How Can I Protect My Trademarks In Foreign Countries? (Part 1, Regular Applications)

Each country generally maintains its own trademark register. Registering your trademark gives you a number of benefits, but only within the country in which it is registered. If you intend to sell your product in multiple countries, you really need trademark protection in all of them.

Your first step should be applying to register your mark in your home country (assuming you will do business there). Then you have a choice- you can file individual applications in each country you need, or you can file an international application under the Madrid Agreement/Protocol. This post explains the use of individual, regular applications, where the next post will delve into the details of international trademark applications.

Applying for Trademark Registration in Individual Foreign Countries

Foreign Registration Procedure

A U.S. attorney cannot file a trademark application overseas. For that, you need a lawyer of the country in which the application is to be filed. Most U.S. law firms have a network of foreign “associates”, or law firms in other countries that they work with when something needs to be filed in another country.

These foreign associates are familiar with the local rules and will be sure to place your application in the appropriate format before it is filed. Your U.S. attorney, who is familiar with your circumstances and with the corresponding U.S. application, will generally continue to control the foreign application for you, acting through their foreign associate.

Foreign Trademark Application Priority

If your foreign application is filed within six months of your application in the U.S./your country of origin, it will generally be entitled to the priority of your U.S. application and assigned a priority filing date. That means the application will be examined as if it were filed on the same date as the U.S. application. Most countries are members of treaties that provide for this priority claim, however not all are. The foreign associate will know whether a claim of priority is appropriate.

Foreign Trademark Application Examination

Trademark application are generally subjected to less rigorous examination in countries other than the U.S. Many countries do not have a rule against descriptive trademarks and allow very broad listings of goods and services.

Costs of Foreign Trademark Applications

Filing individual trademark applications in ever foreign country of interest can be expensive. In addition to each country’s filing fees, you pay for two levels of attorneys, your U.S. attorney and the foreign associate. Typical costs can be $1,500 per country just to get the application filed.

Any questions about protecting trademarks in foreign countries? Let me know in the comments.

On to Part 2 (International Applications Under the Madrid System)