International Trademarks: Everything You Need to Know
Registering international trademarks protects your brand if you intend on conducting business outside of the United States.3 min read
2. Specific Treaties Are Important for International Trademarks
3. Does a True International Trademark Exist With WIPO?
4. How Much Importance Does a National Trademark Have on International Trademarks?
5. How Long Does International Registration Last?
6. Is International Registration Mandatory?
Registering International Trademarks
Registering international trademarks protects your brand if you intend on conducting business outside of the United States. There is no such thing as having an all-inclusive, international registration. There are, however, treaty agreements put in place which can use the considerable sway of your U.S. trademark protection for rights in another country.
If you consider the large number of structures, cultures, laws, and languages comprising the international trademark landscape, it can be a bit overwhelming to sift through. For many companies wishing to do business outside the U.S., several systems and treaties help smooth the navigating of an application process. It is fortunate that the policies help companies get value for their intellectual property abroad.
Specific Treaties Are Important for International Trademarks
There are three basic agreements connected with international trademarks. The WIPO or World Intellectual Property Office is a hub that administers regulations for international applications and processing. The most massive and oldest treaty of the three is the Paris Convention of 1883. Today, there are 177 member states. When this agreement was signed, it initially made it possible for a business to claim a "priority right," for an earlier filing date when done within six months of applying in another member country.
The other two treaties which comprise what is known as the Madrid System are:
The Agreement of 1891 has a roster of 55 member countries. 98 parties belong to the Protocol of 1989. Both the Agreement and Madrid Protocol are parallel structures. However, the Protocol takes the first order over the two.
Does a True International Trademark Exist With WIPO?
The fact is no trademark is valid throughout the global expanse. However, with the vast number of countries taking part in the Madrid System, you can delight in having protection within many regions. The World Intellectual Property Office reviews your international registration application as the formal authority. Each country in the agreement where you apply will also examine your registration. While global structure streamlines the process, you can still end up dealing with various contracting offices to register with — not just the WIPO.
How Much Importance Does a National Trademark Have on International Trademarks?
Five years after registering is a period of dependency. Your international trademark relies on your registration in the United States. Parties have been debating the issue over recent years. As it stands, the protection for registering your international mark depends on a local application with the U.S. Patent and Trademark Office (USPTO).
This means if something should happen with your national registration within the first five years following your application, it impacts your international trademark as well. For example, if a company has justifiable cause to have your U.S. application voided during those years, a "central attack" occurs. That process could mean the end of your international mark.
How Long Does International Registration Last?
Following the application date, your trademark lasts for ten years. You do not have to show evidence of using the mark during the five dependency years. After the registration expires, you can apply for renewal by paying a fee. The application process is clear-cut. You register with the USPTO, also referred to as the Office of Origin, has the responsibility of certifying your registration.
Is International Registration Mandatory?
No official authority requires you to have international registration. Although, if you conduct business in countries other than the U.S., it is best to consider protecting your mark. If all your dealing is domestic, you can decide if it is worth your money and time. If you sell online, it means making your services and products using your U.S. trademark available overseas. In such cases, it might be right for your brand to seek international registration.
Whichever countries you have a commercial presence in or wherever abroad you intend to use your trademark for products or services, those are the places to apply should you decide to register. Many jurisdictions do not require you to use your mark for international business when you submit your application, but some countries do. An experienced attorney could tell you if a state has that requirement.
If you need help with anything about patents, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.