Lex Indicium

Expanding Your Trademark Portfolio Overseas: Filing Strategies to Consider

November 24, 2020


Trademark rights are jurisdictional, meaning a trademark registration issued in the U.S. may be all but worthless in trying to stop infringement in say, Australia. If you do business outside of the U.S., pursuing trademark registrations in other countries may be valuable. U.S. trademark owners have several options with respect to pursuing international trademark rights and the best choice for your company depends on a few factors, including your goals and budget. As a very general rule we often tell clients that, subject to any budgetary constraints, it makes sense to try to obtain trademark protection in those countries where your company currently trades AND where you intend to trade (meaning generate sales/shipments) in the next 18-36 months.

The main paths to pursuing trademark registration in other countries are:

  • to file separate national/regional (where available) applications directly with each local intellectual property office in the country or region of interest; or
  • where feasible, file a single application via the World Intellectual Property Office (“WIPO”), designating the individual countries and regions of interest.

The One Size Fits All Approach – Filing Through WIPO using the “Madrid System”

  • Can be Less Expensive, But Rights Will be Narrower and Vulnerable

One filing option that has an immediate attraction to American applicants is filing a single application (based upon an existing U.S. application) via WIPO. A U.S. attorney can file this application through the USPTO and designate member countries of a treaty referred to as the “Madrid Treaty” to obtain trademark rights in those countries that are consistent with the U.S. filing. This system creates an extremely efficient approach to international filing. Furthermore, the system can be extremely cost-effective, potentially saving up to a third or more as compared with the total cost of applying directly to each local intellectual property office.

But there are risks associated with using the Madrid System. First, the international application (and by extension, rights in each designated country) are at risk IF the underlying U.S application or registration upon which the WIPO/Madrid filing is based, fails or is canceled within five years of registration.  So, if for some reason the U.S. case does not survive, is opposed, or otherwise never registers, then the filings through the WIPO system would also fail.  Also, because the filings through WIPO depend on the initial U.S. case, the scope of the claims in any foreign registrations acquired through the Madrid System will be identical to the U.S. case. That outcome could be perfectly fine, but because the U.S. application system requires U.S. applicants to rely upon the use of marks, the claims in the dependent international cases will be as narrow as the U.S. filing, even if the applicant might have been able to make broader claims had they filed nationally.

The Comprehensive, National Filing Approach

  • Resource Intensive, But Potentially Broader, Stronger Rights

An alternative to the “one-stop-shop” approach provided by WIPO is to pursue individual, national applications in each country in which you wish to obtain trademark rights. To do so, rather than filing a single application and “designating” countries of interest, the applicant must engage individual attorneys in each country/jurisdiction of interest. Because this approach involves hiring separate counsel in each country, it is often more expensive than using the Madrid System.

However, while pursuing national applications can result in greater expense to the applicant, in many instances, this is the best and/or the only option you may have. First, not every country participates in the Madrid System. (A list of current participants can be found here). If you want to apply for trademark registration in say, Ecuador, you cannot use the Madrid System and have to file directly with the Ecuadorian trademark office.

In addition, pursuing national applications can result in broader and less vulnerable rights. For example, the regulations in many countries allow for making far broader claims to goods and services than would be allowed in the U.S. Hence, applicants that file nationally can tailor the claims in each country to local practice rather than relying solely upon the claims in the U.S. application. Hence, in some circumstances, using a national filing approach can garner much broader trademark rights for you.

Furthermore, unlike under the Madrid System, the national applications won’t be dependent upon the underlying U.S. filing. Hence, even if something goes wrong with your U.S. registration or application, the individual national cases could proceed to registration and would be valid even in the absence of underlying U.S. rights.

Priority Claims and U.S. Filings

Regardless of the filing strategy used, U.S. applicants enjoy a special benefit if they file a foreign application in most other countries within six months of the related U.S. application filing date. Essentially, if you file a trademark application in another country subsequent to, but within six months of the U.S. filing date, and that country is a signatory to the Paris Treaty (see list of participating countries here), then that local trademark office will essentially treat your application as if it were filed in the country on the same day you filed the U.S. application. This “priority” works to block applications in other countries for marks identical to your U.S. filing IF you file your U.S. case is filed in this six-month window. For example, if you file a trademark application for ABC in the U.S. on January 1, 2021, and then file that same application claiming the U.S. filing date in France on March 1, 2021, but a competitor went ahead and also applied for ABC in France on February 1, 2021, the French trademark office will treat your French application as being filed first and refuse your competitor’s application even though your application was filed second.

Strategies and Management of Acquiring Foreign Rights

While some trademark owners may choose to file their own U.S. applications, given the complexities of international trademark law, it almost always makes sense to centralize your international trademark portfolio with a legal professional who can help think through the strengths and weaknesses of various methods of filing in the context of the specifics of your situation. In addition to helping identify the right filing strategy for your portfolio, having a single trademark professional assist you will help safeguard against competing deadlines being missed, and ensure that the various filings are “harmonized” across jurisdictions.

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