*Originally posted on October 7, 2021

GlobeThat’s a great question and one that we frequently receive from clients who are expanding their businesses internationally. Your company’s trademark, whether a word, logo, tagline, or the look and feel of your packaging, are valuable assets, which require protection whether you are expanding your business domestically in the United States or internationally in a foreign country. If you have a US registration, you are protected in the United States and if you don’t and you are doing business in the United States, you should retain an attorney so you can protect your trademark rights. If you already own a US registration, it will protect your trademark rights only in the United States, not other countries. That’s because trademark rights are territorial, meaning that to obtain protection in another country you have to register your trademark in that country. For US applicants, there are essentially two methods for obtaining a trademark registration in a foreign country.

National Filing. The first method consists of directly filing a trademark application in the foreign country. This is commonly referred to as a “National Filing.” Typically, your US attorney will retain a trademark attorney in the country where you wish to register your trademark. You provide the foreign attorney with a power of attorney and other information for the foreign application, which the foreign attorney files with the appropriate governmental authority. Fees and costs will differ depending upon the country and the complexity of the trademark, such as the number of classes of goods and services identified by the trademark, whether it’s a logo or word, and whether you are claiming color as part of the trademark.

The Madrid System.  The second method consists of leveraging your US trademark registration or application to obtain an “international” registration through the World Intellectual Property Organization (WIPO) and the Madrid Protocol. There are 125 member countries to the Madrid Protocol all of whom agree to accept trademark applications based upon an existing trademark registration in a member country. So, in the United States, one can submit an application for a foreign registration through the USPTO by designating an existing US trademark registration or application. Once the application is accepted by WIPO, it is forwarded to the appropriate member country for further examination by the country’s trademark office. Fees differ depending upon the member country you have designated. WIPO provides an online calculator for estimating filing costs. For example, to register a single class trademark in the EU through the Madrid system, the total application fee is CHF 1550 or approximately $1669 as of the date of this article. Keep in mind that registering a trademark in the EU will be effective for all 27 member countries of the European Union. The obvious advantage of registering through the Madrid system is its simplicity and cost effectiveness.  There are, however, disadvantages.

We will explore the pros and cons of using the Madrid system in our next article on this subject.

— Adam G. Garson, Esq.