6 Tips for Registering a Trademark Overseas
According to the World Intellectual Property Organization (WIPO), on average, approximately four million trademark applications are filed every year worldwide.
As more businesses and brands continue to expand their presence overseas, it is important to understand the intricacies of registering a trademark in foreign countries. This article highlights six key points every entrepreneur should keep in mind when registering a trademark overseas.
1. Register the trademark in the U.S. first.
Before seeking international trademark protection, first you should register your trademark in the U.S. You can do this through the U.S. Patent and Trademark Office (USPTO).
The trademark application can be completed directly through the USPTO website. Registering in the U.S. first will give you stronger grounds to register in other countries.
2. Do your due diligence.
In order to protect your trademark in another country, it is important to know how the system in that particular country operates in relation to the U.S.
Take the time to familiarize yourself with the trademark rules and regulations of other countries where you are seeking registration. Some great research resources include The International Trade Administration as well as the WIPO.
3. Utilize the Madrid System.
The Madrid System is a one-stop solution for registering and managing trademarks worldwide.
Under the Madrid Agreement, trademark applicants can submit one application to protect their work within a coalition of countries. The Madrid Union is made up of countries that recognize these international trademarks.
You can apply for international trademark protection by filing an MM2 form, which is available on the WIPO website. Then, you can submit a hard copy to the U.S. office.
There are 113 countries that currently offer protection under the Madrid Agreement, including China, France, Italy, Australia and the European Union.
You can select specific countries, or you can choose to protect your trademark in all 113 countries. There is a processing fee for registering a trademark with the WIPO, but it is less costly than filing individual applications within each country. It is worth noting that last year, nearly 52,000 trademarks were registered under the Madrid Agreement alone.
4. Hire an attorney.
There are several countries not protected under the Madrid Agreement, such as Saudi Arabia, Canada and South Africa.
If you are interested in registering a trademark not covered under the Madrid Agreement, consider seeking counsel from an attorney in the country you are looking to register.
The USPTO recommends searching for an attorney via the International Trademark Association. Additionally, you could also use The Legal 500 or World Trade Review. Both websites have compiled a list of attorneys according to jurisdiction, and the lists per jurisdiction can be narrowed down to what type of law the attorney or firm specializes in.
5. Consider foreign translations.
Atlanta-based Attorney Sonia Lakhany warns entrepreneurs to carefully consider the foreign translations of the words they are seeking to trademark in other languages.
Lakhany, who has clients with registered trademarks in countries spanning from China to Spain, warns that what may be a harmless term in English could be vulgar or offensive in other countries, which could hurt the brand in marketing and advertising. So be sure to consider the foreign translation of whatever term or slogan you are seeking to use in that particular country.
6. Don’t delay.
Intellectual Property Attorney Marc Misthal, said, “It is best not to delay filing trademark applications abroad, particularly if you intend to be doing business abroad in the short term.”
According to Misthal, one of the biggest issues his clients face when trying to register their trademarks outside of the U.S. is squatting, which occurs when a third party registers a client’s trademark and then seeks to sell the registration to the client.
Lil Lovell, owner of the infamous Coyote Ugly, echoes the same sentiment.
The Coyote Ugly trademark is registered in more than 80 countries, including China, Russia, Korea, Australia and India.
Lovell said, “Unlike the common law system in the U.S., where trademark rights accrue through use and public recognition, in most foreign jurisdictions, governed by civil law, whoever files first secures rights.”
She added, “There are a lot of unscrupulous characters, who look for up and coming brands in the U.S. and then file applications first in civil law countries. These parties then either try to hold up the rightful brands owners, demanding a lot of money in exchange for those rights.”
While cost can be a concern, and some jurisdictions charge high fees to register, the costs to negotiate the buy back of a registration for your own trademark can be even higher. There is the purchase price and then the time of the attorney's involved.
Jaia Thomas is a Los Angeles-based sports and entertainment attorney. She also assists business owners with intellectual property matters, such as copyright and trademark registrations.