Intellectual property is a valuable asset, and generally much more difficult to define than physical property, as it is considered intangible property. With the vast access to information in this day and age, nearly anyone can infringe upon intellectual property rights–intentionally or unintentionally. While many times, these intellectual properties are protected under the laws of one’s home country, other countries may not abide by the same laws. This may lead many to wonder how to register a trademark internationally. By registering a trademark with each country one wishes to be licensed in, the trademark can be protected by the local governing bodies.
For more detailed information on how to register a trademark internationally, consider speaking with an experienced intellectual property attorney from Sullivan & Carter, LLP to learn more. Schedule a consultation today by calling (929) 724-7529.
For those living in the United States of America, the first point of contact for filing an international trademark will be the United States Patent and Trademark Office (USPTO). Before anyone can file for a trademark internationally, they must first be registered with their home country. This will involve submitting an application to the office and having it reviewed by a designated attorney. Once this patent is approved, the owner must maintain it properly as they seek to apply internationally.
The USPTO cannot directly grant international patents, as the United States does not have jurisdiction over other countries. However, the USPTO is the bridge that can help would-be international patent holders connect with the local governments of those countries. Outbound international patent applications will generally go through the USPTO, assuming the individual is making use of the Madrid Protocol.
Once the owner of the patent is registered with their home country, they can then consider how to register a trademark internationally. Filing with many countries may often be difficult, as the patent holder must apply with each country and navigate their unique legal systems. This has given rise to two options for pursuing an international trademark.
The first, and generally more expensive option, is to hire individual legal counsel in each country one wishes to have a valid trademark. The individual will then work with each local lawyer to apply for a trademark through that country’s legal system. This generally requires a heavy amount of research and communication, especially if one wishes to register in many countries.
While this may seem disadvantageous, there are several benefits to the process. By filing individually in each country, the trademark application is not connected to the original country and will be reviewed on its own merits.
The second option is the World Intellectual Property Organization’s (WIPO) Madrid Protocol. Due to the complications, difficulties, and expenses of submitting a trademark to multiple different countries with local legal counsel, many countries came together to create the Madrid System which simplifies and makes the process of submitting an international trademark less burdensome. The Protocol allows for applicants to submit a single application to WIPO that is recognized by all countries that are members of the Madrid Protocol.
For those who want to know how to register a trademark internationally, this can drastically reduce the time and effort required to submit trademark applications internationally. However, there is a chance that the connection to the country of origin may be harmful to the application’s credibility, despite the greatly reduced costs in time and money.
Once this application is submitted via the Madrid System, there are generally three steps before the patent is approved internationally. If the patent is submitted locally by legal counsel, the patent follows that country’s process.
For more information on the process of getting an international patent approved, consider speaking with a skilled Chicago intellectual property attorney from Sullivan & Carter, LLP.
An international patent application will first be reviewed by the country of origin’s trademark organization–in the United States, this is the USPTO–to ensure that the international trademark is in agreement with the original, local trademark. If the USPTO rejects the application, they will return a notice detailing why the application was rejected and provide an opportunity to correct it.
Once the country of origin has approved the application, it will then be passed to the international bureau, assuming that the application was submitted via the Madrid Protocol. Then, the World Intellectual Property Organization will review the application and ensure that it complies with international guidelines. If the trademark complies with Madrid Protocol guidelines, the trademark will be published in the WIPO Gazette and the participating countries will be notified of the applicant’s trademark request.
Finally, once the trademark has been published in the Gazette, each foreign participant in the Madrid Protocol will have an opportunity to review the application and grant trademark protection in their country. Using the same standards that they apply in their country, they will determine if they accept the trademark registration. The country will have eighteen months to reject the submission, or it is automatically granted. If the country does reject the application, the applicant will have to seek local legal counsel to negotiate.
Listed below are some of the frequently asked questions regarding how to register a trademark internationally.
More than 120 countries participate in the Madrid System, but this does not cover all countries in the world. For those that do not honor the Madrid System or those countries that reject the application submitted to them through the Madrid System, the applicant will need to seek local legal counsel.
Registration for an international trademark does not last forever. The registration is generally good for 10-year intervals, requiring specific maintenance documents and other actions to keep the registration alive.
If the applicant is filing through the Madrid System, they may not need to hire legal counsel in every country. However, if the trademark is contested or rejected by a foreign country, it may become necessary to hire foreign legal counsel.
Considering how to register a trademark internationally can be a daunting task. The intellectual property landscape of America alone can be complex and difficult to navigate. When it comes to filing patents and trademarks with tens, even hundreds, of foreign countries, the obstacles can be overwhelming. However, a skilled intellectual property attorney from Sullivan & Carter, LLP can help navigate this landscape and provide detailed advice for a particular situation. Consider scheduling a consultation by calling (929) 724-7529.
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