Filing An International Trademark

How to file an international trademark when going global?

Author at TechGenyz How To

You have worked for a long time to get to this moment. Your company has grown steadily over the past few years, and you are finally ready to transform it into a global brand. In doing so, you need to make sure that your copyright and trademark protection extends to the international market. You don’t want to go through all that work only to have your copyright stolen by someone else or have it denied outright because you did not follow the proper protocol to have it affirmed in another country.

Thankfully, this guide can help you take your trademark and business globally.

1. Get a trademark in your own country

This should go without saying, but before you can start to think about taking your brand global, you must first make sure there is a trademark brand to globalize in the first place. Make sure you have registered your trademark in your home country of operation. This initial trademark will be the starting point for most of the other international trademarking processes discussed here.

2. Trademarking abroad

The United States, United Kingdom, and 175 other countries are signatories to The Paris Convention for the Protection of Industrial Property of 1883. This legal framework still provides a starting point for many international trademark cases today, as members within the framework agreed to recognize some basic trademark rules in relation to one another.

For our purposes, the practical upshot of this agreement is that member states looking to apply for a trademark in other member states can apply for an application that will offer them IP protection. That said, these trademarks are not automatic and typically need to be registered in new countries.

For example, if you are a UK citizen looking to extend your trademark to the United States, you can do this and receive IP protection, but you must file the necessary paperwork through the US patent system to do so.

3. World International Property Organization

In addition, you’ll want to look to file with the World International Property Organization(WIPO), which oversees international IP cases and makes sure members have their trademarks protected globally.

There are two basic requirements for being able to apply for this type of international IP protection:

Entitlement

This is the term used for qualifying for what is known as the Madrid System, which is the most common form of WIPO protection. You must submit an application via the Intellectual Property Office in your nation (eg, the United States Patent and Trademark Office). To qualify for entitlement you must:

  • Have a business in the Contracting Party abroad (ie, a registered UK branch of a US company)
  • Be settled and domiciled in a Contracting Party
  • Be a national of a Contracting Party who can act as a recognized intermediary

Basic application

If you already have the necessary connections in place with a Madrid System member, you can file the basic application. To do this, you must have applied for or already received an official mark from an IP office with the corresponding member i.e., the IP Office in your region.

International differences

While these systems are intended to help make international trademarking proceed more smoothly, when talking about such vast systems of international law, differences are inevitable. You will, thus, want to be prepared for these differences and understand how you can best meet them to proceed with your trademark application.

For starters, you will need to be aware that trademarking as a concept relies on a bit of subjectivity in terms of what is considered “distinct” and, thus, “trademarkable.” What is ruled to be distinct in one country may not carry over to another? You will, therefore, want to be as distinct as possible in your branding.

For example, if you’re looking to register a trademark in the UK, you should try to avoid common phrases such as “We are the best,” which are typically not considered distinct enough to be trademarked in one country, let alone by others. According to local UK trademark specialists Bonamark, up to 20% of trademark applications are rejected each year, and this is one of the main reasons.

Each country has a territory and has its specific grounds for refusal, such as these for the US, so make sure you know them prior to filing your trademark application.

Another common issue has to do with vagueness in the application. Here again, a subjective decision by another country’s patent and trademark office may decide that your wording is too vague. You should, therefore, do your best to make sure your trademark request is as specific as possible in terms of what product or service you offer, what makes it unique, what in particular you are looking to trademark, and how that falls within the scope of a given country’s trademarking law.

Finally, you need to make sure that you have read the qualifications and guidelines put forth by the patent and trademark office of the country in which you are looking to declare your trademark. If you are looking to do this in several countries at once, you may want to consider working with international trademark specialists, who already possess knowledge of and the appropriate paperwork on these different systems.

By following the rules now, you can avoid international copyright heartbreak later and take your business global the right way.

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