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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 Derrick Lavon, have a nice day.
- Edmundo Owney, Staff Member
did you know that trademark protection solely for the country of Belgium Luxembourg or the Netherlands are unavailable the reason for this is that these countries are combined into a region known as Benelux and trademarks in this region are administered by the Benelux office of intellectual property boy successful trademark applications filed with VoIP will result in protection for the entire Benelux territory imbed luxan ownership of a trademark is acquired through registration and ownership is determined on a first-to-file basis marks are divided into word marks the name under which product or service is put on the market device marks logos labels and words in a specific font which are presented in a special layout shape marks in certain cases the three-dimensional shape of a product or packaging can be a mark color marks in exceptional cases a single color or combination of colors can be a mark this is the case when the public recognizes a certain product or service by its color sound marks advertising jingles are sometimes so well known that the public immediately recognizes what they refer to on hearing it trademarks must be distinctive capable of being represented graphically not descriptive not in shapes that result from the nature of the goods themselves or are necessary to obtain a technical result not immoral not consist of a flag or emblem protected under the Paris Convention and not deceive the public during the application voice will not check whether the mark violates any previously registered trademarks or whether there are related grounds for refusal an application for registration of a Benelux trademark can be filed in Dutch and French or English the addition of English makes Benelux a very entry stink choice for Anglophile wishing to file a trademark in the EU and a trademark application may be filed in multiple classes under the NYSE classification now you could always file in the UK proceedings to be in English however with brexit on the horizon this would not be an interesting option for those seeking access to the EU the exclusive right to a trademark comes into effect once boy has registered the application but before this the trademark application must be published on the boy preju stir for two months the term of protection of a Benelux trademark is 10 years and it is possible to renew the registration for consecutive 10 year periods six months before the ten year period expires the voice will notify the owner unlike Germany in Benelux the trademark applicant does not need to be represented by a local attorney only in address located within Benelux is required also while filing fees and Benelux are relatively cheap approximately two hundred and forty-eight euros filing for an opposition is very expensive approximately 1030 euro especially when compared to the European Union intellectual property opposition fee of approximately three hundred and twenty year old now you may be thinking why would I follow a boy when I can file instead with the European Union intellectual property offers the EU IPO well trademarks register report can oppose similar to u IPO trademarks with the later priority date and Benelux trademarks can only be opposed by other Benelux registered trademarks or EU IPO registered trademarks and not other EU local national trademarks which is providing extra protection for your mark also it's very difficult to cancel Benelux registered trademarks as this requires a full-blown court action with the local courts which is both costly and complicated as opposed to the EU IPO which has low-cost administrative proceedings for all cancellations in addition for proof of use embed elects minimum use is sufficient to prove use where the EU IP o requirements for proof of use are very elaborate and complicated lastly unlike the EU IPO which requires all non EU residents or EU domiciled companies to be represented by an EU attorney which of course is costly boid allows authorized agents to represent them foreign applicants for substantially lower costs if you would like more information on applying for a trademark in Benelux i suggest you go to the boyd website at WWDC Kanaks of applying for trademark registrations defending your marks opposing other conflicting Mart's dealing with office actions and many other intellectual property issues my name is Jonathan Morton and I am a licensed US attorney and a member of the trade markers Network don't forget to subscribe
Thanks sithulet your participation is very much appreciated
- Edmundo Owney
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I've studied geophysics at Seattle Pacific University in Seattle and I am an expert in game theory. I usually feel apathetic. My previous job was bridge and lock tenders I held this position for 26 years, I love talking about literature and pachisi game. Huge fan of Dr. Dre I practice equestrian: eventing and collect first editions.
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