videos to get valuable insights about the mechanics of applying for trademark registrations defending your marks opposing other conflicting marks dealing with office actions and many other intellectual property issues my name is Jonathan Morton and I'm a u.s. licensed attorney I'm a partner with the law firm of Morton and associates and a member of the trade markers Network thank you for watching
Thanks Winona your participation is very much appreciated
- Jaime Cleveland
About the author
I've studied molecular physics at John Paul the Great Catholic University in Escondido and I am an expert in occupational health psychology. I usually feel awake. My previous job was couriers and messengers I held this position for 17 years, I love talking about longboarding and race walking. Huge fan of Mary Lee Pfeiffer I practice judo and collect prizes.
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