Protecting Trademark Rights in Foreign Countries

Businesses and non-profit organizations that provide their products or services in at least one foreign country should consider protecting their trademarks in the countries in which they operate.  A U.S. trademark registration will not likely deter others in foreign countries from infringing a trademark if the trademark is not protected in the foreign country.  International law provides several mechanisms to protect trademarks in foreign countries.  Under the Madrid Protocol, a trademark that is registered in a member country may be registered in other member countries by filing one application.  The primary advantage of the Madrid Protocol is that it eliminates the need to retain counsel in the foreign countries, which can save time and costs.  A disadvantage is the limited geographic scope of the Madrid Protocol.  For example, other than the United States, only one other country in North and South America is a member of the Madrid Protocol.

Businesses or organizations operating in Europe may protect their trademarks through the CTM system.  A CTM trademark registration protects the trademark in all countries that are members of the European Union.  Registering a trademark through CTM can be a very efficient strategy to protect a trademark throughout the European Union.  If a business or organization does not intend to use the trademark in a significant number of European Union countries, it may be best to register the trademark directly with the countries in which the mark is used, instead of through CTM.  This strategy may be helpful to avoid likelihood of confusion with a similar trademark registered in a European Union country where the business or organization does not intend to operate.  

Other international intellectual property organizations facilitate registration of trademarks throughout various geographic regions, such as OAPI and ARIPO in French-speaking and English-speaking African countries, respectively. 

In some countries it may be necessary to retain foreign counsel to assist with the registration.  It is important to select competent, trustworthy foreign counsel in the country in which registration is sought.  We have worked with foreign counsel in numerous countries and can help you locate qualified counsel.  

Registering a trademark in a foreign country involves careful planning.  Businesses or organizations desiring to register their trademarks should seek legal advice prior to filing any trademark application.  David L. Bea & Associates is experienced in foreign trademark registrations and can help you register your trademark in another country. 

The foregoing article was provided for general information and must not be relied upon as legal advice for any specific situation.  The attorneys of David L. Bea & Associates are experienced in foreign trademark registration.  If you have any questions, please do not hesitate to contact us.

© 2011 David L. Bea & Associates