Clients often ask me to assist in protecting their trademarks “worldwide”. This makes perfect sense. If your products or services are sold in multiple countries, why shouldn’t your brand names and logos be protected everywhere they reach?
Once upon a time, most products were sold locally, or only in the country where they were produced. Unfortunately, trademark law is still largely stuck in that antiquated paradigm. Trademark law is “territorial”, which means that rights are determined separately in each country (or group of countries, such as the EU).
This means that if your trademark is protected in the U.S. by virtue of a United States Patent and Trademark Office (USPTO) registration, that’s great, but those rights don’t necessarily extend to other countries where you’re doing business.
That said, there are strategies to protect your trademarks in the jurisdictions where you do the most business. Here are 3 Reasons to Register Your Trademark Internationally.
1. Rights Based on Use vs. First to File
In the U.S., trademark rights are based on use. This means, broadly speaking, that preference is granted to whoever is first to use a trademark in commerce. That’s great if you’re selling in the U.S. However, many other countries’ trademark rights are based on a First to File system. This means that, even if your products are being sold in that market, somebody else could obtain the rights in your trademark simply by filing to register it in that country. China, Japan, France, and Germany are examples of major “first to file” jurisdictions. So if you’re doing business in those countries, or if you plan to do so in the near future, securing your trademark rights should be a priority.
2. Some Countries Have High Rates of Counterfeiting
I’m looking at you, China.
Of course, it’s not just China. Knockoffs are a fact of life in all countries, and in some more so than others. Turkey, Singapore, and Thailand are all common sources of counterfeit goods. Obtaining registrations in countries with high rates of counterfeiting can help in combating these types of knockoffs, as local authorities are more likely to respect their own country’s trademarks.
3. The Madrid Protocol International Registration System Makes it Easier
Fortunately, you no longer have to go country-by-country, in some cases at least. The Madrid Protocol is a treaty signed by many countries. It allows for an international trademark filing system – meaning you can file in multiple countries with one application. There are pros and cons to the Madrid Protocol filing system, so it’s not right for every circumstance, but when it works, it can make the international trademark registration process go much more smoothly.
If your brand extends beyond the borders of the U.S., it’s time to think globally about your trademark registration needs. Are you growing your business internationally? Let’s talk.