Trademark Titan™ Blog

Information for in-house counsel, brand owners and entrepreneurs. Committed to international trademarks, copyrights, branding and other IP issues.

Trademark Titan™ Blog  - Information for in-house counsel, brand owners and entrepreneurs. Committed to international trademarks, copyrights, branding and other IP issues.

How to Protect Trademarks Internationally: Part Three of a Three-Part Series

How to Protect Trademarks Internationally:

Part Three of a Three-Part Series

If you have not read parts one and/or two, I recommend that you do so here   (Part 1) and here (Part 2) before reading this post.

Part 3: International Trademark Filing Strategies and Critical Post Registration Requirements

Once brand owners have identified their core marks and products, selected the primary countries of interest, identified which of those countries are members of the Madrid Protocol and European Union, as well as any other country pacts for filing strategy, such as Benelux (covering Belgium, Luxembourg and Netherland), African Intellectual Property Organization and African Regional Intellectual Property Organization, with each covering certain African countries, and undertaken proper trademark clearance in the relevant countries, they are ready to formalize their trademark application filing strategy.

As a first step, brand owners should undertake a cost estimate review for the selected countries and marks.  The brand owner is then ready to prioritize the primary countries and marks based upon its annual budget.  As discussed in Post 1, the filing strategy may consist of a one to three year (or more) “rolling” filing strategy depending upon budget and, as discussed in Post 2, you may spread out the filing costs during the six-month priority period provided by the Paris Convention.  

I. International Trademark Filing Strategy – Example

Selected countries of interest:

  • Brazil, Canada, China, Columbia, France, Germany, India, Mexico, Norway, Panama, Poland, Spain, Sweden, Switzerland, U.K., and all of the EU member states if economical

How should the company proceed with trademark protection?  Should the company use the Madrid Protocol? European Union trademark filing? Or national filings? Or possibly all three?

The company should first consider the risks with respect to utilizing the Madrid Protocol and European Union trademark filing systems with the primary risks being those discussed in Post 2.  If the risks are low, the next step is to determine the Madrid Protocol and European Union member countries and the countries requiring national filings.

Madrid Protocol member countries/jurisdictions (based on my example):

  • China, Colombia, France, Germany, India, Mexico, Norway, Poland, Spain, Sweden, Switzerland, U.K., and the EUTM (covers all 28 EU member countries)

EU Member countries (based on my example):

  • France, Germany, Poland, Spain, Sweden and U.K.

Non-member countries requiring national filings:

  • Brazil, Canada, Panama

A few important considerations:

  • Brexit. With the U.K. possibly exiting from the EU, it is absolutely prudent to also file a national U.K. trademark application if a EUTM application is filed in lieu of national EU country filings.
  • China. Although China is a member of the Madrid Protocol, it’s strongly recommended that China not be designated via Madrid application due to the short time period within which a trademark applicant must respond to an office action.  Instead of designating China via the Madrid Protocol, companies should instead file national applications via local counsel.
  • EUTM. If the company is confident that its mark is eligible for registration in all EU member counties (no major potential third party objections or non-distinctiveness issues), or is willing to take the risk in exchange for securing broad trademark protection, the company may elect not to file national EU member country applications (e.g., France, Germany, Poland, Spain, Sweden and U.K.) in exchange for protection in all 28 EU member countries via the European Union trademark, which may be filed via the Madrid Protocol application.
  • Madrid Protocol and EUTM vs. national filing cost comparisons:            
    • Madrid Protocol vs. national filings (for Madrid Protocol member countries) can provide substantial savings.                   
    • In some cases, those savings can be over 40%!
  • EUTM vs. individual EU member national trademark applications:        
    • Average national filings per country: ~$1700 (assuming there are no obstacles to registration and might only cover one class of goods/services for that cost).
    • EUTM for ALL 28 countries: ~$3500! (assuming there are no obstacles to registration and may cover up to three classes of goods/services for that cost).

Potential Strategy:

File Madrid Protocol application for:

  • China, Colombia, France, Germany, India, Mexico, Norway, Poland, Spain, Sweden, Switzerland, U.K., EUTM

Requirement: a brand owner must own either a pending home country trademark application(s) and/or registration(s) that would form the basis for the Madrid application.

National trademark applications for:

  • Brazil, Canada, China, Panama

Paris Convention:  If Paris Convention priority is available, the brand owner may opt to file the Madrid application first then file the national applications over several months to spread out the filing costs. 

As you can see, there are many filing considerations and options for seeking global trademark registration protection.  Rather than aimlessly filing global trademark applications on a “hit-or-miss” basis, brand owners should first create a well-crafted strategy, one that minimizes risks and costs while maximizing protection, and then execute that strategy while always maintaining flexibility for change, when necessary.

II. Critical Post-Registration Requirements

Once brand owners secure trademark registration protection for their marks and products, there are certain actions they must take to ensure that their rights remain active and enforceable, including the following:

  1. Use: If registered marks are not used for the registered products for three consecutive years post registration (five in some countries), their registrations become vulnerable to cancellation by third parties for non-use.
  1. Proper Use: Using marks improperly may render them generic terms with all trademark rights being lost.  Did you know that aspirin, escalator and yoyo were all once trademarked terms?  Did you know that the mark Google® is being challenged as being a generic term for searching the Internet?  “You won’t google that! You’ll search the Internet via Google® search engine for that.”  That issue is another post…at another time.
  1. Trademark Licenses: Some countries require trademark registrants to record trademark licenses with their Trademark Offices if registered marks are licensed to third parties for use in their countries.  Failure to record a trademark license in those countries renders a trademark’s registration vulnerable to cancellation for non-use, since absent the recordal, the mark is deemed not in use by the trademark owner. 
  1. Maintenance: After registrations issue, their owners must make periodic maintenance filings and pay periodic maintenance fees to maintain active and enforceable trademark registrations. Failure to make those filings will result in the cancellation of issued registrations, resulting in the loss of trademark rights.

III. Closing

To summarize, trademark owners must recognize that trademark rights are country specific, there are first to file countries and first to use countries, and trademark registrations are essentially government issued licenses for the right to import and export branded products and conduct business in a country.

Companies should audit their trademark portfolio annually and prioritize their trademarks, products and countries of interest.  Companies should also actively manage their portfolio and implement protocols for trademark clearance and enforcement strategies and – most importantly- develop an overall focused strategy that takes into consideration the budget while minimizing risks and maximizing protection.

Brand owners that fail to implement a coherent and consistent global trademark strategy will likely find that they have failed to maximize brand protection, possess inadequate trademark protection for key brands and products in key markets, have not minimized business and infringement risks and consistently run over budget.

IV. Your Assignment and Action Items

  • Undertake a cost estimate review for your primary country filings;
  • Prioritize the primary countries and marks further based upon the estimated costs for registration vs. the annual budget;
  • Prepare a one to three year (or more) “rolling” filing strategy, if necessary; and
  • Review the strategy every six months or year and remain flexible.

Roger Bora is a former U.S. Trademark Examining Attorney, a partner in a major law firm, the creator of this blog and, most importantly, a husband and a father of an amazing 13-year-old son.

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