Filing a Trademark Application Outside the United States

1. What types of applications may be filed?

For protection in a single country or jurisdiction, a trademark owner may file a national trademark application directly in the relevant local trademark office.

For protection that covers all member states of the European Union (EU), a trademark owner may file a single application with the European Union Intellectual Property Office (formerly Office for Harmonization in the Internal Market) for a European Union Trade Mark (formerly Community Trade Mark).

For protection in two or more countries or jurisdictions that are contracting parties (i.e., signatories) to the Madrid Protocol or the Madrid Agreement, a trademark owner may file a single application with the World Intellectual Property Organization (WIPO). The Madrid Protocol and the Madrid Agreement allow the owner of a live application or registration in a contracting country or jurisdiction (the “home” application or registration) to obtain an International Registration (IR). An applicant may base its IR on one home application or registration and designate as many participating countries or jurisdictions as it chooses.

For protection in selected African countries, filing and application with the African Intellectual Property Organization or the African Regional Intellectual Property Organization protects a trademark in all the member states of that respective organization.

Some countries do not recognize trademark registration and have their own special requirements for brand owners to claim, protect, and enforce trademark rights. For instance, certain jurisdictions instead require brand owners to publish cautionary notices in widely circulated periodicals at regular intervals.

2. In general, what are the requirements to obtain a filing date?

• The full legal name, nationality, state of incorporation, registered office, and/or street address of the applicant.
• A clear identification of the mark, stating that it is either a word mark, a device or design mark (containing a logo), or a combination of the two (a device or design mark with letters). For a device mark or combination mark, a clear representation of the logo/device is also required.
• The full range of goods and/or services to be covered. While most jurisdictions have adopted the Nice Classification, the system set up by the Nice Agreement, the local practices before the various trademark offices may require compliance with special requirements for descriptions of goods or services.

In the case of a foreign application, applicants in countries that are contracting parties to the Paris Convention may claim the filing date of a basis home application if the foreign application is filed within six months of the home application date. To claim such “convention priority,” the applicant must provide the original filing date, application number, and country of the home application. A certified copy of the basis home application (with a translation into English) may be required for registration in certain countries.

3. Compared with the registration process in the United States, how may registration requirements in other jurisdictions differ?

Under the Madrid Protocol, the trademark office of each designated country or jurisdiction will examine the application, and may accept or reject it. If a particular office issues a provisional refusal of an application, a trademark agent in that country or jurisdiction may be hired or consulted to deal with the rejection before the local office.

Do not assume that trademark office practice and requirements are the same in each country or jurisdiction. For detailed information about local office requirements, consult INTA’s Country Guides. Always consult with a local agent to be certain that an application or office action response conforms to local laws and practices.

For example, the practices and requirements of trademark offices in common law countries outside the United States may deviate from that of the United States Patent and Trademark Office (USPTO) on the following points:

• Use Claims
  • For use-based applications, some jurisdictions permit filing with a broadly worded identification of goods or services, even if the mark is not used in relation to specific goods or services within the genus of the broadly worded claim. Such broad identifications may not expose the resulting registration to cancellation on grounds of fraud.
  • Jurisdictions vary regarding the requirement to submit a specimen of use or affidavit attesting to use for use-based applications.
• Office Actions
  • The requisite qualifications for officials issuing and adjudicating office actions vary across jurisdictions. Some office actions may not necessarily be issued or adjudicated by attorneys/lawyers.
  • A refusal requiring the applicant to disclaim a descriptive word may, in some jurisdictions, affect the enforceability of the mark.
  • While deadlines to respond to office actions may be prescribed, the examining official in some jurisdictions may respond further regardless of the deadline.
  • Applicants in some jurisdictions may opt to present oral arguments at hearings in lieu of submitting detailed written responses to office actions.
  • Some jurisdictions do not have a supplemental register but allow applicants to overcome distinctiveness or descriptiveness objections by submitting an affidavit or statement of use.
• Publication for Opposition
  • Some jurisdictions may have a lengthy, non-extendable opposition period, as opposed to the extendable 30-day period available in the United States. This schedule may have an impact on the dynamics and feasibility of pre-opposition dispute resolution.
• Registration and Renewal
  • In the case of an intent-to-use application, an applicant may obtain a certificate of registration without any requirement to file a subsequent statement of use.
  • Some jurisdictions may require the filing of renewal requests from the filing date of the application rather than from the date of issuance of the certificate of registration. Such jurisdictions may require applicants to file renewal requests shortly after the issuance of a certificate of registration, particularly in cases where the duration of the registration process exceeds the renewal timeline.

Likewise, the practices and requirements of trademark offices in civil law countries may deviate from those of the USPTO on the following points:

• Use Claims
  • In civil law countries, use is not a prerequisite to registration. Typically, national laws allow for a three- or five- year grace period for non-use, for which trademarks cannot be challenged on the basis of non-use. After the grace period, trademarks may be revoked on non-use grounds unless there are justifications for non-use.
• Office Actions
  • The requisite qualifications for officials issuing and adjudicating office actions vary across jurisdictions. Some office actions may not necessarily be issued or adjudicated by attorneys/lawyers.
  • Deadlines to respond to office actions may be either prescribed by the law or defined by the examiner, depending on the jurisdiction.
• Publication for Opposition/Observation
  • While some jurisdictions schedule the opposition process following the publication of a trademark application, others allow the opposition process at any time before the registration decision issues. Some jurisdictions provide for both procedures.
• Registration and Renewal
  • In civil law jurisdictions, no statement of use is required for renewal, and trademarks can be renewed indefinitely.

Additional Resources

Country Guides: Essential Information on Trademark Protection Worldwide
Searchable database of basic information on trademark filing, prosecution, registration, maintenance, and enforcement in more than 100 jurisdictions. Membership required.

International Treaties Fact Sheet

Trademark Fees (Global) Fact Sheet

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