Trademark protection is territorial in nature. When the trademark is registered, your rights to it are protected only in the territories of the countries where they were granted. For example, your trademark registration in the United States does not automatically provide protection in Canada, France, or other countries. To extend the impact of your trademark rights, it is necessary to register them in all territories of interest to your business. Even if you are only planning to enter a foreign market, there is an advantage to thinking about registration there in advance.
This article explores several ways to register a trademark in foreign states, as well as discusses potential advantages and disadvantages of each way.
The first way that might be mentioned is the national procedure in each country. By choosing this method, you file an application to register the trademark in each trademark office in every country where you want to have such protection. For example, if you plan to provide services or sell your goods in the UK, you can file a national trademark application with the Intellectual Property Office in the UK.
Although it might be straightforward and easy to comprehend, such a filing has some negative sides. They include the payment of the fees in the local currency, filing an application, and keeping records usually in the language of a particular country, and often requiring a trustworthy local attorney or trademark attorney. Besides that, the management of the processes requires attention and compliance with the formalities, and the total costs might be a bit on the expensive side.
Filing under the national procedure might be a reasonable option if you are filing an application in 2 countries. However, according to the established practice, if you plan to enter the market of 3 or more countries, it is worth considering the registration procedure under the Madrid Protocol.
It is possible for an applicant to file one international application in multiple countries at once. This possibility of simplified registration is provided by an international agreement called the Madrid Protocol. As of today, the agreement covers 131 countries, which means that when filing an application under the Madrid Protocol, you can claim any of the countries from this list.
There are advantages and disadvantages to filing under the Madrid Protocol. The advantages include:
● Filing only one international application with the option to do so in English for US applicants.
● The USPTO fee is paid in dollars, and the WIPO International Bureau fee is paid in Swiss francs, so there is no need for a large number of payments in different currencies.
● Both the renewal of a trademark and amendments to the information about the trademark owner are carried out not in each country separately, but centrally through the International Bureau. As a result, these are simplified and cheaper processes.
As a rule, it costs less to file an international application claiming 3 countries under the Madrid Procedure than to file applications under the national procedure with 3 different national offices.
On the negative side, the following might be mentioned:
● An international application is based on an existing national application. That is, you cannot file an application under the Madrid Protocol if you do not have a trademark filed or registered, for example, in the United States. Moreover, the trademark under the international application must be the same as the trademark under the national procedure;
● Compared to your national application, the list of goods and services under an international application must be the same or narrower;
● For 5 years, the international registration depends on the national application/registration. That is, if your trademark filed in the United States is abandoned or your registered trademark is canceled, this may result in the cancellation of your international registration.
An international registration application can be filed at any time from the filing date of the national application. The only advantage of filing the international application as early as possible is the right to claim priority, which is granted to you within 6 months from the filing date of the national application.
In addition to national and international applications, there is also a way to submit a trademark for registration in a particular region. For example, you can file an EU trademark, a Benelux trademark, or a trademark of the African Intellectual Property Organization (OAPI).
An EU trademark is a popular option. In 2024 alone, U.S. applicants registered 14,947 EU trademarks.
This type of registration is done through the European Intellectual Property Office (EUIPO). In such a case, a single application is filed, examined once by the EUIP,O and the protection extends to all 27 EU member states. By analogy with the Madrid Protocol, filing one EU trademark costs less than registering separate national trademarks in multiple EU states. If a new country joins the EU, a trademark registered through EUIPO gains protection in its territory automatically.
At the same time, it should be mentioned that any holder of an earlier EU trademark application or national trademark in any EU member state can file an opposition, which means higher risks of opposition. Furthermore, if on absolute grounds or based on a conflicting trademark, the registration is refused in one EU country, then it is refused in full for all 27 EU countries.
When filing under these procedures, you might want to consider claiming priority from an earlier national application. For example, if you file a USPTO trademark application on May 1, 2025, you have until November 1, 2025, to file elsewhere (e.g., in the EU or France) and claim priority.
Claiming priority allows the later application to be treated as if it had been filed on the earlier date. Thus, if you file in Norway on October 1, 2025, and claim priority from your May 1 USPTO filing, the Norwegian application will be treated as having been filed on May 1. This means that if someone files after your USPTO application but before your Norwegian application, your application will have priority (unless other grounds for refusal arise).
Conducting trademark searches before applying for registration under each of these procedures might be beneficial, as you equip yourself with knowledge of any conflicting trademarks that might exist on foreign markets (both on national and regional levels).
Most of the countries do not have the requirement of filing the proof of use at the filing or further stages, like it does the U.S. Therefore, you may not use the trademark before obtaining registration. However, note that in most countries, the other person might initiate the cancellation procedure of the trademark that is not used. For instance, in the EU it can be initiated if a trademark is not used for 5 years or more after registration.
These are the descriptions of several ways to register your trademark abroad. To properly weigh all pros and cons and find the best suitable strategy for your brand, it might be worth consulting with a trademark attorney.
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