Protecting Trade Marks Internationally

Let’s suppose that you’ve filed your first trade mark in your home country. This registration will only protect your brand name in that country and the question soon arises – how do you protect trademarks in other countries?

One of the simplest ways is to file for international trademark registration through WIPO – the World Intellectual Property Organisation. This system allows a brand owner to file a single application based on the original national application in a large number of countries. A complete list can be found at this link. It includes major countries, such as the United States, Japan, China and South Korea, as well as regional trademarks such as the European Union trademark.

The costs of filing the trademark depends on the countries chosen as well as the goods and services for which protection is requested.

Once filed, details of the trademark registration are sent to the selected countries. The local trademark offices can raise objections based on, for example, previous similar registrations or local requirements. In many cases, holders of older trademark registrations in that country can file an opposition to the entry of the international trademark in the country.

If an objection is raised, then a local representative needs to be appointed in many cases to correspond with the local trademark and resolve the issues. This might mean clarifying the list of goods and services, or deleting some entries from the list to overcome objections from older trademark holders. Once the local trademark office approves the registration, the trademark owner is informed and the register of entries for the trademark updated.

In countries that are not members of the international trademark system, a local registration must be filed through the national trade mark or intellectual property office. This can be based on the home country registration or include different goods and services adapted to the local market place. Generally a local trade mark attorney must be appointed as a local representative and they will correspond with the authorities.

We’ve helped numerous companies over the years to register and protect their trademarks throughout the world. Feel free to contact us if you have any questions.

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