International Trademark Tips
Are you looking for guideline and tips about registering an international trademark? You are at the right place. International Trademark is also commonly called global trademark or worldwide trademark.
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Trademark Rights by a Geographic Region or Country
If you have registered a trademark with USPTO, it will not provide legal protection in other countries. For that you should also register trademark of your brand or product in the intellectual property offices of other countries.
Similar to the US, trademarks are protected either through trademark act as well as through common law in Canada.
In Europe a registered trademark in country will only protect it in that country – unless it is registered through EU.
Belgium, Luxemburg, and Netherlands have abolished their country specific trademark laws and instead introduced uniform trademark rules which apply in these countries.
Trademark registration in each individual country or region may be time consuming. If you want to save that time, Madrid based WIPO can be good choice for you, through which can get trademark approvals from several countries with a single application. However, WIPO registration can be costly – around hundred of thousands US dollars for approval from all member countries, as shown by average calculation in our demo below.
Comparison of Trademarks at Country and Regional Level
Most countries and administrative regions – including USA, Australia, European Union, Canada – legally protect trademarks whether properly registered with government or through use-based. However, rights through common law (providing use-based acquired rights) are less guaranteed than those with registered trademarks in most countries. Use-based trademark rights also depend on acquired distinctiveness through reputation.
On the other hand, there is no such concept of common law protection for unregistered trademarks, in some countries for example China, except for already well-known marks. For unregistered trademarks, TM (™) is used a symbol in most countries except some territories such as Quebec, Canada. For those trademarks registered with a government agency (®) symbol is used for distinction in most countries.
You can get registered your trademark through a single application to EU which will cover all member states of the European union. Before Brexit, trademark protection could be covered in all EU countries, through a single application. However, after Brexit, it became necessary to file a separate application to protect trademark rights in the UK. Due to this effect trademark disputes in UK doubled in 2021 as compared to those in 2020. [RD]
In some countries, the trademark registration and protection process are not up to the mark. For example, Apple inc. applied for the trademark of ‘iPhone’ in China in 2002 but it was only approved in 2013. Meanwhile in 2007 another Chinese company registered the ‘iPhone’ trademark and later the Apple inc. lost the legal case against that infringer of the trademark rights. [RD]
However, after joining WTO China is fast improving implementation of trademark laws.
Here are more links to websites of some trademark authorities in the world.
How to Register a Global Trademark
To protect your trademark, it should be registered in each country all over the world – otherwise the same trademark may be registered by some other companies in other countries. [RD]
For example:
SANIPLAST is a registered trademark of Uniferoz (Pvt) Limited for bandages in Malaysia, India, Philippines, Jordan, and other countries. URL: https://uniferoz.com/products/local/saniplast/
SANIPLAST is also trademark of a Spanish company. URL: https://www.saniplast.es/
SANIPLAST is also a registered trademark of an Italian company. URL: https://saniplast.it/en/
SANIPLAST is also registered trademark for gloves of a German company. URL: http://www.sander-saniplast.de/handschuhe/
Therefore, if you intend to launch your brand or product in international market, then it is a good idea to register its trademark globally – though it can be expensive for a startup.
There is no concept of authorized single trademark registering agency at global level. However, to register a trademark in other countries, you can apply through a single application through the Madrid System or WIPO (World Intellectual Property Organization), where each country or regional trademark authority (such as EU) will separately decide and grant trademark rights. However, after approval from each country, WIPO is powered to modify or renew the trademarks.
You can apply through Nice Classification (NCL) administered under WIPO in 45 classes of products and services. It provides a streamlined process of trademark registration through single application in 91 countries. United Arab Emirates is the latest which acceded to the Nice agreement in 2022. WIPO committee of experts approves the proposed trademarks.
For example, DIAPER GENIE SIGNATURE trademark was registered through NCL in May 2022 by Angelcare USA LLC. [RD]
Similarly, South Korean trademarks – hanbok, soju, gochujang, doenjang, kimbab and makgeolli – were added to the Nice Classification of WIPO in 2022.
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