Foreign Trademark Registrations

We can register our clients’ trademarks in almost every country in the world. We have obtained trademark registrations for our clients in the United Kingdom, France, Germany, Italy, Sweden, Spain, the Benelux countries, Japan, Korea, China, Saudi Arabia, Korea, Mexico, Argentina, Brazil, Canada, and many other countries. Under the Madrid Protocol, which went into effect in the United States on November 2, 2003, we can obtain, on behalf of a client who owns a U.S. trademark application or registration, an international registration that can cover over 80 foreign countries, by filing a single application through the United States Patent and Trademark Office. The Community Trademark Act, which provides for a unitary trademark system of registration in the European Union (the Community Trademarks, or “CTM” system), has enabled our clients to acquire trademark rights in 25 European countries by filing a single trademark application. Our trademark attorneys can advise on the particular benefits or disadvantages of international registrations and CTM registrations. After a foreign certificate of trademark registration is issued, we maintain the registration by tracking the renewal dates through our sophisticated docketing system.

When selecting trademarks, a company should consider the possibility that it may one day want to use the marks in countries other than the United States, including non-English speaking countries. If a mark is to be used worldwide, proper consideration should be given to whether the term may have an unintended meaning in other languages. In addition, although trademark protectability issues, such as genericness, descriptiveness and suggestiveness, are similar from country to country, there are local variations in how these issues are legally analyzed. Thus, marks which may be considered descriptive in some countries may be considered protectable in others. Translation issues can affect how these issues are resolved. For example, suggestive English words and phrases may be considered descriptive or even generic once they have been translated into another language. Due care should be taken in the selection of marks to avoid these problems.

One way to avoid the risk of problems with foreign trademark usage is to conduct trademark searches in the countries where a mark is most likely to be used. Searching must be done on a country-by-country basis. However, professional trademark search firms often offer search packages which combine a number of single country searches into a single search at a substantial discount from the per-country fees. Searching can be complicated by the need to have search results translated.

Trademark laws vary from country to country and, in the absence of protection under one of the international conventions, trademark protection must be sought separately in each country. Canada, for instance, is not yet a signatory to the Madrid Protocol, and therefore U.S. applicants can obtain a registration covering Canada only by filing a separate application there. Even where the Madrid Protocol system is an option, it has potential drawbacks (such as its reliance on the underlying U.S. registration), which must be weighed against its benefits. Where the client cannot or chooses not to file an application for an international registration, we obtain foreign registrations in individual countries using an international network of foreign associates. Taking advantage of the Madrid Protocol and the Community Trademark Act gives rise to a number of technical issues, and it is highly advisable to seek the advice of an attorney well-versed in this area.

In many foreign countries, trademark rights depend entirely upon successful registration of a mark with the local trademark office. In such countries, registration provides crucial defensive rights with respect to the ability to continue using the mark in each country, as well as important offensive rights against infringers, since a registration is a prerequisite for filing suit against infringers.

The decision regarding the countries in which to seek protection is often guided by economic considerations. The value of a trademark depends to a great extent upon the level of commercial activity associated with the mark. Where a mark is used in a particular country in connection with substantial sales of goods over a long period of time, the value of a trademark easily justifies the cost of obtaining and maintaining a registration. While difficult to measure, one way of analyzing the value of a trademark is to consider the consequences of being forced to change the name of a product, which is the possible result if trademark rights are not carefully established and maintained. Another analytic approach is to weigh the value, in any given country, of having the right—or not having the right—to stop competitors from using the mark on competing goods. A company should seek protection in as many foreign countries as is warranted by its business circumstances.

To learn more about trademark protection abroad, contact an attorney in our Trademark Practice Group.