If you are planning to or have already entered the markets of foreign countries with your product or service, it is advisable to consider trademark registration in those foreign countries. If your trademark is registered or has just been filed for registration in the U.S., the effect of this registration is limited only to the territory of the U.S., meaning that your trademark is not protected in other countries, for example, France, Australia, Japan, etc.
This article covers the ways and the peculiarities of trademark registration in other countries.
National Trademark Registration
When you are planning to enter the market of another country, one of the ways to register a trademark is to file a national application with the office of the country you are interested in. For example, if you plan to sell your products in the UK, you can file a national trademark application with the Intellectual Property Office in the UK. The Office will review your application per local rules, and if there are no grounds for refusal, it will register your trademark. The disadvantages of this trademark registration method include:
- Payment of the fee is made in the local currency, in the example with the UK, in pounds sterling;
- Filing an application and keeping records is usually carried out in the language of a particular country. For instance, an application to Japan is filed in Japanese;
- Filing an application often requires a local attorney or trademark attorney. Mariya Ortynska has been successfully managing global trademark portfolios for over 17 years and has a network of trusted trademark attorneys in more than 95 countries.
In addition, if you are interested in registering a trademark in multiple countries, the registration may be quite costly due to fees, coordination of the process, and the need to comply with various formalities. As a rule, if you are interested in registering a trademark in 3 or more countries, the most cost-effective way to register a trademark is to file an international application under the Madrid Protocol.
International application under the Madrid Protocol
The Madrid Protocol is an international agreement that allows an applicant to file an international application to simplify the trademark registration procedure in multiple countries. As of today, the Madrid Protocol allows for obtaining trademark protection in 131 countries. It should be noted that filing an application under the Madrid Protocol is quite popular among American applicants. World Intellectual Property Organization’s (WIPO) statistics show that in 2023 alone, U.S. applicants filed over 75 thousand international applications via the Madrid system.
The advantages of filing under the Madrid Protocol are that:
- One international application is filed in one language (for U.S. applicants in English);
- The USPTO fee is paid in dollars, and the International Bureau of WIPO fee is calculated in one currency – Swiss francs;
- Renewal of the trademark is not carried out in each country separately, but centrally through the International Bureau, which greatly simplifies the procedure and reduces the cost of renewal;
- Similarly, changes regarding the owner, their address, are not recorded in each country separately, but centrally through the International Bureau, which greatly simplifies the procedure and reduces the cost.
Generally, the cost of filing an international application claiming starting from 3 countries is less than filing an application under the national procedure with 3 different national offices.
However, filing an international application has certain disadvantages:
- An international application must be based on a national application or registration. That is, when you file an international application, you must have a trademark filed or registered, for example, in the United States;
- The trademark under the international registration must be the same as the trademark filed or registered under the national procedure;
- The list of goods and services under the international application must be the same or narrower than the list of goods or services under the national application;
- International registration within 5 years depends on the national application/registration. This means that if your trademark filed in the United States is abandoned or your registered trademark is canceled, it may result in the cancellation of your international registration.
Regional Trademark Registration Procedure (EU)
There are several regional trademark registration procedures. One of them is the European Union trademark. Such a filing is conducted through the European Union Intellectual Property Office (EUIPO).
The advantages of European Union trademark filing are that:
- A single application is filed and examined once by the EUIPO;
- Protection extends to all 27 EU member states;
- Filing one EU trademark is more cost-effective than registering separate national trademarks in multiple EU states.
- If a new country joins the EU, a trademark registered through EUIPO automatically gains protection in its territory.
The disadvantages of such registration are that:
- The risk of opposition is higher, as any holder of an earlier EU trademark or national trademark in any EU country can file for opposition;
- If registration is refused in one EU country (on absolute grounds or based on a conflicting trademark), the registration is refused in full for all 27 EU countries.
Priority of the application
When filing an application under each of these procedures, it is important to consider the option of claiming priority based on an earlier national application. For example, if you filed a trademark application with the USPTO on May 1, 2025, you have six months from that date (i.e., until November 1, 2025) to file another application elsewhere (such as in the EU or France) and claim priority from your USPTO filing.
Claiming priority means that your later application will be treated as if it were filed on the earlier date. So if you file a national application in Norway on October 1, 2025, and claim priority from your earlier USPTO filing (May 1, 2025), the Norwegian application will be treated as if it were filed on May 1, 2025. Therefore, if someone files an application after you file an application with the USPTO, but before you file in Norway, you will receive priority. As a result, it is most likely that the other person will be refused registration of the trademark, and yours will be registered (unless, of course, there are other grounds for refusing registration of the trademark).
Trademark Search
One of the most common grounds for refusal to register a trademark is the presence of conflicting trademarks. If you have successfully registered a trademark in the United States, it does not mean that if you apply for registration of a trademark in Canada, there will be no conflicting trademarks. Therefore, before filing a trademark, and especially before entering the market in each country, it is advisable to conduct an identity and similarity search. It is also worth remembering that in the EU, a trademark may be protected at the national level (for example, registered only in Poland, the Czech Republic, Germany) or at the regional level (EU trademark). That is why you need to search both at the national and regional levels.
Mariya Ortynska has extensive experience in conducting trademark searches and has the appropriate software that helps effectively search for trademarks filed and registered in different countries of the world.
The usage of the trademark
The United States is one of the few countries that, in most cases, require the use of a trademark at the stage of filing an application (use-based applications) or at the stage of receiving a Notice of Allowance for trademark registration (intent to use applications). Most other countries do not have such requirements, and you may not yet use the trademark to obtain registration. Also, most countries do not require filing a declaration of use between the 5th and 6th year, and then every 10 years, as is the case in the US.
This certainly makes filing an application without use less risky. However, it should be remembered that most countries provide the possibility of initiating cancellation of non-use proceedings. For example, in the EU, if a trademark is not used for 5 years or more after registration, another person may initiate cancellation proceedings.
If you are interested in registering a trademark internationally, Ortynska Law will help you choose the right strategy depending on the countries, existing circumstances, and your business goals, and implement the appropriate strategy accordingly. Mariya Ortynska has filed more than 240 international applications in 80+ countries in total. Book a consultation with Mariya Ortynska for further legal guidance.
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