MightyRecruiterIf you have trademarked a good or service in the United States, it is also a good idea to get an international trademark in order to protect your trademark overseas. This is especially important now with the internet being able to reach to all corners of the world. It could be very damaging if someone from another country used your trademark, so it is in your best interest to gain international protection. You can register for an international application only after you have registered in your home national office.
World Intellectual Property Organization
The World Intellectual Property Organization (WIPO) is a self-funding agency of the UN, and it is made up of 188 member states. It is the global forum for all things related to intellectual property. Its mission is to enable creativity and innovation for everyone’s benefit, and its international trademark system is known as the Madrid System.
The Madrid System helps to streamline the process of registering and managing trademarks universally. It is a centralized filing procedure in which you file one application in only one language (English, Spanish, or French) and pay one set of fees.
Upon the submission of your application, WIPO conducts a formal inspection of your application. Once it is approved at this level, an international registration certificate will be sent to the Intellectual Property (IP) offices in all of the territories where you want to seek protection. These offices will need to examine the application and make a decision within 12 to 18 months. Those offices that decide to protect your trademark will send out a grant of protection statement. The nice thing with the Madrid Protocol is that if one country denies your application, it has no bearing on the decisions made by the other countries.
Community Trademark Application
Another option for one-stop trademark application is the Community Trademark (CTM). The registering of the trademark is done through the European Union, and like the Madrid System, there is only one application and one fee. The issue with CTM is that if one country rejects the proposed mark, the entire application is rejected.
General Tips to Protect Your Trademark Globally
Although WIPO and the European Union help to simplify the process of protecting your trademark in other areas of the globe, it is also a good idea to perform your own research so that you know what to expect and what challenges you may come across. The following are some general tips to help you through the process:
• Understand the trademark laws of other countries so that you know about penalties or liabilities you would face if goods are not appropriately trademarked according to the rules in a particular country.
• Conduct research about the notice forms that may be required in the countries where goods will be marketed. For instance, some international markets consider ® and ™ to be legally protected symbols, while others do not.
• Find out if the country is a participant of any treaty covering intellectual property.
• Research trademark disputes in your countries of interest and how these disputes were handled in court.
• Find out if alternative dispute resolution (ADR) is available if you have a trademark problem in another country. This resolution is usually more cost-effective and faster than litigation would be.
Common Mistakes When Applying for an International Trademark
One of the mistakes that individuals and companies make is that they don’t double check to make sure that they are clear owners of the mark. This is imperative when filing for a trademark internationally. Owners of the mark need to also consider both the current and future purposes of the brand name so that future commerce lines will be covered by the brand. Also double check the translation of the brand in foreign markets so that it doesn’t mean something offensive.
Legal Disclaimer
The content on our website is only meant to provide general information and is not legal advice. We make our best efforts to make sure the information is accurate, but we cannot guarantee it. Do not rely on the content as legal advice. For assistance with legal problems or for a legal inquiry please contact you attorney.