International Trademark Rights

Like other intellectual property rights, trademark rights are, as a whole, considered to be distinct in each country or jurisdiction (hereinafter “jurisdiction”) in which they are obtained. Each jurisdiction is entitled to recognize and protect trademark rights in a manner that fulfills its policy goals. Although the term “international trademark rights” refers to a set of trademark rights across a number of jurisdictions, the existence and enforceability of these rights are unique to each jurisdiction and, generally, not interdependent.

Notwithstanding differences in recognizing and enforcing trademark rights, many jurisdictions have agreed upon common procedures or protocols for filing trademark applications. These options are discussed below.

1. In which countries should I register my mark?

You should consider registering your mark in any countries or jurisdictions where you offer your products or services under that mark, as well as in those jurisdictions where you intend to use the mark for your products or services in the future, and/or in which you have an office or manufacturing facility. Some trademark owners also register their marks in jurisdictions that are known to have problems with intellectual property counterfeiting. Use of a mark is not a prerequisite for filing an application in most jurisdictions; however, some do have use requirements. Consult local counsel for more information.

2. Can an applicant secure a trademark registration covering more than one country?

Yes. Several international agreements make it possible to file a single application to register a mark in more than one jurisdiction. For example, a registration with the Benelux Office for Intellectual Property offers trademark protection in the Benelux territory (Belgium, Luxembourg, and the Netherlands). A European Union Trade Mark (EUTM) (formerly Community Trade Mark) registration protects a trademark in all the member states of the European Union (EU). The Madrid Agreement and the Madrid Protocol make it possible to file an application for an International Registration, which will provide trademark protection in any of the jurisdictions the applicant designates that are party to either or both of those treaties. Filing with the African Regional Intellectual Property Organization or the African Intellectual Property Organization protects a trademark in all the member states of that organization.

3. What is a European Union Trade Mark?

The EUTM system offers trademark owners a unified system of protection throughout the EU with the filing of a single application. If successful, this one application results in an EUTM registration, which is recognized in all the EU member states. As new member states are added to the EU, the coverage of existing EUTMs automatically expands, without any action or payment required of the trademark owner; the protection of an extended EUTM in a new member state, however, dates from the admission date of the member state to the EU rather than the filing date of the EUTM. The initial registration period is 10 years from the date of filing of the EUTM application. The registering authority is the European Union Intellectual Property Office (formerly the Office for Harmonization in the Internal Market), in Alicante, Spain.

An EUTM registration may be beneficial for several reasons, including: (1) it is a time-saving and cost-effective procedure; (2) having to maintain just a single trademark registration results in administrative efficiencies; and, perhaps most important, (3) genuine use in one EU member state may be sufficient to protect an EUTM in all member states from cancellation on the ground of non-use. There is a risk that if a ground for rejection exists in just one of the member states, then the mark cannot be registered as an EUTM, although conversion to national applications is possible in some cases.

Following the end of the Brexit transition period on December 31, 2020, effective January 1, 2021, the UK Intellectual Property Office (UKIPO) will automatically and free of charge convert the UK portion of a registered EUTM into a separate and independent UK trademark registration with the same filing date as the EUTM. For EUTM applications that are still pending as of January 1, 2021, the trademark applicant will have nine months from December 31, 2020 to file a new and separate UK trademark application that will take the same filing date as the EUTM. The EUTM will no longer extend trademark protection to the UK after December 31, 2020. See Brexit Fact Sheet for Practitioners for more information.

4. What is the Paris Convention?

The Paris Convention for the Protection of Industrial Property is an international treaty concerning the protection of intellectual property. It has been adopted by 177 countries. The countries to which the Paris Convention applies constitute the Paris Union. The main principle of the Convention is that nationals of any country of the Union are afforded the same advantages with respect to intellectual property protection and enforcement that the national law of any country of the Union grants its citizens.

5. What is meant by “Convention priority”?

The right of priority under the Paris Convention provides that, on the basis of a trademark application filed in one of the countries in the Paris Union, the applicant may, within six months of that filing, apply for protection in any of the other countries in the Union. These subsequent applications will be regarded as if they had been filed on the same day as the first application; that is, they have priority over applications for the same mark filed by others during that six-month period.

Some jurisdictions allow for multiple and partial priority applications, which means that priority can be claimed from more than one basic application (multiple priority application) or for only part of the basic application (partial priority application). The representation(s) of the mark(s) must be identical to the trademark that is the subject of the basic application(s), and the list of goods and services must not exceed the scope of the goods and/or services defined in the basic application(s). In most countries, an application may include the list of goods and/or services both within and outside the scope of the basic application(s) and be filed as one. Some countries, however, require that an application be filed strictly within the initial scope.

6. What is the Madrid System?

The Madrid System is a system for the international registration of marks. It provides a means to simultaneously seek protection for a trademark in a large number of jurisdictions. The system is governed by two separate international treaties, the Madrid Agreement (Agreement) and the Madrid Protocol (Protocol). Under the Agreement, nationals of any signatory may secure protection of their trademark, registered in the country of origin, in all other states that are parties to the Agreement. Under the Protocol, nationals of any signatory may secure protection in countries and jurisdictions that are contracting parties to the Protocol based on a pending application or registration in the country or jurisdiction of origin.

Both the Agreement and the Protocol are administered by the International Bureau of the World Intellectual Property Organization (WIPO). As of September 1, 2008, for countries bound by both the Agreement and the Protocol, only the provisions of the Protocol apply. Consequently, from that date, International Registrations are governed exclusively by the Protocol (1) in all jurisdictions that are party only to the Protocol and (2) in those jurisdictions that are party to both the Protocol and the Agreement. The Agreement governs only those jurisdictions that are bound solely by the Agreement.

7. What is an International Registration?

An International Registration (frequently referred to as an IR) is the designation for a registration secured under the Madrid System.

Following the Brexit transition period, as with the conversion of the UK portion of an EUTM into a separate and independent UK registration, the UKIPO will automatically and free of charge convert the UK portion of a IR designating the EU into a separate and independent UK trademark registration with the same filing date as the EUTM designated under an IR. For EUTM applications that are still pending as of January 1, 2021, the trademark applicant will have nine months from December 31, 2020 to file a new and separate UK trademark application that will take the same filing date as the EUTM.

8. What is the African Regional Intellectual Property Organization?

ARIPO (African Regional Intellectual Property Organization) was formed by members of certain English-speaking African nations. The organization enables applicants to file a single application for the protection of a trademark in designated jurisdictions that are contracting states to the Lusaka Agreement, which created ARIPO.

The contracting states are Botswana, Eswatini (formerly Swaziland), Gambia, Ghana, Kenya, Lesotho, Liberia, Malawi, Mozambique, Namibia, Rwanda, São Tomé and Príncipe, Sierra Leone, Somalia, the Sudan, United Republic of Tanzania, Uganda, Zambia, and Zimbabwe.

9. What is the African Intellectual Property Organization?

OAPI (Organisation Africaine de la Propriété Intellectuelle) (African Intellectual Property Organization) was formed by members of certain French-speaking African nations. The organization enables applicants to file a single application for protection of a trademark in designated jurisdictions that are contracting parties to the Bangui Agreement, which created OAPI.

The contracting parties are Benin, Burkina Faso, Cameroon, the Central African Republic, Chad, the Comoros, Republic of the Congo, Côte d’Ivoire (Ivory Coast), Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Mali, Mauritania, the Niger, Senegal, and Togo.

10. What is the Andean Pact?

The Andean Pact is an agreement among the member jurisdictions of the Andean Community (Bolivia, Colombia, Ecuador, and Peru) that provides for one common trademark law among the member jurisdictions. The Andean Pact does not provide for a common trademark registration. Rather, it provides for certain reciprocal rights to be available upon request of the trademark owner. For example, an entity that first applied for registration of a trademark in a member jurisdiction may lodge an opposition against a similar mark that is applied for in any of the other member jurisdictions. Moreover, use of a trademark in any member country constitutes use in all the member jurisdictions if the trademark is the subject of an action for cancellation for non-use.

11. Can different parties in different countries own the same mark?

As trademark rights generally are geographic in scope, it is possible for a trademark to be registered in different jurisdictions by different owners. Consequently, trademark owners should consider obtaining protection for their marks in all jurisdictions or regions of interest in order to secure their rights in the marks and prevent others from obtaining them. In a few jurisdictions, there can be more than one registration for a trademark, with each registration covering a different geographical region of the jurisdiction.

12. Are there any advantages to filing an application for an International Registration versus national applications?

For an applicant wishing to file a trademark application in multiple jurisdictions, filing an application for an International Registration may have advantages over filing individual national applications.

An International Registration allows trademark owners to register their trademarks in multiple jurisdictions (contracting parties) with a single, uniform application filed through a centralized filing system administered by the WIPO International Bureau. WIPO checks formal requirements, including the accuracy of the goods and services specification and the relevant fees payment, and directs the International Registration to the designated jurisdictions.

The intellectual property office of each designated country has 12 or 18 months (under the Madrid Protocol) to grant or refuse protection under the International Registration and to communicate its decision to the trademark owner. Fixed examination periods make the application examination process predictable and, in some cases, shorter than examination by national trademark offices. International Registrations can be subsequently extended to countries not originally designated.  International Registrations also may be renewed in all designated countries with one electronic filing through the Madrid System.

Because there can be significant downsides to filing an International Registration, for example, the dependence of the International Registration on the status of the basic national application or registration for a limited period, trademark owners should consult with trademark counsel for more information on International Registrations before filing under the Madrid System.

13. Can International Registrations be transformed into national applications?

International Registrations have a five-year dependency period, within which they depend on a national basic application or registration. If the national application or registration lapses within a period of five years following the date of the International Registration; or as a result of an action begun before the expiration of the five-year period, the protection resulting from the International Registration may no longer be invoked. Despite the dependency, the holder is vested with the right to transform its International Registration into respective national applications within three months from the date on which the International Registration was cancelled, thus benefiting from the IR date and the priority date, if applicable.

14. Can International Registrations be designated to countries not indicated in the initial request?

The holder of an International Registration can subsequently designate additional jurisdictions that are contracting parties to the Madrid Agreement or the Madrid Protocol to its existing International Registration. In that case, the term of protection of a subsequent designation is not an independent 10-year period, but coincides with the registration date of the International Registration.

15. What is the Nice Classification, and how is it used?

The Nice Classification is an international system for classifying goods and services administered by WIPO. It was established by the Nice Agreement.

Where a jurisdiction is party to the Nice Agreement, it is bound to use the Nice Classification in connection with the registration of marks. Currently, the Nice Classification consists of 45 classes of goods and services (Classes 1–34 cover goods and Classes 35–45 cover services). It is regularly revised and updated to remove inconsistencies and to add new entries. The list of goods and services is organized in class order and in alphabetical order, allowing the applicant to search for and properly classify goods and services.

Each class comprises a class heading, an explanatory note, and a list of specific entries. The class headings describe the nature of the goods or services in the class. The explanatory note explains which goods or services fall under the class heading. The list of goods or services is grouped according to characteristics they share, within the meaning of the class heading.

Although some jurisdictions  interpret a class heading to identify all goods or services in the class, other jurisdictions interpret a class heading to identify only those goods and services included in  a literal reading of the class heading. To ensure an accurate and effective description of goods and services in your trademark application, consult local counsel for more information.

Additional Resources

Practitioner’s Guide to the Madrid Agreement and Madrid Protocol
Searchable database of practical information on the local application of one or both treaties in the countries/jurisdictions that are parties to the Agreement and/or contracting parties to the Protocol. Membership required.

European Union Trade Mark Fact Sheet

European Union Trade Mark and Madrid Protocol Comparison Fact Sheet

Fees for International Registration Applications Under the Madrid Protocol Fact Sheet

International Treaties Fact Sheet

Madrid Protocol Fact Sheet

Madrid Protocol Presentation

Other Resources

WIPO’s Madrid Protocol Resources

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