Filing an International Trademark: The nuts and bolts


21st century entrepreneurs truly live in a world without borders, marshalling economic opportunities that transcend country lines to produce and extract wealth from all available marketplaces at any given time.

However, on an individual level, globalization very often proves to be a doubled edged sword. While access and exposure to foreign markets provides an otherwise geographically-constrained entrepreneur with seemingly never-ending sales possibilities, the increased mobility and capacity with which we can conduct transactions in different parts of the world means that competition is now both broader and deeper.

Compounding this problem of increased competition is the difficulty associated with identifying and enforcing one’s rights against a competitor in a foreign country who is acting adversely and illegitimately against the interest of the entrepreneur.

While such ill will may manifest in many different ways, perhaps among the most common forms of such illicit behavior is trademark infringement.

\This article will consider the mechanics and benefits of filing an international trademark application as one such tool to guard against brand infringement when conducting international business.

Trademark Basics: The Fundamental Proposition

Before diving into International Trademarks, it is worthwhile examining, albeit briefly, what precisely a Trademark is.  Principally, a trademark is a source identifier; it may be a name, logo, or slogan that when used in conjunction with the sale of a particular product or service, alerts the consumer as to the source-producer of the product or service.

The prospective trademark must be sufficiently distinct vis-à-vis the goods sold in order to qualify as a “trademark.” So, when an individual sees the word ROLEX on a watch, he immediately understands that the watch was made by the Rolex company and will therefore be either more or less inclined to purchase the watch, depending on the consumer’s preexisting beliefs about the Rolex company.

Upon successfully obtaining a registered trademark, the holder of the trademark, which in our case is the Rolex Corporation, now has the sole and exclusive right to use the name ROLEX in conjunction with the sale of watches and in the event that another company starts selling watches with ROLEX imprinted on the case without Rolex’s permission, Rolex has the legal right to sue for trademark infringement.

The Essential Purpose of an International Trademark

Let’s suppose for the moment that Rolex is an American Company (which it may very well be) and during the first two years of its existence, it only planned on doing business in the United States and therefore only cared about owning the rights to the Rolex name in the United States.

Pursuant to this original objective, the company simply applied for protection by submitting a trademark application to the United States Patent and Trademark Office (USPTO) for the word mark, ROLEX, in International Class (IC) 014 and listed as its designated goods, “Watches”. However, after 2 years, it recognized that it had the potential to be a global brand and wanted to start selling Rolex’s throughout countries in Europe and Asia. So, what’s Rolex’s next step? Obtaining trademark protection internationally.

How to Obtain International Trademark Protection

In order to register one’s trademark internationally, a company may pursue one of two different strategies. The company can either apply directly to the target country’s intellectual property office or it can submit one, centralized trademark application under the auspices of the Madrid Protocol, which is governed by International Burea of the World Intellectual property Organization (WIPO).

The basic idea here is that rather than requiring, in our example, Rolex from applying to the individual Trademark offices of Italy, France, Spain, Japan, and Canada, Rolex can submit only one trademark application and designate a whole batch of countries to be included in the singular trademark application.  Clearly, this is an easier and more efficient way of obtaining an international TM. Party-Countries to the Madrid protocol include Australia, Austria, Canada, Israel, United States, Japan and many others.

Submit a Madrid Protocol Trademark Application

In order to submit an international trademark application through the Madrid Protocol, simply follow these steps:

  1. Obtain a trademark in a “home-country”, such as the United States by filing a trademark application with the USPTO
  1. Access the USPTO’s Madrid Protocol Trademark Application page
  1. Enter the US TM Application’s serial number and designate the appropriate goods/services to correspond to the mark
  1. Designate which countries you’d like to include in the trademark application
  1. Input the administrative information about the trademark holder
  1. Pay the government filing fees and submit the trademark application

When filing an international trademark, please be mindful of the details; even the slightest procedural slip up may result in the trademark’s rejection and potentially months of bureaucratic difficulties.  So, when is the right time to file an international trademark? As soon as the company decides that it does not want a competitor to use its trademark abroad.

Abe Cohn is an attorney at Cohn Legal, PLLC, a law firm built specifically to provide a personalized experience for entrepreneurs. Abe’s area of expertise is intellectual property and startup law.