Foreign Trademark Filing

Filing for an International Trademark

Trademark law is specific to the country in which the trademark is used.  For most countries, this means that to get any enforceable trademark protection in that country, you need to also register your trademark with a trademark system enforceable in that country.  For some countries, you can register your trademark in the country without actually using the trademark in the country but you will need to prove trademark use within three-to-five (3-5) years of the registration.

Although you can always file for a trademark application in a country at any time, when you file a trademark in the United States, you have the ability to file a trademark into a foreign country that claims priority to the U.S. trademark application if you file within six (6) months from the U.S. filing date, and there may be advantages and fewer barriers to registration than if you wait.

If you are not planning to expand your business internationally, or do not plan to expand within the next year or two, it may be best to wait before filing for international trademarks.

MADRID PROTOCOL Trademark Filings

Currently, there are two ways of filing foreign trademark applications. The first option is to file under the Madrid Protocol. The Madrid Protocol provides a mechanism that enables trademark protection to be pursued in multiple countries simultaneously (a specific advantage if filing in 5 or more countries). There are advantages and disadvantages to filing under the Madrid Protocol.

One of the principal advantages is the simple filing procedure. The applicant need only file one application with his or her home Trademark Office. This process requires only one set of documents, in one language, with one government filing fee, in one currency which could ultimately result in protection in several countries. Moreover, the filing fees and attorney fees are reduced from what they would be for filing directly into individual foreign countries (in most cases, there is no need to obtain a foreign associate in each country to represent your case).  The Madrid Protocol also offers an expedited examination feature (12-18 months) which will lead to greatly reduced waiting periods for the processing of applications. Without the Madrid Protocol, many countries take in excess of several years to process a trademark application.

Among the disadvantages of the Madrid Protocol process are that an international application/registration is dependent on the home application on which it was based for five years. During this time, if the home application is successfully opposed, cancelled or withdrawn, the international application/registration for each individual country will be cancelled or withdrawn as well, unless the dependent international application/registrations for each country are “transformed” into separate, national applications in the designated countries, at additional cost for each individual application.  These transformed applications are then treated as normal national applications and may be subject to additional national fees and are not summarily cancelled as they would be without the transformation option. After five years, the International application/registrations are independent of the base application or registration.

The associated costs to file an international application under the Madrid Protocol depend upon the countries selected. Here’s a list of the countries who are members of the Madrid Protocol Agreement.

Direct Country Foreign Trademark Filings

The second option for filing a trademark application foreign is to file directly into the countries of your choice. As with the Madrid Protocol, there will also be an examination phase of prosecution with this process. The advantages of this type of filing is that success or failure in a particular country is tied only to what happens in that country and is not dependent upon success or failure in any of the other countries like with a Madrid Protocol application.  The disadvantages to this type of filing are the additional fees that incurred from obtaining a foreign associate in each country to represent the case in each Trademark Office.  Another disadvantage, unlike the Madrid Protocol, is that some countries do not automatically enter the examination phase and it may take up to several months to start the trademark examination process.

The best strategic choice for filing your trademark application – directly or file through the Madrid Protocol process – will depend upon what your trademark is, how many countries you want to file in, and how likely it is for your trademark to be rejected in any one of the countries. 

If you are considering filing a trademark in any country, please contact a qualified professional at Booth Udall Fuller, PLLC to help you develop an appropriate strategy for whether to file, which countries will give your company the best value to file in, and which filing approach is best for your company.